September 2019 Copyright Protection for Logos: An International Chart

Copyright Committee, Logos Subcommittee, Terms 2016-2017 and 2018-2019 September, 2019 Asia: Alicia Groos and Elizabeth Zidones Greater China: Jill Glickstein Europe: Philip Davison, Valeria Brennan and Deborah Shapiro Latin America: Maximilien Yaouanc Middle East & Africa: Ashley Skinner and Deborah Shapiro North America: Peter Mendelson

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Region Country Country Country Country Country Country ASIA AUSTRALIA INDIA INDONESIA JAPAN MALAYSIA NEW ZEALAND Part I How is copyright Rights are created when Copyright is created as soon A right is created once a work A copyright arise upon Copyright arises Rights are created when created in the fixed in material form. as the work comes into is fixed and published. creation and external immediately upon creation fixed in material form country (creation/ existence. It may or may not expression. Registration and expression of a work. fixation/ be published or registered. is not required. registration)? What are the Originality - must originate The work has to be original In general, original works in Thought or sentiments are Some level of skill or labor Originality - must originate requirements for with a human author. and sufficient skill, labor the fields of science, art and expressed in a creative and/or judgment used in with an identifiable author. protection Threshold is not high, but and judgment should have literatures are protected. way in the literary, creating the expression. Threshold for originality is (originality/ requires "independent been spent in creating the scientific, artistic or not high, but: "It must have creativity/ intellectual effort" of the same. musical domain, which A work that is eligible is sufficient time, skill and labor formalities or authors (Telstra Corporation requires the following two protected automatically involved in its creation" requirements for Ltd v Phone Directories Co elements although they upon fulfillment of the (University of Waikato v enforcement)? Pty Ltd (2010) 194 FCR 142; never pose a high bar for a following conditions: Benchmarking Services Ltd Ice TV Pty Ltd V Nine work to be protected. (2004) 8 NZBLC 101). Network Australia Pty Ltd a. the work is original; (2009) 239 CLR 458). 1) Expression of thought Substantiality - copyright or sentiments: This b. the work has been will not be held to subsist in Substantiality - copyright requirement excludes written down, recorded or insubstantial works. Thus will not be held to subsist in protection of simple facts reduced to a material form; single words and headlines insubstantial works. Single or news, unexpressed idea will often not attract words and headlines will etc. c. the author is a qualified copyright, although simple often not attract copyright, person; or the work is made logos may. although simple logos may. 2) Creativity: This in Malaysia; excludes protection of or copied work, very short and common expression d. the work is first published that requires little in Malaysia. creativity. What statutes or Section 36 of the (Indian) Copyright Act, Article 40 point (f) of the Copyright Law Copyright protection in Section 14 Copyright Act regulations would Copyright Act 1968 - "(1) 1957- Logos shall qualify as Copyright Law defines Malaysia is governed by the 1994 - "Copyright is a be applicable to Subject to this Act, the 'artistic works' for the purpose "drawing" to include logos. Copyright Act 1987. property right that exists, in copyright copyright in a literary, of copyright protection. As per accordance with this Act, in protection for dramatic, musical or artistic the (Indian) Copyright Act, However, Article 65 of the original works of the logos? work is infringed by a 1957, 'artistic work' means: Copyright Law stipulates that following descriptions: (a) … person who, not being the "recordal of work cannot be artistic works" owner of the copyright, and (i) a painting, a sculpture, a afforded to a creation of art in Section 22(1) - "Copyright in without the license of the drawing (including a diagram, a form of logo or distinctive a work is infringed by a owner of the copyright, map, chart or plan), an sign used as a trademark to person who, other than does in Australia, or engraving or a photograph, trade goods/services or used pursuant to a copyright authorizes the doing in whether or not any such work as a symbol of the license, does any restricted Australia of, any act possesses artistic quality; organization corporation or act."

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country ASIA AUSTRALIA INDIA INDONESIA JAPAN MALAYSIA NEW ZEALAND Part I comprised in the copyright." legal entity". These provisions (ii) a work of architecture; and may invoke interpretations that a logo which is being (iii) any other work of artistic commercially used to trade craftsmanship. goods or services should only be registered as trademark and not copyright. Identify any Sydney Organizing The Procter & Gamble None Supreme Court None important court or Committee for the Olympic Company vs. Mr. Aashish G. (2004.9.7(2004.N0.332) other legal Games v Pam Clarke Chordia trading as Usha Dismissed GONA Letter; decisions (cases (1996) 41 IPR 403 - Marketing and Ors. CS OS Tokyo High Court where logos were example of copyright held 344/2016 before the Hon’ble 1998.6.25. Plaintiff lost, or were not to be subsisting in a simple High Court of Madras. Order Affirmed by Supreme protectable) logo. dated June 24, 2016. Court, Asahi Vs. A regarding Company Logo Procter & Gamble (P&G) Case. came across use of packaging by Defendants similar to its packaging:

Copyright existed in the artwork of the Tide packaging of P&G.

Is copyright No copyright registration Copyright registration for a Probably not. The Copyright Yes There is no system of No system of copyright registration for a in Australia. logo is possible as an artistic Law indicates that a logo that registration for copyright in registration in New Zealand. logo possible? work. is being commercially used to Malaysia. trade goods or services should only be registered as On June 1st, the 2012 trademark and not copyright. Copyright Voluntary Notification System began. How is ownership Generally, ownership Subject to certain exceptions, If the work is created on a Generally, author (a A copyright in a work vests Generally, ownership rests of a copyright defaults with the author. the author is the first owner of commissioned basis by an person who creates the initially in the author. with the author. There are determined? Is Primary exception is works copyright. ‘Author’ is the independent contractor or work) owns the copyright two exceptions: there a concept of made "in pursuance of the (natural) person involved in vendor, the copyright shall in the work. However, When a work is made by an 1. Works made by an an employer terms of his or her creating the work and where belong to the person who there is an exception to employee in the course of employee in the course of owning a work employment by another a team of individuals were created the work, unless the authorship of a work his employment, unless his or her employment under a work made person under a contract of involved the head of the team agreed otherwise. made by an employee in there is any contrary (literary, dramatic, musical, for hire concept? service or apprenticeship" - may be designated as the the course of his duties: agreement, the copyright in or artistic work) - in that

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country ASIA AUSTRALIA INDIA INDONESIA JAPAN MALAYSIA NEW ZEALAND Part I Must an author in that situation the author. If the work is created within authorship itself is vested the work shall be deemed situation the employer is the always be a employer is the first owner the course of employment, in the employer (legal to vest in the person who first owner of copyright specifically named of copyright (Section 35(6)). In case a work is created in the copyright shall belong to person) under the commissioned the work or (Section 21(2)). Please note living individual? This does not include the course of author’s the employee who created following conditions. the employer. this does not include provision for moral rights. employment under a the work, unless agreed 1) the work is made by an provision for moral rights. contract-of-service, the otherwise. employee in the course of The author's right is 2. Subject to any agreement Ownership can be varied by employer, in the absence of his duties; transferable by assignment, to the contrary, a person or agreement, assignment. any agreement to the However, if the work is 2) on the initiative of a testamentary disposition or corporate entity who has contrary, is regarded as the created in official service (e.g. legal person or other by operation of law, in commissioned a copyright Authors must be human. first owner of copyright employment relationship with employer; which case the assignee work will be the first owner of This excludes authorship by vesting in the work. On the a government agency), the 3) the work is made public shall be the owner. any copyright provided that non-living individuals and other hand, in case the work copyright shall belong to the under the name of such the commissioning arose also where the work is is made in the course of the government agency, unless legal person; The author must be a before the work was created wholly generated by author’s employment under a otherwise agreed. 4) there is no contract named individual who may and the work was created in computer means. contract-for-service (for stipulates otherwise. transfer his rights by law or pursuance of the example, sub-contractor If a legal entity announces a contract. commission agreements) the employee copyright work without /external consultant, in the stipulating the author, then Ownership can be varied by absence of any agreement to such legal entity should be agreement and assignment. the contrary, is regarded as deemed as the author, unless first owner of the copyright proven otherwise. Authors may be human or a vesting in such work. body corporate. It is not necessary for an author to be a living individual. What is the Term of Term of protections vary The term of copyright in a The term of protection 5o years after death of Generally, copyright in any Term of protection varies Protection for a depending on type of literary, dramatic, musical or depends on the copyright author, starting from literary, musical or artistic depending on the type of copyrighted work? works. For artistic works, artistic work published within work subject to protection. creation. In the case of work shall subsist during work. For artistic works, Does it vary for protection continues until the lifetime of the author is Cinematographic, 70 years the life of the author plus 50 protection continues until the different types of subsist until the end of 70 lifetime of the author plus Economic rights of the after publication, if it is not years after his death. end of 50 years after the works? years after the end of the 60 years after the author’s following works will remain published. However, if a work has not end of the calendar year in calendar year in which the death. The term of copyright valid as long as the author's been published during the which the author of the work author of the work died in cinematograph film or lifetime plus 70 years after The term of protection lifetime of the author, died (Section 22(1)). (Section 33(2)). sound recording is 60 years his/her death (commencing begins with the creation of copyright in the work after the work is published. from January 1st of the work and continues to continues to subsist until following year): subsist until the end of a the expiration of 50 years, period of fifty (50) years following the year in which a. Books, pamphlets, and all following the death of the the work was first other literature works; author. However, published. In the case of a b. Speeches, lectures, and copyright of a work for hire work with joint authorship, other similar forms of work; continues to subsist until the life of the author who c. Props for educational and the end of a period of fifty dies last is used for the scientific purposes; (50) years following the purpose of calculating the

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country ASIA AUSTRALIA INDIA INDONESIA JAPAN MALAYSIA NEW ZEALAND Part I d. Music and songs with or making public of the work copyright duration of the without text; or the creation of the work work. e. Drama, musical drama, if it has not been made dance, choreography, public within a period of puppetry/ wayang, and fifty years following its pantomimes; creation. Copyright in a f. Works of art in the form of cinematographic work paintings, pictures, carvings, continues to subsist until calligraphy, sculpture, the end of a period of statues, or collages; seventy (70) years g. Architecture works; following the making public h. Maps; and of the work or the creation i. Batik art or other art motifs. of the work if it has not been made public within a For the following works, the period of seventy (70) economic rights will remain years following its valid until 50 years from the creation. first publication:

a. Photographic works; b. Pictures; c. Cinematographic works; d. Video games; e. Computer programs; f. Paper visualizations; g. Translations, interpretations, adaptations, anthologies, database, adaptation, arrangement, modification, and other works as a result of transformation; h. Translation, adaptation, arrangement, transformation, or modification of traditional cultural expression; i. Compilations of creations or data, whether in a format that can be read by computer program or other media; and j. Original compilations of traditional cultural expression as long as the compilation is an original work.

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Meanwhile, the following types of works have a different length of protection:

a. Applied art is protected for 25 years from the first publication. b. Traditional expression that is owned by the Government will be protected without any time limitations. c. Shows or performances are protected for 50 years from the first performance. d. Sound recording works are protected for 50 years from the first completion of the recording. e. Broadcasting works are protected for 20 years from the first broadcast.

If a work is owned by a legal entity, the economic rights would be valid for 50 years commencing from the first publication. Are there benefits Copyright laws are In a criminal enforcement No While it is difficult to obtain Copyright is not limited by Copyright laws are preferred to using copyright preferred where the under the Trade Marks Act, if copyright protection of a classification, so if a party’s where the infringer is not rights/laws for logo infringer is not using the a complaint is filed directly logo, such protection logo is used on goods that using the logo "as a trade enforcement logo "as a trade mark" with the Police for carrying certainly has some are not covered by (or mark" (that is used in (instead of (that is used in relation to out the raid/search & seizure benefits if the logo is related to) those identified relation to the trademark law)? the goods/services to operation, the police is highly designed (for in its trademark registration, goods/services to denote denote trade origin, for required to take an opinion example, characters) for that party may still obtain trade origin, for example example when used in from the Registrar of Trade the following reasons. relief for copyright when used in relation to relation to comparative Marks (envisaged in the 1) Copyright protection infringement comparative advertising advertising depicting the Indian Trade Marks does not require the depicting the logo of a trade logo of a trade mark) or legislation) before proceeding similarity of For logos that also qualify mark) or where the infringer where the infringer in the matter. However, no goods/services. for copyright protection, reproduces the logo in reproduces the logo in such requirement is 2) Copyright is granted copyright law may provide relation to goods and relation to goods and envisaged under the upon creation, which is the brand owner with services not covered by a services not covered by a Copyright Act and, therefore, cost effective for the owner greater ammunition and trade mark specification.

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country ASIA AUSTRALIA INDIA INDONESIA JAPAN MALAYSIA NEW ZEALAND Part I trade mark specification. enforcement actions under as the owner does not additional remedies for the Copyright Act are have to have all the combating infringement expeditious. possible designs counterfeiting, dilution and registered hijacking. Copyright protection may also be useful when the logo cannot be, or has not yet been, protected as a trademark. Are there It is often difficult to Proving ownership of If the logo is being used as a Copyright enforcement Yes when it comes to It is often difficult to disadvantages in evidence authorship of a copyright in the absence of a trademark to differentiate one would be a difficult course ownership. Brand owners evidence authorship of a using copyright logo and therefore copyright registration product/service to another, of action to enforce logo in and practitioners need to logo and therefore rights/laws to ownership of copyright. becomes an onerous task in the enforcement officials Japan for the following keep in mind that the ownership of copyright. protect or enforce an enforcement action. would require the reasons. ownership of trademarks rights in logos enforcement to be carried out 1) Copyright protection of and copyright is vastly (such as based on trademark a logo has been negated distinct. preclusion or infringement and not in Japan questions of copyright infringement. 2) The plaintiff must bear Copyright is not a proper the burden of proof in monopoly. It is essentially a ownership)? showing rather subjective negative right to prevent act of copying in addition copying. A trade mark right to similarity between the is a monopoly. works to enforce copyright Trade mark rights are while trademark protection acquired through being first can be granted without to file and first to use. Not establishing such so for copyright, where subjective element. there is no use requirement 3) Courts tend to closely and ownership look at the similarity automatically vests in the between the works, original author of the work narrowing the scope of the until it is transferred. copyright protection. Copyright owners often overlook having the work transferred from the author. Special Criminal complaints related to Note that artistic works Considerations infringement will only be created before 1 April 1963 processed based on may not be subject to complaints. The criminal copyright if they were complaints could be capable of design addressed to police registration at that time. investigators or the Thus a crocodile logo investigators at the created before this time was Directorate of Investigation at held not to be the subject of

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country ASIA AUSTRALIA INDIA INDONESIA JAPAN MALAYSIA NEW ZEALAND Part I the Directorate General of copyright (Crocodile Intellectual Property International Pte Ltd v ("PPNS"). To support the Lacoste [2015] NZHC 2432). criminal complaint, the copyright holder should submit the proof of copyright ownership (e.g. if the work is created on commissioned basis by third party vendors, the copyright holder should submit the copyright assignment form or affidavit confirming the ownership of the copyright work). In practice, copyright recordal would also be a useful prima facie evidence to support the enforcement. Current practice requires copyright owners to support their criminal complaints by showing the Police or PPNS evidence or supporting documents of the alleged infringers' deliberate and clear intent to infringe their copyright. The law encourages the disputing parties to try to settle their disputes through mediation before taking the criminal route. Therefore, before filing any criminal complaint, the police and PPNS would expect the copyright owner to first raise objections to the alleged infringers by sending cautionary letters or demand letters. If there is no possibility of settlement and the alleged infringers do not comply with

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country ASIA AUSTRALIA INDIA INDONESIA JAPAN MALAYSIA NEW ZEALAND Part I the copyright owners' demands to cease the possible infringements, the copyright owner would be able to file a criminal complaint. Evidence that the copyright owner has reached out to the alleged infringers demanding that they stop the infringement would be required to show the intent of infringement by the conflicting party. Hence, this step is considered crucial to support the criminal complaint to be lodged by a copyright owner as well as during the criminal case initial assessment by the police or PPNS as the enforcement officials handling the complaint. Completer Lai Lynn Choong Shivam V. Singh (Mr.) Daru Lukiantono / Kazuko Matuo, hslegal, LLP Tasneem Haq Lai Lynn Choong Norton Rose Fulbright Remfry Hadipuntranto, Hadinoto & Nakamura & Partners Norton Rose Fulbright Partners Daru Lukiantono / Wiku Anindito / Hesky Ondo Manurung Manurung Hogan Lovells -Chikako Verifier (if needed) Hashimoto

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country ASIA PHILIPPINES SINGAPORE SOUTH KOREA THAILAND VIETNAM Part II How is copyright created in Copyright is created from the Copyright arises immediately Copyrights arise the moment a Rights are created upon creation Rights are created upon fixation the country (creation/ moment of creation. (Section upon creation and expression work is created. Neither of the works. (Article 6.1. of the IP Law) fixation/ registration)? 172.1 of the Intellectual Property of a work. registration nor fixation is Code) required.

What are the requirements Originality- protected works must Some level of skill or labor Minimum level of originality is Originality; must be the work as Originality and creativity are for protection (originality/ be original creations (Section and/or judgment used in required for copyright protection. specified in the copyright law, required for copyright to be creativity/ formalities or 172.1 of the IP Code). creating the expression is No procedures or formalities are literary work, musical work, etc.; protected. requirements for required. required for enforcement. must be a qualified person enforcement)? Originality means the material is When there is an infringement, not copied and evidences at Works must be expressed or the plaintiff shall prove that he or least minimal creativity. (Ching fixed. In relation to literary, she is the owner of the copyright vs. Salinas Sr, G.R. No. 161295, dramatic, musical and artistic based on the copyright 29 June 2005)(Philippine works, there must also exist registration certificate or other Supreme Court) an identifiable author who is a necessary evidence in case of natural person ( Asia Pacific absence of a copyright Publishing Pte Ltd v Pioneer registration certificate. In & Leaders (Publishers) Pte addition, the plaintiff shall Ltd [2011] 4 SLR 381). provide the Enforcement Authorities with evidence of the In general, copyright subsists infringement of copyright. in a work or subject-matter if (1) the work or subject-matter was first published or made in Singapore or in a member country of the Berne Convention or the WTO; or (2) the author of the work or the maker of the subject was a citizen or resident of Singapore or of a member country of the Berne Convention or the WTO at the time when the work was first published or made. What statutes or Republic Act 8293 (or the IP Copyright Act Chapter 63, The Copyright Act protects works The Copyright Act B.E. Article 14.1.g. of the IP Law of regulations would be Code) as amended. Trade Marks Act Chapter of applied art, which is defined as 2537(1994) as amended by the Vietnam, “Article 14. Forms of applicable to copyright 332. "artistic works which are able to Copyright Act (No. 2 and No.3) protected works protection for logos? be copied on products in the B.E. 2558 (2015). same appearance and could be 1. Literary, artistic and scientific independently recognized apart works protected including: from the products themselves, including designs.” …(g) Fine art works and applied

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country ASIA PHILIPPINES SINGAPORE SOUTH KOREA THAILAND VIETNAM Part II art works.” Identify any important court No apparent Supreme Court Rovio Entertainment Ltd v (Case no. 2012Da76829, decided Supreme Court's Decision No. Not any case, where logos were or other legal decisions ruling expressly stating that logos Kimanis Food Industries Sdn on December 11, 2014). There is 4588/2552: or were not protectable, was (cases where logos were or can be protected by copyright. Bhd [2015] SGHC 216 a recent Supreme Court decision recorded at the courts. There are were not protectable) Wing Joo Loong Ginseng where the copyright ability of the Although the Trademark Act does some cases were recorded at May be able to infer protection of Hong (Singapore) Co Pte Ltd logos below were recognized: not provide clearly and precisely the Copyright Office of Vietnam logos in one case decided by v Qinghai Xinyuan Foreign to prohibit use of other's copyright (COV) as follows: Supreme Court involving Levis's Trade Co Ltd and Another work as its own trademark, “arcuate design”. and Another Appeal [2009] 2 unauthorized reproduction and 1. Logos protectable The case implies that designs, SLR 814; [2009] SGCA 9 adaptation of other's copyright 1.1. Logo Cha ca Thang Long which may be in a form of a logo, work and use it as its own 1.2. Logo LUNA may be subject of a copyright The case is trademark is contrary to the 1.3. Logo HB Group provided the same is original: that notable in that the legislative intent, public order, is, not a “copycat version of a court clearly stated morality, and public policy. The 2. Logos not protectable): 2.1. prior design.” (Sambar v. Levis that copyright mark at issue consists of a Logo WD40 CAN DESIGN Strauss GR 132604 (2002). protection for logos characteristic prohibited to are not to be excluded register under the Trademark Act, just because the logos Section 8 (9). Therefore, it is not are used as trademarks. registrable under the Trademark Act, Section 6 and 16.

Is copyright registration for Registration is possible. No, there is no copyright Yes, as long as the logo is No; there is not copyright Copyright registration for a logo a logo possible? Copyright is a statutory grant. A registration system in copyrightable. registration in THAILAND. is possible in Vietnam logo may be registered under two Singapore. categories of works that are subject to copyright protection under the IP Code:

(a) works of drawing, painting, architecture, sculpture, engraving, lithography, or other works of art; models or designs for works of art; or (b) pictorial illustrations and advertisements. How is ownership of a Generally, copyright belongs to Generally, the person who Copyrights initially belong to the Copyright is defined in the Act as Copyright owner is an author copyright determined? Is the author. In case of joint created the work (i.e. the actual author(s). A legal entity, the exclusive right to execute any who creates his work by using there a concept of an authorship, the co-authors own author) owns the copyright in organization or other person may act by virtue of the Act regarding his own time, finance and other employer owning a work the copyright unless they have an the work. However, there are be the "author" of a work and to the work created by the author. physical and technical facilities. under a work made for hire agreement. exceptions to this general own the copyright in a work, if (i) concept? Must an author rule. Some exceptions are: the work was created by an Copyright in the work created by Co-author who co-creates a

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country ASIA PHILIPPINES SINGAPORE SOUTH KOREA THAILAND VIETNAM Part II always be a specifically There is a concept of an employer employee within the scope of a work made for hire vests in the work by using his own time, named living individual? owning a work under a work for Employment: If the work is employment, subject to the employer, unless the author and finance and other material hire concept. In case of created by an employee employer's supervision; and (ii) the employer have agreed conditions shall have the employment, employees will hold pursuant to the terms of his there is no separate or particular otherwise. personal rights and property the copyright if the resulting work employment, the employer contract or employment regulation rights as stipulated in the IP Law. is not part of their regular duties. owns the copyright in the providing that the status of author The author can be a juristic If it is part of their regular duties, work. of, or ownership of copyright in, person established under the Copyrights owner is an the employer is the copyright the work-for-hire should belong to Thai law. organization, or individual that owner unless there is an Special situation for the employee. assigns a duty to or contract agreement to the contrary. newspaper/magazine/periodic with an author. An organization al employees: Where an that assigns a duty of creating a In case of a commissioned work, employee of a newspaper, work to an author, who is its copyright belongs to the author magazine or periodical employee, shall be the owner of unless there is a contrary creates a literary, dramatic or the copyright as stipulated in the agreement. artistic work pursuant to the IP Law, except where otherwise terms of his employment and agreed. An author always must be a for the purpose of publication specifically named living in a newspaper, magazine or An organization, individual that individual. “Author” is the natural periodical, the proprietor of contract with an author who person who has created the work the newspaper, magazine or creates a work, shall be the (Section 171.1 IP Code) periodical owns the copyright owner of the copyright as in respect of publication in or stipulated the IP Law, unless reproduction for the purpose otherwise agreed. of publication in any newspaper, magazine or An organization, individual that is periodical. The employee heir of copyright in accordance owns the remaining rights with law on inheritance shall be that make up the copyright the owner of the copyright as bundle of exclusive rights. stipulated in the IP Law.

Commissioning: If a portrait Copyright owner is a copyrights /photograph /engraving is assignee. commissioned by another party, the commissioner owns the copyright in the work. If the portrait/photograph/engraving is required for a particular purpose, this purpose must be communicated to the commissioned party. While the commissioner is the copyright owner, the

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country ASIA PHILIPPINES SINGAPORE SOUTH KOREA THAILAND VIETNAM Part II commissioned party has the right to stop others from doing any act comprised in the copyright, unless such act is done for the particular purpose for which the portrait /photograph/ engraving is created.

For other types of commissioned works: Ownership belongs to the commissioned party, unless the commissioner and commissioned party otherwise agree.

The author must be a named individual who may transfer his rights by law or contract.

Copyright can be transferred either as an entire bundle, or as a single, distinct right within the bundle. The copyright owner may transfer his rights to another party or entity either partially or wholly. What is the Term of The term is the lifetime of the The duration varies according Under the current Copyright Act, The Term of Protection of a Moral rights, namely (i) To name Protection for a author plus 50 years. to the type of copyright work economic rights are generally copyrighted work is 50 years from his or her work; (ii) To put his or copyrighted work? Does it concerned. protected for 70 years from the the death of the author. her real name or pseudonym in vary for different types of In case of joint authorship, the author's death. The term for the work; to have his or her real works? term is measured from the life of Literary, dramatic, musical works-for-hire, cinematographic In case the author is a juristic name or pseudonym mentioned the last surviving author plus 50 and artistic works 70 years works and anonymous or person, the term of copyright when his or her work is years from his death. from the end of the year in pseudonymous works is 70 years protection shall be fifty years as published or used; and (iii) To which the author died. after the work is made public. from the authorship; however, if protect the integrity of his or her In case of anonymous or the work is published during such work, to object to any alteration, pseudonymous works, copyright Specifically for photographs, period, copyright protection shall mutilation, distortion or other is 50 years from date in which the or if the work is published be fifty years as from the first modification in any form which work was first lawfully published. after the death of the author, publication. prejudice against his or her If before this term ends, the it lasts for 70 years, from the honor and prestige shall be identity of the author is revealed end of the year in which the protected for an indefinite term.

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country ASIA PHILIPPINES SINGAPORE SOUTH KOREA THAILAND VIETNAM Part II the general rule will apply. work was first published. The moral rights, namely, to In case of work of applied art, the Published editions of literary, publish his or her work or term is 25 years from making. dramatic, musical authorize another person to do or artistic works (layout) 25 so, and the economic rights For photographic and audiovisual years from the end of the enjoy the following term of works, 50 years from publication year in which the edition was protection: or if not published, from making. first published. a. Cinematographic works, photographic works, works of Sound recordings and films applied art and anonymous 70 years from the end of the works have a term of protection year in which the sound of 75 years from the date of first recording or film was first publication. For cinematographic published. works, photographic works and works of applied art which Broadcasts and cable remain unpublished within programmes 50 years from twenty five years from the date the end of the year of making of fixation, the term of protection the broadcast or cable is 100 years from the date of programme. fixation. For anonymous works, when information on their Performances authors is published, the term of 70 years from the end of the protection will be calculated year of the performance. under Point b of this Clause. b. A work not specified at Point a of this Clause is protected for the whole life of the author and for 50 years after his/her death. For a work under joint authorship, the term of protection expires in the fiftieth year after the death of the last surviving co- author; c. The term of protection specified at Points a and b of this Clause expires at 24:00 hours of December 31 of the year of expiration of the copyright protection term. Are there benefits to using Copyright does not need prior Copyright is not limited by While trademark infringement is (1) The court will normally grant a Protection of logo under copyright rights/laws for registration in order to be classification, so if a party’s recognized only when the higher fine for copyright copyright right law is broader logo enforcement (instead enforced. The execution of an logo is used on goods that designated goods/services of the infringement; than under the trademark law of trademark law)? affidavit attesting to copyright are not covered by (or related registered mark are identical or (2) One half of the fine paid in as it is not limited to the

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country ASIA PHILIPPINES SINGAPORE SOUTH KOREA THAILAND VIETNAM Part II ownership is prima facie evidence to) those identified in its similar to the goods/services accordance with the judgment registered goods/services. of the matters stated therein. trademark registration, that provided by the infringer, shall be disbursed to the owner of Therefore, in case, a third party party may still obtain relief for copyright infringement is copyright without prejudice the using the logo for different copyright infringement. recognized irrespective of the right goods/services, it shall be easier goods/services involved. of the owner of copyright to bring for the owner to take an For logos that also qualify for a civil action for damages for the enforcement action against the copyright protection, amount which exceeds the fine third party using copyright right copyright law may provide the that the owner of copyright or law than trademark law. brand owner with greater performer's rights have received. ammunition and additional (3) The offence in this Act is a remedies for combating compoundable offence. infringement, counterfeiting, dilution and hijacking. Copyright protection may also be useful when the logo cannot be, or has not yet been, protected as a trademark.

In addition, if copyright infringement is pursued in a timely manner, the prevailing party in a copyright infringement action may be awarded a recovery of civil remedies including statutory damages in lieu of damages of not more than $20,000 which may not be readily available under a trade mark infringement action.

The range of remedies which the court can order in infringement proceedings includes an injunction, either damages or an account of profits, an order for delivery up and/or disposal of infringing articles in relation to the copyright. In lieu of damages or an account of profits, the copyright owner

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country ASIA PHILIPPINES SINGAPORE SOUTH KOREA THAILAND VIETNAM Part II can elect for an award of statutory damages, for which the court can grant not more than $10,000 for each work or subject matter in respect of which the copyright has been infringed but not more than $200,000 in the aggregate, unless the owner proves that his actual loss from such infringement exceeds $200,000. Are there disadvantages in Copyright protection extends to Yes when it comes to Whether a specific logo meets the As copyright infringement is a In practice, when a third party using copyright rights/laws the expression of an idea but ownership. Brand owners and minimum level of originality compoundable or private offense, use a similar logo, it is more to protect or enforce rights not the idea itself. As long as the practitioners need to keep in required to be copyrightable the police officer has no authority difficult to persuade the in logos (such as defendant can show that his mind that the ownership of under the Copyright Act can be to initiate an action without a Enforcement Authorities of preclusion or questions of expression (logo) is original, a trademarks and copyright is disputed. Copyright protection for claim made to them by a Vietnam that the use is an proper ownership)? claim for infringement will fail vastly distinct. works of applied art was copyright owner. infringement of the copyright even if the variations in the broadened by an amendment to than using the trademark law. contending logos are slight. Copyright is not a monopoly. the Copyright Act, which became It is essentially a negative effective July 1, 2000. Thus, In the absence of an arduous right to prevent copying. A especially with respect to logos examination on the originality of a trade mark right is a created before July 1, 2000, it work, and the validity of the date monopoly. may be difficult to assert copyright of creation, a claim for copyright Trade mark rights are protection. protection over a logo is acquired through being first to vulnerable to attack. file and first to use. Not so for copyright, where there is no use requirement and ownership automatically vests in the original author of the work until it is transferred. Copyright owners often overlook having the work transferred from the author. Special Considerations "Works are protected by the sole NA Registration of copyright is not fact of their creation, irrespective compulsory in Vietnam, of their mode or form of however, owner of the copyright expression, as well as of their is recommended to register for content, quality and protection of their copyright with purpose."( Section 172.2 of the IP the COV. After the registration, it Code ) shall be much easier for the owner to prove that he is owner

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country ASIA PHILIPPINES SINGAPORE SOUTH KOREA THAILAND VIETNAM Part II of the copyright and it shall be much more convenient for him in taking an enforcement action against a possible infringement.

Is there a concept of an employer owning a work under a work made for hire concept? Yes (please see the above Item 3)

Must an author always be a specifically named living individual? No Completer Alex Ferdinand S. Fider hslegal, LLP Tasneem Haq Sung-Nam Kim and Angela Kim, Pavinee Bunyamissara Nguyen Anh Ngoc ANGARA ABELLO Kim & Chang INVESTIP CONCEPCION REGALA & CRUZ LAW OFFICES Verifier (if needed) Phatthrawat Nakaranuruck

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Region Country Country Country Greater China CHINA HONG KONG TAIWAN How is copyright created in the country Copyright protection automatically applies to a The Copyright Ordinance ("CO") provides an open Copyright protection will be granted automatically (creation/ fixation/ registration)? work when it is created. qualification system, under which any recognized upon the creation of a work. work created by any person (including a company or other legal person) or published anywhere in the world will qualify for copyright protection in Hong Kong. What are the requirements for Originality. The logo should have minimum The Copyright Ordinance ("CO") provides an open 1. independent creation without plagiarism protection (originality/ creativity/ creativity so that it won't be deemed a qualification system, under which any recognized (originality); and formalities or requirements for decorative device which could fall into the public work created by any person (including a company or 2. the character or uniqueness able to express enforcement)? domain. other legal person) or published anywhere in the world individual thoughts, spirit and emotions will qualify for copyright protection in Hong Kong. (creativity). Work does not need to be unprecedented as long as there are changes that can distinguish a work from prior works and present its character or uniqueness. What statutes or regulations would be There is no particular statute or regulation on The CO (CAP 528) provides copyright protection for The relevant statute is the Copyright Act. applicable to copyright protection for protection for logos. However, the PRC artistic work, which includes graphic work, photograph, logos? Copyright Law and the Implementing Regulations sculpture or collage; or work of artistic craftsmanship. of the PRC Copyright Law contains provisions applicable to copyright protection for logos. Identify any important court or other A logo is protectable so long as it reaches the There are no known Hong Kong cases covering this Intellectual Property Court 2011 Shing Jr Shang Yi legal decisions (cases where logos originality requirement. This has been confirmed specific issue. Tz No. 47 Criminal Judgment(智慧財產法院 100 年 were or were not protectable) by several trademark office decisions or court 度刑智上易字第 47 號刑事判決 ) judgments, for example: The Plaintiff was the owner of a designed logo - In 2010-2011, a Chinese animation producer called “ChromeHeart” and had the logo registered has prevailed in a few civil actions before several as trademark in various goods, which were mostly Chinese courts based on its various logo designs pearls and jewels. The Plaintiff alleged that the (such as defendant infringed his Trademark rights and Copyright for labeling his trademark on the counterfeit products and selling those products to the public. and ).

The court admitted plaintiff’s claim for trademark In addition to civil actions against pirates with infringement and turned to Copyright infringement logo copyright, there are a few cases involving with further considerations and elaborations and refusal of trademark application or invalidation of held that the design and the shape of trademark registration based on prior copyright in “ChromeHeart” had met the minimum requirements logos. Below are some typical cases: for creativity and originality under Copyright Act, therefore, “ChromeHeart” shall be protected as - The PRC Trademark Office has refused to artistic work. register a third party application for

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Region Country Country Country Greater China CHINA HONG KONG TAIWAN The court concluded that the defendant’s action not only constituted trademark infringement but also copyright infringement for reproduction, distribution “ ” after Coach has proved and display the trademark (artistic work) to the evidence of copyright ownership over public without authorization.

Intellectual Property Court 2015 Min Ju Shang Yi Tzi No.11 Civil Judgment (智慧財產法院 104 年度民 “ ”. 著上易字第 11 號民事判決

- The PRC Trademark Review and Adjudication The Plaintiff was the owner of a logo, a combination Board has refused registration of a device mark of words “SUNSHOW” and a pattern. However, the “ ” (PRC plaintiff did not register the logo as trademark in Application No. 4792225; filed by a Chinese Taiwan, therefore, the plaintiff claimed for copyright individual) based on prior U.S. copyright infringement when the defendant registered a registration by the brand owner of "Lightning similar logo as trademark in Taiwan. Audio" (Rockford). The court concluded that the pattern of the logo had - The Beijing No. 1 People's Court has met the requirements for Copyright protection and invalidated a trademark shall be protected as artistic work and that Defendant’s registration for the logo was a reproduction of the pattern (artistic work), and therefore had infringed Plaintiff’s Copyrights. registration for " " (PRC Application No. 8980223) based on prior copyright owned by the creator of the logo. The court stressed that special design of "eyes and nut" over the Chinese character have reached originality requirement and thus should be protected. Is copyright registration for a logo Yes No. HK does not have a copyright registration system. There is no copyright registration system in possible? Taiwan for registration of copyright works.

In the absence of a registration system, an author is responsible for presenting evidence proving that he/she is the author, the time of completion of the work and that the work is completed independently without plagiarism when there are disputes over the work’s copyright.

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Region Country Country Country Greater China CHINA HONG KONG TAIWAN

How is ownership of a copyright If an artwork (e.g. a logo) is created by an A work created by an employee in the course of In general, copyright in a work is owned by the determined? Is there a concept of an employee, then by default the employee would employment is owned by the employer, subject to any author who created the work. employer owning a work under a work be copyright owner (author). However, the agreement to the contrary. Also, subject to any made for hire concept? Must an author employer can reach an agreement with the agreement to the contrary, the employer must pay the Unless otherwise agreed, where a work is always be a specifically named living employee acquire copyright ownership. In employee an award in respect of any exploitation of completed by an employee within the scope of individual? practice, a company should register its logo the work that could not reasonably have been employment, such employee is the author of the designs as “legal entity’s work”, which can contemplated by the parties at the time the work was work but the economic rights to such work shall be attribute the author to the company (instead of an created. If the parties cannot agree on the amount of maintained by the employer. employee). the award, the matter will be determined by the Copyright Tribunal. What is the Term of Protection for a Life of the individual author plus 50 years. Life of the author plus 50 years. Moral Rights –Perpetual copyrighted work? Does it vary for For a “legal entity’s work”, the protection term is Economic rights in general – Lifetime of the author different types of works? 50 years after the first publication of the work. plus 50 years Economic rights in a work authored by a juristic person - 50 years after its release or 50 years after completion of the creation where the work is not publicly released. Economic rights for photographic works, audiovisual works, sound recordings and performance - 50 years after its release or 50 years after completion of the creation where the work is not publicly released. Are there benefits to using copyright • Protection for goods and services can be wider • Protection for goods and services can be wider than • It can be used to protect against many forms of rights/laws for logo enforcement than trademark protection. Copyright actions will trademark protection. Copyright actions will not copying, not just copying which causes confusion (instead of trademark law)? not consider the goods/services where the logo is consider the goods/services where the logo is affixed. amongst consumers. affixed. • Unlike trademarks, copyright is also unconstrained • Filing copyright registration immediately by the need to show that the goods or services to after the creation of logo design is highly which the fake logo is applied are identical or recommended as it will: a) form prima facie similar. It can therefore be used by brand owners to evidence of copyright ownership; and b) provide obtain “cross class” protection for their brands. strong evidence showing prior creation of the work, which would be helpful in opposition actions against pirate trademark filings. Are there disadvantages in using • The standard of similarity in copyright actions • Difficult to build a criminal case based on • Time and costs involved with registration copyright rights/laws to protect or is higher than that in trademark actions. The infringement of copyright in a logo. However, the Hong enforce rights in logos (such as pirate’s logo must be identical or almost identical Kong Customs (the body in charge of IP-related • Difficult to identify records to prove ownership preclusion or questions of proper to the right owner’s logo; minor changes ma enforcement and criminal investigation) is more willing ownership)? to take actions involving "false trade description", the \NORTHVA - 701790/000420 - 1127614 v1 September 2019

Region Country Country Country Greater China CHINA HONG KONG TAIWAN absolve the pirate from liability "forged trade mark" or the "infringing goods" under the Trade Descriptions Ordinance. • Risk that the authorities/courts may refuse to acknowledge copyright. • If it is shown that, at the time of the infringement, the defendant did not know and had no reason to believe • Even in where the copyright is acknowledged, that copyright subsisted in the work in which the action scope of protection would be narrower relates, the plaintiff would not be entitled to damages, but could only claim for other remedies (e.g. injunctions).

• Potentially less damages. For copyright infringement, damage would be based on the depreciation caused by the infringement to the value of the copyright or the actual harm or losses to the plaintiff’s reputation. For trademark infringement, however, the plaintiff could choose between damages or account of profits.

Special Considerations N/A N/A Completer Baker & McKenzie Baker & McKenzie Baker & McKenzie Verifier (if needed)

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Region Country Country Country Country Country Country Europe AUSTRIA BELGIUM GERMANY FRANCE IRELAND ITALY Part I How is The copyright originates Copyright comes into Rights are created upon A work of authorship is Copyright protection is Rights are created upon copyright from the creation of a work existence by and as of the fixation. under copyright protection obtained automatically in creation. created in the and no formal requirements mere creation of the work, as as soon as it is created. No Ireland. Copyright protection country (e.g., registration on public long as that the work is registration or fixation is arises from the moment the needed. Fixation is advised (creation/ registers) need to be copyrightable and meets the work is created and no fixation/ to prove the date of creation fulfilled in order for originality requirement. registration is required. registration)? but not mandatory. copyright to be Protection by copyright law acknowledged. For the does thus not require requirements of a registration. copyrighted work please see next question below. What are the A copyrighted work under Copyright protection is Works are protected if they A minimum level of For works to be protected by Originality and creativity requirements for the Austrian Copyright Act reserved for works that meet are the author's personal originality and formalization copyright they must exist in (According to Art. 1 of the protection has to fulfill the following the originality requirement. intellectual creation. There is or shaping is required. An some form and must be Copyright Law). (originality/ requirements: the Copyright a certain level of creativity idea of a logo will not be original. There is no creativity/ Act only protects original Belgian copyright law does required, however the level protectable. No formality is exhaustive list as to what formalities or of creativity necessary is needed for enforcement but intellectual productions in not define or enumerate the works can be protected by requirements for rather low. the plaintiff will have to prove enforcement)? the fields of literature, types of work that are eligible and explain the originality of copyright. music, art and for copyright protection There is no formality the logo as well as the date cinematography. If a (copyrightable). requirement for protection or of creation of the logo. creation is sufficiently enforcement. Copyright is ‘peculiar’ (individual, It is generally accepted by created and enforceable with creative, original) to qualify case law and legal scholars creation. as a ‘work’ in the legal that copyright protection is sense, it is automatically reserved for works that have protected by copyright at been expressed in a concrete the moment of creation. form (whether tangible or intangible) and thus cannot be awarded to mere ideas, procedures, methods of operation or mathematical concepts as such.

Although Belgian law does not define ‘originality’ either, several references are made to “the author’s own intellectual creation” in \NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Europe AUSTRIA BELGIUM GERMANY FRANCE IRELAND ITALY Part I relation to photographs, databases and software. It follows from the European Court of Justice’s (ECJ) landmark judgment in the Infopaq case that the notion of originality must be given an autonomous and uniform interpretation throughout the European Union as meaning “its author’s own intellectual creation” (C 5/08, Infopaq International A/S v Danske Dagblades Forening, July 16 2009, § 37). The ECJ developed the concept by stating that an intellectual creation is an author’s own “if it reflects the author’s personality”. That will be the case “if the author was able to express his creative abilities in the production of the work by making free and creative choices”, “stamp[ing] the work created with his ‘personal touch’” (“his personality”) (C 145/10, Painer v Standard VerlagsGmbH, December 1 2011, § 88-89, 92 and 94).

The Belgian courts apply this ECJ case law quite consistently. What statutes or If the logo is an original Title 5 of Book XI of the German The French Intellectual The laws in Ireland that Law n. 633 of 22 April 1941 regulations intellectual production and Belgian Code on Economic "Urheberrechtsgesetz" Property Code (hereafter govern copyright are the: on Copyright protection. would be qualifies as a copyrighted Law of February 28 2013. (Copyright Act). "the FIPC") is applicable as applicable to work its protection falls well as the EU legislation • Copyright and Related \NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Europe AUSTRIA BELGIUM GERMANY FRANCE IRELAND ITALY Part I copyright under Section 3 of the such as the EU Directive Rights Act 2000; protection for Austrian Copyright Act 2001/29/EC of May 22th, • Copyright and Related logos? (Works for Art). 2001 on the harmonization Rights (Amendment) Act of certain aspects of 2004; Copyrights and related rights • Copyright and Related in the information society. Rights (Amendment) Act 2007; • sections of the Patents (Amendment) Act 2006; and • designs are governed by the Industrial Designs Act 2001.

Identify any There are only a few older Judgments that recognized Higher Regional Court of We do not know any No known cases where Court of Rome, 24 - 12 - 2002 important court decisions in Austria, i.e. copyright protection for logos: Munich - Decision of fundamental Court decision logos were protected or not (available in GADI 2004, 330) or other legal "Happy Skiing (OGH 4 Ob Court of Appeal of Brussels 16.07.2015 Case No. 29 U in this matter. But we can protected under copyright - a trademark cannot be decisions 76/89), "Arrow Graphic" 16 January 2012 on the logo 4823/13 - Copyright mention a Court decision of law. registered if it violates third (cases where (OGH 4 Ob 1131/94), of the news paper "La protection for graffiti tag logo the chambre commerciale parties' copyright (and, logos were or "k1x" granted with reference de la Cour de cassation conversely, a logo o simple "Kitzbueheler Chamois" Dernière Heure"; Court of were not to the decision of November (Highest court of justice in phrase can be copyright protectable) (OGH 4 Ob 63/05a), "Tirol Appeal of Ghent 28 2013 of the Federal France) of July 4th, 2006 protected). Milch-Logo" (OGH 4 September 2009 on the logo Supreme Court concerning which states that: Court of Milan, 23 - 07 - 2003 Ob49/10z). of discount supermarket the threshold of creativity "commercial names and (available in GADI 2005, 186) “Lidl”;President of the for applied art. commercial logos are not - a trademark cannot be Commercial Court of Liège excluded by nature from the registered if it violates third 25 October 2016 on the logo protection field of the works parties' copyright (and, of sunglasses and watch of authorship." Therefore a conversely, a logo o simple brand “Komono”; Court of logo can be protectable if it phrase can be copyright Appeal of Antwerp 31 May is original. protected). Higher Regional Court of Court of Verona, 20 - 09 - 2011 on the logo of Cologne - Decision of 2005 (available in dejure.com) Tomorrowland. Judgments 23.10.2015 Case No. 6 U - a figurative and graphic logo that did not recognize 34/15 - Copyright protection can be copyright protected copyright protection for logos: granted for "kissing mouth" and modifications thereof President of the Commercial logo painted on AIDA cruise must be authorized by the Court of Antwerp 31 March line ships with reference to author or his heirs. 2015 on the logo of a bakery the Federal Supreme Court Court of Milan, 9 - 06 - 2011 “Konditori”;President of the decision. (available in darts-ip.com) - a Commercial Court of Ghent graphic designer's trademark 28 maart 2014 on the logo of project is copyright protected; IT-company “Made With \NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Europe AUSTRIA BELGIUM GERMANY FRANCE IRELAND ITALY Part I Love.” Is copyright No; there is no copyright Since registration and/or No; there is no copyright No, there is no Copyright No; there is no copyright No, there is no copyright registration for a registration in Austria. deposit are not required for registration in Germany. registration in France. registration in Ireland. If a registration in Italy. However, logo possible? establishing copyright, there logo is to be registered it will as long as said logo is is no statutory/mandatory be registered by way of a considered a work of art, the procedure for doing so. trade mark registration. author may let SIAE (the Italian collecting society for There are some voluntary copyright) administer its initiatives providing the option reproduction and utilization of depositing a work – for rights from third parties. instance, I-Depot organised by the Benelux Office for Intellectual Property and OnlineDepot offered by SABAM, a copyright collecting society. Alternatively, an author can also deposit his or her work with a notary. As registration or deposit does not create any copyright in itself, the most important advantage of either is that it can procure a date of creation, and/or that it can help asserting ownership in a work. How is The creator of a work is the Article XI.170 of the Belgian The author of the work is the Copyright in a logo is owned The owner of the copyright is The individual author is the ownership of a owner of a copyrighted Code on Economic Law sole owner of the copyright. by its author, an individual. the author i.e. the person owner of the copyright, at copyright work. Because of the legal states that copyright belongs The author has to be a There is no work made for who creates the work. least originally. determined? Is requirement for a work to from the start to the natural natural person - companies hire concept in France. An However, there is an If the author is an employee, there a concept be a unique, intellectual person who has created the or other legal persons employer will not exception where an ownership will be immediately of an employer cannot be owner of the automatically own the work and directly transferred to the creation an author can only work. Other persons (legal or employee in the course of owning a work copyright as long as the of his employees except for employer upon creation. If under a work be a natural person, not a natural) may come into author lives. Copyright is software (article L.113-9 of employment creates the the author is self-employed made for hire? legal entity. For the possession of (the economic) only transferable upon death the FIPC) and collective work, unless an agreement and working in pursuance of a Must an author authorship, it does not copyrights as a result of a of the author to his heirs. work (articles L113-2 and to the contrary exists, the contract with the customer, always be a matter whether the author transfer. Under Belgian law L113-5 of the FIPC). employer is the owner of ownership will be transferred specifically has legal capacity or not; the employee or the author of There is no concept of an such copyright. directly to the customer either named living therefore, children and a commissioned work will employer owning a work Collective work is a close upon creation of the work, or individual? mentally disabled people always be the initial holder of made for hire. If an employer concept of work made for Section 21 of the Copyright its acceptance. However, if can be authors.The the copyrights in the works wants to use a work he hire and needs several and Related Rights Act 2000 not otherwise stated, said \NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Europe AUSTRIA BELGIUM GERMANY FRANCE IRELAND ITALY Part I Copyright Act only created in the framework of needs to have a license from conditions: defines an author by transferal of rights will be regulates the allocation of his or her employment or the the employee. If an reference to different limited to the scope and rights between employer assignment. The rights are employee is hired - the work should be initiated situations example: purpose of the contract and employee in not automatically assigned. specifically to create works - by a person (an individual or (Supreme Court, No. 12507 of copyrightable works for e.g. as a designer, an in- a company and should • Sound recording – author 1992). Moral rights belonging house photograph etc. - then involve several contributors to the author (e.g. the right to certain cases (e.g., The employer can acquire the is the producer; the licensing of rights is working under the claim the work's paternity and software). In all other rights by expressly providing generally read into the instructions of this person; • Films – author is the the right to oppose any cases, the general rule for an assignment in writing. employment contract even if producer and the principal deformation and mutilation of would apply whereby the The same applies for the such a license is not - the contributions should be director; and the work which may prejudice copyright remains with the person who commissioned a explicitly granted in there. If merged into this single work • Photograph – author is the his honor or reputation) author (the employee) and work on condition that this the employee is employed without any possibility to photographer. cannot be waived or the employer can only be person is active in a non- for something else, e.g., as identify an individual transferred. successor in exploitation cultural sector or in personal assistant, and one contribution; rights. If the employee advertising. Article XI.167 §3 day is asked to create a creates a logo as part of his of the Belgian Code on work - e.g. making some - the work has to be quick photographs of the disclosed under the name of empoyment duties, the Economic Law imposes a office for a presentation - the the person who initiated the copyright remains with the looser regime for these license for the works will not work. If these conditions are employee but the employer assignments by declaring be read into the employment met, this person can claim acquiers exploitation rights. inapplicable certain specific contract but must be agreed ownership of the work. Regularly, more detailed obligations that must be upon separately. provisions are part of the respected in the framework of employment contract. regular assignments.

Other rules apply to, among other things, software and databases. The rights in these types of work are presumed to be held by the employer until the contrary is proven.

What is the In Austria, Section 60 of the The general rule, enshrined Copyright expires 70 years The term of protection starts Copyright in a literary, 70 years from the January 1st Term of Copyright Act provides for a in Article XI.166 §1 of the after the author’s death. with the creation of the work dramatic, musical or artistic of the year following the death Protection for a protection period of 70 Belgian Code on Economic Where several joint authors and ends 70 years after the work or in an original of the author (e.g. if the copyrighted years following the death of Law, is that copyright hold copyright in a work, it end of the civil year of the database will last for 70 author dies on July, 21st 1969 work? Does it the author with regard to protection is granted for a expires 70 years after the author's death (article L123- years after the death of the the 70-years term shall be vary for different death of the last surviving 1 of the FIPC). Or, if the logo calculated form January 1st, literature, music and art. In term of 70 years post mortem author. In circumstances types of works? joint author. There is no is a collective work, it will be 1970). the case of a co-authorship, auctoris (ie, during the life of difference in Term of protected from its publication where the work is the protection period ends the author and then for 70 anonymous or \NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Europe AUSTRIA BELGIUM GERMANY FRANCE IRELAND ITALY Part I 70 years after the death of years after his or her death). Protection for different types for 70 years from the 1st pseudonymous, copyright the last surviving co-author. of works. January of the civil year will expire 70 years after the If the speech or Article XI.166 §2 of the Code following the publication of date on which the work is performance has been on Economic Law provides the work (article L123-3 of first lawfully made available recorded on an audiovisual that when a work is the result the FIPC). to the public. If the author carrier or an audio carrier, of collaboration, the copyright becomes known during that the term of copyright remains for the benefit of all 70 year period, copyright protection lasts for 70 years successors in title for 70 expiration will then extend to from publication of the years after the death of the 70 years after the date of the recording. last surviving joint author. author's death.

The term of protection for an audio-visual work expires 70 years after the death of the last survivor of the following persons: the main director, the author of the screenplay, the author of the dialogue and the author of the musical compositions, with or without words, specifically composed for the work.

Article XI.166 §3 of the Code on Economic Law states that, in the case of anonymous or pseudonymous works, the term of copyright is 70 years from the time the work has lawfully been made accessible to the public. However, where the pseudonym adopted by the author leaves no doubt as to his or her identity or if the author discloses his or her identity during the period referred to in the general rule for anonymous or \NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Europe AUSTRIA BELGIUM GERMANY FRANCE IRELAND ITALY Part I pseudonymous works, the term of protection of the work shall be equal to term provided by that general rule. In the case of anonymous or pseudonymous works that have not been lawfully made accessible to the public during the 70-year period following their creation, protection shall expire at the end of that period. Article XI.166 §4 states that when a work is published in volumes, parts, issues or instalments and its 70-year period begins at the time that the work is made accessible to the public, the term of protection shall run separately for each element. Are there We do not see any benefits. • There is no registration Copyright protection is a lot The main benefits are that: As set out above, if Not really. In Italy it is not benefits to The only benefit is that requirement in order to be broader in Germany than registering a logo, in Ireland common to protect the rights using copyright copyright originates from protected. trademark protection and 1. the plaintiff would not the correct process would be vested in a logo by making rights/laws for creation. However, there • No renewal is needed to covers basically all need any registration to file a trade mark registration as a use of copyright legislation, logo could be discussions if the continue to enjoy protection. commercial and many complaint; way of protecting a logo and whereas the trademark law is enforcement private uses of the logo by a 2. no proof of use is production is an original • No proof of use is required. enforcing one's rights over a much more efficient system (instead of third party with very few needed; intellectual creation and if • Copyright includes moral said logo. for the protection of logos trademark law)? exceptions. 3. protection is granted for (and, of course, distinctive the plaintiff has rights (Article XI.165 §2 of the any medium and is not authorization to use the Code on Economic Law): sings in general). Although While it is necessary for the limited to certain types of theoretically logos may well creation. Therefore, if a right of disclosure, paternity enforcement of a Trademark products or services; be copyright protected, and logo is registered as a right, and integrity right. to show that the logo was 4. there is no need to prove there is case law regarding trademark you would • Not limited (in principle) to used "as a trademark" by the a risk of confusion. this possibility (to which we probably base your logo use in relation to goods or infringer, for an enforcement hinted in the above), copyright enforcement on trademark services, use in the course of of copyright a use "as a protection on logos would not laws. This is because you trade, no criterion of trademark" is not necessary. be effective. For instance,

can rely on a registered likelihood of confusion or trademark law in Italy offers a As there is no "fair use" certain date and a precise right. similarity between goods doctrine in German copyright and/or services. The scope of chain of titles, it protects the \NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Europe AUSTRIA BELGIUM GERMANY FRANCE IRELAND ITALY Part I copyright protection is thus law but merely an owner of a registered (generally speaking) broader. exhaustive list of limitations trademark towards most to copyright, uses of slightly similar trademarks (which changed logos or of the logo may be also original artworks in a different context can of their own) and it allows the often be attacked more owner of a renowned easily with copyright than trademarks to extend its trademark law. protection against signs towards which there is no There is also no registration likelihood of confusion. of the logo necessary for Conversely, copyright law copyright so that it can be would essentially protect the enforced in Germany even if logo against identical there is no trademark reproductions and derivative protection in place (e.g. due works, only provided it to a lack of registration or qualified for being a creative use of the sign). artwork. On the other hand, it shall be considered that the The logo does not have to Italian IP Code prevents the be used in Germany by the registration of a trademark owner of the rights to be which infringes third parties' enforceable under copyright copyright. Thus, if a law, which can be a problem trademark includes a logo or with trademark rights. an element which is copyright protected (for example, a Copyright protection is also device of Mickey Mouse not restricted to certain copyrighted by Disney), its goods or services so that validity can be challenged by uses of the logo in the right holder. completely different areas of business can be attacked. Are there No, if it is clear that a logo • The duration of protection of Companies trying to enforce Main disadvantages are that As outlined above, the In addition to what mentioned disadvantages qualifies as a copyright copyright is limited in time, copyright in Germany always the defendant might discuss: appropriate Intellectual immediately above, the rules in using protected work. It is whereas trademark protection face the problem that they Property right for logos on ownership (of copyrighted copyright important to know that can infinitely be extended (if are entitled to enforce the 1. the originality of the logo would be to register said works created in pursuance of rights/laws to copyright can not be renewed in time). rights. It is necessary to 2. the ownership of the logo logo as a trade mark. an employment relationship or protect or prove the complete chain of 3. the date of creation of the contract) are not expressly transferred inter vivos. • Since there is no enforce rights in rights from the author (the logo. stated in the law and have logos (such as Copyright may only be registration requirement, it is natural person) to the entity been determined through preclusion or transferred by inheritance; it inter alia harder to prove trying to enforce the right. These three things can be case-law and scholarly questions of may also be transferred to ownership and the date of Quite often this proves to be difficult to prove. opinions. Thus, there may proper specific successors in creation. difficult as there is either no instances in which the

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Europe AUSTRIA BELGIUM GERMANY FRANCE IRELAND ITALY Part I ownership)? execution of a testamentary • An author will only be written license for one or ownership of said copyright is disposition. However, the certain that his work is more steps or the license is not clear-cut. author may authorize protected if confirmed by a incomplete at one or more others to use the work by judge. steps. Further this proves some or all of the methods • There is no infringement if difficult if the company received the license through of exploitation reserved to the judge decides that the an agency or other third the author under Sections logo lacks originality. party and does not have all 14 to 18 Copyright Act • There is no infringement in license agreements between (authorization to use). He case of independent creation. author and agency. In may also grant to other international cases the persons the exclusive right enforcing company might not so to do (right to use). even know who the author is Therefore, if an in this case, especially if the enforcement is based on work was made in a country copyright, frist of all the the with a work made for hire concept. work must be protected by

copyright, and secondly the German copyright law is owner must have a very author-friendly so that if respective authorization to there are any gaps or use the work. ambiguities in the license agreements this will be interpreted in favor of the author. In enforcement proceedings this might lead to the result that the company trying to enforce a right cannot attack all uses of the logo by a third party if the license agreement with the author is ambiguous as to whether the rights to a certain use were licensed to the company or not. Special None. No Under some very special None Considerations circumstances printing the (c) sign below or on a work can lead to a reversal of the burden of proof regarding the question of who owns the rights to a work. While

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Europe AUSTRIA BELGIUM GERMANY FRANCE IRELAND ITALY Part I normally the entity enforcing the right has to prove that it is entitled to do so under some circumstances this is reversed with a (c) and the defendant has to prove that the person named behind a (c) is NOT entitled to enforce the right. Alexander De Bleeckere & Dr. Eva Vonau, Hogan Guillaume Gomis, Gomis & Tommaso Giovanni Trabucco BINDER GRÖSSWANG Lovells International LLP Lacker Law Firm Kirsty Farrell with Eversheds and Maria Luce Piattelli, Completer Jeroen Muyldermans, Rechtsanwälte GmbH Sutherland Hogan Lovells International ALTIUS LLP Verifier (if Marie McGinley with

needed) Eversheds Sutherland

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Country Europe THE NETHERLANDS POLAND PORTUGAL SPAIN SWITZERLAND RUSSIA UNITED KINGDOM Part II How is Rights are created upon Rights are created upon Rights are created Under Spanish law a Copyright arises Rights are created Copyright in literary, copyright creation, there are no fixation. upon fixation. work is created from the automatically with the upon fixation. dramatic, musical and created in the formalities and no moment it is expressed creation of the work. Registration is not artistic works arises once country possibility of registration in some kind of medium, required; no formalities such a work is fixed. (creation/ tangible or intangible. As (Article 1259 of the Civil Registration is not fixation/ Code of the Russian required. for its protection, registration)? Federation). copyright protects works from the very moment of their creation, without requiring any other formality, such as registration or deposit. What are the "Original in the sense The result of human Originality and In order for a work to be Works protected by • Creativity (Article A logo can be protected as requirements for that they are their creativity that has an minimum level of protected by copyright, it copyright are 1257 of the Civil Code an artistic work, provided it protection author’s own individual character. creativity. must have a minimum perceivable of the Russian is “original.” It will be (originality/ intellectual creation" of originality (in an intellectual creations Federation); protected irrespective of creativity/ (ECLI:EU:C:2009:465) objective sense) as well in the literary or • Originality. artistic quality. The formalities or requirement for originality as creative height. In artistic domain that requirements for is met when the work is of enforcement)? any case, the originality have individual the author's own skill, of a work is something character, labor and judgment. At that has to be examined irrespective of their least until Brexit occurs, case by case. value or purpose. the UK Court will often Copyright notice is assess whether the work not required by Swiss is the expression of the law. author's own intellectual creation. What statutes or Auteurswet (Dutch Act of 4 February 1994 Copyright Law is In the event that a logo Swiss Federal Chapter 70 of the Civil Copyright, Designs and regulations Copyright Act) on copyrights and applicable provided has enough originality Copyright and Code of the Russian Patents Act 1988 would be neighboring rights Logos fulfil the and creative height to be Neighbouring Rights Federation (Copyright applicable to (Ustawa z dnia 4 lutego requirements of protected by copyright, it Act („Bundesgestz Law). copyright 1994 r. o prawie originality and creativity. would be considered an iiber das protection for autorskim i prawach artistic work. The legal Urheberrecht und logos? pokrewnych. provisions applicable to verwandte this type of work are the Schutzrechte“)- same that apply to any type of work, with some particularities: (i) Regarding the limit of quotation and illustration \NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Country Europe THE NETHERLANDS POLAND PORTUGAL SPAIN SWITZERLAND RUSSIA UNITED KINGDOM Part II of teaching (article 32 of the Law on Intellectual Property), the exception allows the inclusion of the complete artistic work, and not just a fragment. (ii) Article 56 IPL provides that the acquirer of the medium of an artistic work does not acquire by this fact any right over the work, with the exception of the right of exhibition, provided that the author has not expressly excluded this right at the time of the transaction. (iii) Artists of artistic works enjoy the so- called droit de suite or resale right, which is currently regulated in a separate Law (Law 3/2008, of 23 December, relating to the resale right for the benefit of the author of an original work of art) and allows the author of an artistic work under certain circumstances to participate in the profits obtained in the successive sales of the work. Identify any None The ruling of the Court of No identified cases. * Supreme Court ruling No identified cases. 1. Contractual relations Most cases concerning the important court Appeal in Warsaw of 23 of 10 July 2012: The (identifying of the copyright in logos relate to or other legal December 2014 (I ACa SC considers that the subject of the license a dispute about ownership, \NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Country Europe THE NETHERLANDS POLAND PORTUGAL SPAIN SWITZERLAND RUSSIA UNITED KINGDOM Part II decisions 703/14): a logo logo of a beer brand agreement). See, for rather than subsistence. (cases where consisting of 5 images of (Cruzcampo) consisting example, Ruling of This is because, due to the logos were or people which are of a drawing of a Higher Arbitrazh Court reasonably low threshold were not deprived of an original character holding a beer № 9457/13 of for originality, copyright will protectable) character and words ("Gambrinus") is an 05.11.2013; generally be found to typed with a standard 2. Non-contractual subsist in the logo. intellectual work font can be a violation of IP right copyrightable work if the protectable by copyright. regarding a logo (Logo whole composition, * Asturias Court of v. Trademark, Logo v. choice of color, graphics Appeal ruling of 10 Logo). See, for and font are taken into February 2006: example, Ruling of consideration. considered that the logo Russian Court for of a telephone directory Intellectual Property lacked sufficient Rights of 18.09.2015 № originality to be S01-326/2015 with protected by copyright. * respect to the case № A40-33294/2014; Madrid Court of Appeal Ruling of Russian Court ruling of 20 January for Intellectual Property 2012: considered that Rights of 30.10.2015 № the logo of a well-known С01-850/2015 with clothing brand respect to the case № (Trangoworld) А46-154/2015. constituted an original work that could be protected by copyright. * Barcelona Court of Appeal ruling of 24 April 2002: it held that the logo of the film production company Metro Goldwin Mayer, consisting of a roaring lion wrapped and surrounded by cinematographic tapes, constituted an original work protectable by copyright. Is copyright No, there is no copyright No, there is no copyright There is no "copyright Yes, a logo can be No; there is no No, there is no No. There is no copyright registration for a registration in the registration in Poland. registration" per se, only registrated at the copyright registration copyright registration in registration in the UK. \NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Country Europe THE NETHERLANDS POLAND PORTUGAL SPAIN SWITZERLAND RUSSIA UNITED KINGDOM Part II logo possible? Netherlands (it is the possibility to proceed Intellectual Property system in Russia. possible to record an i- with a deposit before the Registry if it has enough Switzerland. Artworks may be DEPOT with the Benelux competent National originality and deposited with the Office for Intellectual Authority (IGAC) creativity. Russian Authors' Property (BOIP), but this Society (RAO) serves ONLY as a voluntarily but such source of evidence, and deposition is not akin to does NOT offer any registration. (intellectual) property rights or legal protection) How is The creator is the owner In general, a copyright is In principle ownership is As a general rule, the #NAME? The author of a The general rule of ownership of a of the copyright unless owned by the individual determined by the ownership of an artistic scientific, literary or ownership is that the copyright he/she has assigned author of a work. If a author. There is a work (or of any other artistic work is an author of the work will be determined? Is his/her rights to a third work is created by more concept of an employer type) belongs to the individual by whose the first owner of the there a concept party. There are two than one person, a owning a work under a author (physical person) creative work it has copyright, with exceptions of an employer exceptions to this rule: copyright is owned by been created (Article including works made in work made for hire as long as there is no owning a work articles 7 and 8 of the co-authors jointly. 1257 of the Civil Code the course of employment, concept, however transfer of rights. under a work Dutch Copyright Act. Only a natural person of the Russian Crown copyright, made for hire? According to article 7 the can be an author of a typically a Company Notwithstanding the Federation). Thus, an Parliamentary copyright Must an author employer is the owner of work. cannot be considered as foregoing, there are author can be either a and copyright owned by always be a the copyright. Article 8 Employer an author. There are certain cases in which living or dead international organizations. specifically states that in case a Unless otherwise collective works, in ownership of a work is individual. The author is defined as named living public institution, an provided for in an which the authors’ rights presumed to have been The employer has an the person who creates individual? association, a foundation employment contract, can also be owned by transferred to the exclusive right to a the work. or a company makes a the employer whose natural or legal persons employer: work, unless otherwise work available to the employee has created a that have organised and (i) Works made by envisaged by the labor In the case of a work public as its own without work as part of his/her contract or another made by an employee in coordinated the creation employee authors. indicating any natural duties under the contract between the the course of their person as the author, it employment relationship of a work and under Article 51 IPL employer and the employment, the first is then considered to be acquires, upon whose name the work establishes that in the author (Article 1295 of owner of copyright will be the author of that work acceptance of the work, has been published or absence of a written the Civil Code of the the employer, unless there unless it is proved that, all the economic disclosed. agreement, it shall be Russian Federation) so is an agreement stating under the copyrights within the presumed that the that this concept is otherwise. This applies circumstances, the scope of the purpose of exploitation rights have applicable to Russia. only to employees disclosure to the public the employment contract been assigned employed under a contract of the work was and the unanimous exclusively and to the of service or unlawful. intention of the parties. extent necessary for the apprenticeship and does not include independent exercise of the contractors. employer's habitual activity at the time of Where a work is delivery of the work commissioned, the person

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Country Europe THE NETHERLANDS POLAND PORTUGAL SPAIN SWITZERLAND RUSSIA UNITED KINGDOM Part II made by virtue of that who makes the work (the employment contractor) will usually be relationship. the owner of the copyright, (ii) Collective works. even if the commissioner They are those that are has paid for it to be done, unless agreed to the created under the contrary. In such cases, initiative and the commissioner is likely organization of a person to have an implied license (usually a company) that to use the work. There are publishes and discloses even cases where the it under its name. Article commissioner is found to 8 IPL establishes that be the equitable owner of unless otherwise the copyright in a agreed, the rights to the commissioned logo (e.g. collective work shall the Doc Marten's logo).

belong to the person A work can still be who edits and discloses protected even if the it under his or her name. identity of the author is (iii) The commissioning unknown, however this of work. The Intellectual has implications for the Property Law does not duration of copyright. expressly regulate this figure. Article 59 only establishes that the commissioning of a work is not the object of the publishing contract. However, doctrine and case law understand that when a work is created under the instructions and supervision of a person, the rights belong to the latter, especially once the price of the commission has been paid. What is the 70 years P.M.A. (section 70 years from author’s In the absence of a The term of protection of - Copyright protects 70 years from January For literary, dramatic, \NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Country Europe THE NETHERLANDS POLAND PORTUGAL SPAIN SWITZERLAND RUSSIA UNITED KINGDOM Part II Term of 37 DCA). death. There are a few special provision, artistic works (and for exclusive rights of the 1 of the year following musical or artistic works Protection for a exceptions to the rule copyright expires 70 any other kind of work) copyright owner and the year of the author's (including logos), copyright copyrighted Author not indicated: that the 70-year period is years after the death of is 70 years after the protects the copyright death (Article 1281 of expires 70 years after the work? Does it Copyright expires 70 counted from the the intellectual creator, death of the author. owner from any the Civil Code of the end of the calendar year vary for different years after the work has author's death: even if the work has only However, the unauthorized used of Russian Federation). when the author dies. types of works? been lawfully made been disclosed or computation of this term the work including the available to the public for (a) works of joint the first time. (Section 38 authorship – from the published posthumously. changes in the case of adoption of the DCA). death of the last collaborative works creation in terms of surviving co-author; (computed since the its duplication, (b) a work whose author death of the last of the publication, change is unknown - from the contributors) and and imitation. - date of the first collective works (the 70 There are variations distribution, unless the years are computed by law as to the pseudonym adopted by from the publication of scope of protection the author leaves no the work). and duration of rights doubt as to his identity, In the case of works by to compuer software or unless the author has disclosed his identity; authors who died before and other types of (c) if the economic 1987, the term of creations such a copyrights are vested in protection is 80 years literature, paintings a person other than the p.m.a., since the etc. author (e.g. in an previous legislation employer)- from the date applies to them. of distribution of the work, or if the work has not been distributed - from the date of its creation/ Are there The copyright There are following No, there are no major There are no costs 1. No formalities. In a copyright case you will benefits to infringement criterion is benefits: benefits because and no formalities for Copyright arises not need to engage with using copyright not likelihood of (a) Long term of Trademark Law allows the protection of a automatically by arguments about whether rights/laws for confusion and there are protection; unlimited 10 year copyright as the creation of an artwork there is use of a sign in the logo no rules in respect of (b) No formalities to renewals contrary to the registration is not and is not subject to course of trade, use in enforcement similarity of obtain and protect mandatory state relation to goods/services copyrights (which limited possible. There are (instead of goods/service. When copyrights (e.g. no registration; (and which trademark law)? logo is used for registration for validity). Moreover, a no use requirements 2. The safest approach goods/services), or good/services that are copyrights is required, trademark registration for copyrights. is to have both whether such use affects dissimilar to those of no fees for protection to usually confers a Copyrights and copyright and the functions of the mark. competitor and the logo be paid); stronger enforcement. trademark rights have trademark protection for In addition, if you have not is NOT for a famous (c) Broad scope of different functions so logos where possible. used the logo, copyright in brand (section 2.20, 1c protection that the logo the logo will not be subject

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Country Europe THE NETHERLANDS POLAND PORTUGAL SPAIN SWITZERLAND RUSSIA UNITED KINGDOM Part II BVIE), copyright could enforcement could be to a counterclaim for give logo-owner wider based on both revocation based on lack protection. Copyrights depending whether of use, in contrast to trade can be invoked even the adoption of a marks. when the trademark right creation (copyright) has lapsed because of or the risk of non-use or the trademark registration confusion (trademark has not been renewed rights) are at issue. (within the 70 year period of course). Are there Duration of protection There are following Copyright law can be Copyright protection is Until the copyrights 1. The legislation The disadvantages are disadvantages (70 years vs. Forever if disadvantages: disadvantagious always more diffuse and are enforced before stipulates 70-year term likely to be exposure to a in using the trademark keeps (a) A logo should be because of the issues of more susceptible to the Courts there is no of copyright protection dispute about subsistence copyright being renewed); individual and creative in non registered rights and interpretation than that examination after author's death or ownership, if you cannot rights/laws to evidence of proper (first) order to have protection having to comply with offered by trademark procedure so that while trademark prove the circumstances of protect or ownership (chain of as a copyrightable work, protection is not limited who created the work and requirements of law. The concept of there remains an enforce rights in title);opposite party which may be difficult to (subject to renewal how title has passed to originality and creativity. originality is not defined uncertainty whether a logos (such as could argue lack of prove; every 10 year); you. The onus is also on preclusion or protection because of (b) Transfer of in the Law and, creation can be the copyright owner to questions of lack of originality. copyrights is limited to therefore, its valuation is qualified as 2. There is the risk of prove that the infringing proper economic copyrights always at the discretion copyrightable. The unfair competition if a logo was in fact copied ownership)? only, moral rights cannot of the judge. In the copyright ownership logo is not registered as from your logo, which can be transferred or waived; specific case of logos, has to be proven as a trademark by the logo be challenging in the face a transfer should be there is no doubt that there is no copyright owner. of compelling evidence made in writing and this would be their weak registration system in about independent should refer to precisely point. Being, in general, Switzerland. The 3. The difficulty with creation. If the logo were described fields of use; collection of evidence created independently, this very simple creations, validity period of (c) The ownership of of authorship while would not be a defense to copyrights may be their originality and/or copyrights is 70 years there is no state trade mark infringement. It difficult to establish or creative height can be following the death of registration of copyright is also important that the enforce (e.g. if the easily challenged. the creator resp. the in Russia. defenses to copyright transfer is not made in a death of the last infringement vary from the proper way or the list of surviving creator in defenses to trade mark fields of use contained in case of a joint infringement, which will be the transfer agreement creation (in case of relevant in electing which does not cover the full computer programs right to pursue in a given scope of possible use). 50 years following the case. There is nothing to prevent you running a death of the creator combined copyright and resp. the death of the trade mark infringement last surviving creator claim. in case of a joint \NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Country Europe THE NETHERLANDS POLAND PORTUGAL SPAIN SWITZERLAND RUSSIA UNITED KINGDOM Part II creation) while trademark protection is in principle indefinite as long as the trademark registration is renewed. Special None N/A The benefits of copyright None. None Considerations protection are obvious, to name a few: (i) no formality is required; the work is protected from the moment it is created, unlike, for example, trademarks, whose rights arise from the registration itself; (ii) the term of protection is maintained for a very long period: 70 years after the death of the author, without the need to carry out renewals or other formalities; (iii) protection is maintained without the need to "use" or "exploit" the work, which is also a difference from trademark law, where the trademark runs the risk of being cancelled if it is not used in the market. Jacqueline Schaap, Patricia Mariscal Sandra Przewloka, E. Nick Aries, Bird & Bird LLP Ewa Kacperek, Hogan Ana Fidalgo w/ Clarke, Natalia Gulyaeva, Completer Visser Schaap & Garrido-Falla (Elzaburu BLUM & Co. AG, Lovells International LLP Modet & Co. Hogan Lovells Kreijger SLP) Switzerland International LLP Verifier (if

needed) \NORTHVA - 701790/000420 - 1127614 v1 September 2019

Region Country Country Country Country Country Country Latin America ARGENTINA BOLIVIA BRAZIL CHILE COLUMBIA COSTA RICA Part I How is copyright Copyright exists from In Brazil rights originate from Copyright protection is Copyright protection is Rights are created upon created in the country creation without further the creation. automatic by the mere fact automatic upon creation of creation. (creation/ fixation/ formalities. Registration is of the creation of a work. the work. registration)? not required, but can be Neither registration nor advantageous for evidentiary fixation in a tangible reasons. medium is required. What are the The work must be a In Brazil copyright rights Expression and a The works are protected by Minimum level of requirements for creation of its author and subsist in original minimum level of the mere fact of creation, no creativity and comply with protection (originality/ thus, it must be original. intellectual works fixed on a creativity (ideas are not other requirements need to the definition of the Law creativity/ formalities or tangible medium. The protected). be met. (ideas, procedures, requirements for underlying principle is methods and mathematic enforcement)? originality rather than concepts are not protected creativity. by copyright) What statutes or Law 11.723 and In case of logos, the Intellectual Property Act Nº The logos are protected, Copyright Law and its regulations would be International Conventions Brazilian copyright law - Law 17,336 (“Act”). either as artistic works, or Regulations. Law No. applicable to copyright approved by Argentina: 96010/98. works of art applied to 6683 and Regulation No. protection for logos? Buenos Aires, Washington, industry, under Law 23 of 24611-J Geneva (Universal 1982 and Decision 351 of Convention) and Berne, the Andean Community. among others. Identify any important There are no court decisions The protection of logos as We are not aware of any A Colombian Brewery, E.g. Logo v. Logos court or other legal in that sense. copyright is normally decision regarding logo's Bavaria S.A., was unable to decisions (cases where confirmed by the Courts copyrightability. obtain registration as a logos were or were not provided it is original. For Trademark of the logo for its protectable) instance a decision rendered beverage “COLA & POLA”. by the Superior Court of Therefore, they attempted to Justice (STJ) on the special register the logo as an appeal 57449 in 1997 states artistic work, before the that a logo is a sign created Colombian Copyright Office. to be advertise a product, However, registration was resulting from an effort of also refused, in application imagination; thus being of the “separability” principle, characterized as an under which, the artistic intellectual work. (published merit of the work was not in the Official Journal of Sept separable from its industrial 8/97) application. However, a new Copyright Statute, issued in 1993 (Decision 351 of the Andean Community), defined the concept of Work of Art with Industrial

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Latin America ARGENTINA BOLIVIA BRAZIL CHILE COLUMBIA COSTA RICA Part I Application, superseding the separability principle, and replacing it for the principle of “Unity of Art”, under which one creation may be concurrently protected under copyright and industrial property. Colombian Council of State, Section 1 - Decision Dated February 3, 1995, File . No 2925, Plaintiff: Bavaria S.A., challenging decision from the Colombian Copyright Office. Is copyright registration Yes, if it is original. In Brazil enforcement of Yes, as long as the logo Yes, either as artistic Yes; there is copyright for a logo possible? rights is not dependent upon has a minimum level of works, or works of art registration in Costa registration, although creativity (the Head of the applied to industry Rica. registration before the local Registry of Intellectual authorities is recommended Property would decide on just to facilitate evidence of a case-by-case basis). authorship and/or seniority in case of disputes. How is ownership of a The owner is the author. As a rule the author is the Ownership: According to The author will always be a The ownership will depend copyright determined? He could have been hired to original owner of the the burden of proof physical person, but both a of the relationship between Is there a concept of an develop a logo, in that case copyrights. Property rights general rule, the copyright natural person and a the author and the other employer owning a the economic rights belong can be freely assigned. holder has to prove that is corporation may hold persons involved in the work under a work to employer or to whom Moral rights though cannot the legitimate holder of a economic rights, either as a artwork. In Costa Rica, by made for hire concept? asked for the work. Moral be waived nor assigned. particular copyrightable result of the assignment of Law, the copyright belongs Must an author always rights in Argentina cannot Brazilian law does not work. However, the rights or as a result of a legal to the author (person who be a specifically named be assigned by authors. provide for work made for copyright holder has a assignment similar to the make the artwork). living individual? hire; any assignments must legal presumption of "work made for hire" However, our regulation be clearly indicated in any ownership if: (i) register concept. Moral rights are includes the concept work agreement/ the work before the not assignable and they for hire and corporate contract. The author must Registry of Intellectual remain on the individual. authorship. In the always be an individual. Property; or (ii) uses "corporate authorship" copyright notices such as (work performed by [© + year of publication + employee under the owner]. direction of the employer) the copyright belongs to Work for Hire: Work for the employer, including the hire provisions are limited moral rights; this is in the Act and are mainly regulated in our Law. In \NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Latin America ARGENTINA BOLIVIA BRAZIL CHILE COLUMBIA COSTA RICA Part I referred to software and, the case of "work for hire" even more restricted, in the copyright belongs to respect of journalists, the person who order the photographers and work, but the moral rights authors who participate in belong to the author. In the cinematographic Costa Rica, the author is a industry. The general rule person named living is that (i) copyright individual, and the assignment has to be copyright (economic made by means of public rights) could be assigned instrument or private to a company. There are instrument legalized by a exceptions to this rule, the notary public, and (ii) that case of corporate the respective agreement authorship and software. must registered in the Registry of Intellectual Property within 60 days of its execution.

Author: The author has to be a named living individual (the Act grants to him/her moral inalienable rights); despite the fact that the copyright holder can be a legal entity. What is the Term of The right lasts for the In Brazil copyright derives Copyright protection lasts When the author and owner The term of protection is Protection for a lifetime of the author, and from a creation of the spirit for the life of the author is an individual, the term of during the life of the copyrighted work? an additional 70 years and the author is necessarily plus an additional 70 years protection is the life of the author and seventy Does it vary for different thereon for his heirs, an individual. Consequently term. For an anonymous author and eighty (80) years after his death. types of works? counted as of the 1st of the protection is extended work, a pseudonymous years more after his death. There are not variations January following the for 70 years after the death work, works of joint If the holder is a legal entity, depending of the type of author's death. of the author. The authorship and in the case the term of protection is fifty work. Photographic works are exceptions to this rule are: of software, the copyright (50) years from the first protected for 20 years. audiovisual and endures for a term of 70 exploitation or Phonograms have a photographical works, 70 years from the year of its commercialization. This is protection of 70 years after years from the first first publication. the general rule for most the 1st of January of the publication; software, 50 works. year following its years from the first publication, and of 50 publication. years for cinematographic works. \NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Latin America ARGENTINA BOLIVIA BRAZIL CHILE COLUMBIA COSTA RICA Part I Are there benefits to There is only one benefit In case of unregistered Main benefits: Only with regards to the term No. The only benefit could using copyright which is that protection is logos copyright law may be of protection, which is longer be economic. The rights/laws for logo immediate against its helpful, inasmuch as Brazil • Public Action: Anybody regarding Copyrights. copyright registration enforcement (instead of reproduction and does not is a first-to-file Country. It can bring a lawsuit in case fees are cheaper than the trademark law)? have to go through the can also be useful in case of of infringement (not only trademark registration registration process of a similar logos used to identify the copyright holder). fees. trademark. different goods/ services. • Imprisonment: Up to 5 years depending on the felony.

• Statutory damages regime alternative: Once the copyright infringement is declared by a Court, the copyright holder may request the replacement of the claimed moral and material damages (i.e. the actual damages regime) for a compensatory sum determined by the Court according to the seriousness of the infringement. Are there There are disadvantages. Trademark rights can be Possible disadvantages: The scarcity of any judicial Yes, the difficulty in disadvantages in using The duration of a trademark more comprehensive in case decisions where a logo has establishing proper copyright rights/laws to is no limited, as long as the of similar logos, as doctrines • Questions of proper been protected under ownership could be a protect or enforce rights registration is renewed. of likelihood of confusion ownership if registration copyrights law may be a disadvantage. We always in logos (such as Many logos shall not pass, and association can be more has not been disadvantage. recommend to perform preclusion or questions or will be in the risk of being effectively used. obtained/copyright notices contracts when a company of proper ownership)? challenged, the originality have not been used. wants to do a work for hire test or even if it is artistic. • Limited experience of (especially with publicity The courts that are courts (cases are even agencies). competent to deal with fewer than trademarks copyrighted work, are not ones). used to deal with these matters, such as in trademark issues, in which federal courts are competent. There is no impediment however to have both protections. \NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Latin America ARGENTINA BOLIVIA BRAZIL CHILE COLUMBIA COSTA RICA Part I

Special Considerations In Brazil copyright derives • There is neither general Software is protected in from authorship, this being nor specific punitive Costa Rica as Copyright. the underlying principle of damages system for The owner of the rights, by copyright protection in this copyright infringements in Law, will be the Company country. Definitely, Brazilian Chile. that develop the program. law does not prohibit • The “private copy” figure cumulative protection is not regulated in the Act (trademark rights/ (e.g. downloading a movie

copyright), each one having solely for private use will its own function. be considered an infringement). • Fair use institution is not contemplated as an exception to the exercise of copyright exclusive rights. Completer Jorge Otamendi – G. Breuer Alvaro Loureiro Oliveira, Rodrigo Lavados - Wilson Rafael Rios Ruiz Jessica Salas Venegas – Buenos Aires, Argentina Jose Antonio Faria Correa - Sargent & Krahn Dannemann Siemsen Ipanema Moreira, Brazil.

Maximilien Maximilien Maximilien MARIA FERNANDA María Lupita Quintero Verifier (if needed) Yaouanc - Yaouanc - Yaouanc - CASTELLANOS - Nassar PMI PMI PMI PARTNER

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Latin America DOMINICAN REPUBLIC ECUADOR MEXICO PANAMA PARAGUAY PERU Part II How is copyright Copyright arises from Copyright is created at Rights are created upon Rights are hold upon Rights are created upon created in the country creation. fixation of the work in a creation. creation. creation. (creation/ fixation/ tangible medium regardless registration)? of merit, destination or mode of expression. However, a copyright registration is required to initiate an infringement action and claim damages. What are the Originality. More than creativity or Certain level of creativity. Originality. - The work must be requirements for originality, to protect any original. protection (originality/ copyright you have to fulfill - The work must be one of creativity/ formalities or the formalities that the the human mind. requirements for Mexican Copyright Law - The work must be enforcement)? demands, namely, susceptible of being government fees, filing the disclosed or reproduced copyright form application by any means. and copies of the material that pretends to be protected. What statutes or Law 65-00 of Copyright The protection for a logo or Law No. 64 of October Copyright Law No. Legislative Decree N° regulations would be and article 74 (g) of Law design in Mexico is the 10, 2012 which regulates 1.328/1997 - Article 4 (8). 822, Copyright Law applicable to copyright 20-00. registration as a pictorial Copyright in Panama Among other, the following (art.5, inc.f dibujos). protection for logos? work, drawing or design. works are specifically included: plastic arts works, including drawings, paintings, sculptures, engravings and lithographic works. Identify any important No relevant case law as None N/A No, there is not any There are no important court or other legal regards logos protected as important court or other legal decisions where logos decisions (cases where copyright. decision regarding logos were or were not logos were or were not protection by Copyright. protected. protectable) Is copyright registration Yes, any artistic work is Yes; there is copyright Yes, it is possible. Yes; there are copyright Yes, there is copyright for a logo possible? susceptible of copyright registration for a logo in registration for logos in registration for a logo in registration. Mexico as a drawing or Paraguay. Peru. design and this figure can be specified as a graphic design or a logo. How is ownership of a The copyright would be The author of a work is The original owner of both A living individual whose Ownership of a copyright copyright determined? owned by the author, who always the original owner of moral and economic rights name, signature or sign is determined by creation.

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Latin America DOMINICAN REPUBLIC ECUADOR MEXICO PANAMA PARAGUAY PERU Part II Is there a concept of an would always have the right both moral and economic to the work is always the identifying such person employer owning a to be mentioned in any act rights to the work. The author, a named appears in a work is Yes, there is a concept of work under a work related to the use of the author may freely assign the individual. There is a presumed to be the author of an employer owning a made for hire concept? artistic work. The Law has economic rights in whole or concept of work made for such work, unless there is work under a work made Must an author always a provision for work made part, but may not assign or hire in Panama, but the proof to the contrary. for hire concept. be a specifically named for hire, the exploitation waive moral rights same has no impact on According to Article 14, living individual? rights would belong to the (attribution, right to have the original ownership of regarding the works created Yes, an author must employer in that case. work published anonymously the rights to the in compliance of a work always be a specifically or under a pseudonym, and commissioned work (both agreement or in fulfillment of named living individual. the right to the integrity of economic and moral a contract, the rights that the work. There is a concept rights). Further, the moral may be transferred shall be of work made for hire in rights to the work for hire subject to an agreement Mexico. However, the remain with the author of among the parties. Unless author of the work must the work and cannot be there exists an express always be a named assigned or waived. contractual provision to the individual and the author of a contrary, it shall be assumed work for hire retains the that the patrimonial rights moral rights to the work. over a work have been granted to the hirer, depending upon the case, in a measure necessary for the habitual acts [to be performed] at the time of creation; this implies, likewise, that the hirer or constituent has been granted authorization to make public the work and exercise the [respective] moral rights in the measure that is necessary for the exploitation of said work. The author must always be a living individual. What is the Term of 70 years after the death of Life of the author plus 100 The term of protection is of Patrimonial right protection The term of protection of Protection for a the author. Yes, years. the life of author and 70 is given during author's life, economic rights for a copyrighted work? photography and audiovisual years more after their and upon his death, these copyrighted work is the Does it vary for different works 70 after its first death. rights are transferred to lifetime of the author and types of works? publication. his successors, for 70 years following the seventy years. Some types author’s death. of work such as collective works, computer programs, The term of protection of and audiovisual and radio economic rights for \NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Latin America DOMINICAN REPUBLIC ECUADOR MEXICO PANAMA PARAGUAY PERU Part II phonic works, the anonymous or patrimonial right shall pseudonymous works is extinguish itself sixty years 70 years counted from the after its first publication or year of disclosure of the after its conclusion. work, unless the author reveal its identity before such term expires, in which case the term of protection is the lifetime of the author and 70 years following the author’s death.

The term of protection of economic rights for collective works, software and audiovisual works lapses after 70 years of its first publication or, in the absence of publication, following completion.

The above-mentioned terms of protection are counted from January 1 of the year following that of the author’s death, or where appropriate that of the disclosure, the publication or the completion| of the work. Are there benefits to The copyright can be used Yes, since the Mexican There are no substantial No benefit to using The benefits to using using copyright for any copy of the logo Copyright Law protects benefits to using copyrights law for logo trademark law instead rights/laws for logo independently of the type of copyrights worldwide and copyrights for logo enforcement instead of copyright law for logo enforcement (instead of goods or service it is used the scope of protection is the enforcement. trademark law. enforcement are that trademark law)? for. life of the author plus 100 trademark law provides years and the Trademark indefinite term of Law only recognizes the protection if renewed, protection in Mexico for 10 while copyright law years from the filing date provides protection only (however such protection for the term stated above. can be renewed for equal periods). \NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Latin America DOMINICAN REPUBLIC ECUADOR MEXICO PANAMA PARAGUAY PERU Part II Are there The owner of the copyright No, there are not. In our opinion, in Panama If the copyright is registered No. disadvantages in using could not enforce against trademark laws are in our country and valid copyright rights/laws to third parties using a similar stronger than copyright there are not disadvantages. protect or enforce logo that can caused laws regarding logos. rights in logos (such as likelihood of confusion, but preclusion or questions only against exact copies. of proper ownership)? Special Considerations In Dominican Republic Although there are logos No. copyrights do not need to be registered as Copyright, this registered. form of protection is not very common, usually the logos protection are done by trademark law. Completer Pamela Hernandez Diego Enrico González Fernando González-Ruiz - Hugo T. Berkemeyer Claudia Valdivia - Barreda Rossi Icaza Gonzalez Ruiz Moller Aleman Fernando Barreda - Verifier (if needed) Barreda Moller

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Country Country Middle East & Africa EGYPT ISRAEL KENYA MOROCCO NIGERIA QATAR QATAR (Part 2) QATAR (Part 3) Part I How is Rights are created Copyright is granted Rights are created Rights are created Rights are created Rights are created Through By registration copyright upon registration. automatically upon upon fixation in a upon creation of the upon fixation of an upon creation and registration. Qatar created in the creation of the tangible medium artwork. original work. protected upon is member of Berne country work. (e.g. stone, wood, publication. Convention, (creation/ canvas, literary however it is also fixation/ works, CDs etc.) recommended to registration)? submit the works to the Copyright Protection Office in Qatar. What are the Creativity, originality, To be afforded Requirements for Originality is A piece of literary, Protection under the Protection is Minimum level of requirements formalities and copyright protection, Copyright in Kenya: required. musical or artistic Copyright Law is conferred to authors creativity. for protection requirements. a work needs to be work shall be eligible conferred on authors of original works, (originality/ an eligible subject 1. Originality of for copyright if: of original work, irrespective of the creativity/ matter (e.g. authorship; irrespective of the value, quality, formalities or 2. Work must be - Sufficient effort value, quality purpose or mode of expression vs. requirements reduced to a has been expended purpose or mode of expression of these abstract ideas). It for tangible format; in the making of the expression of the works. (Minimum enforcement)? also needs to be 3. Two copies of the work to give it an work (Article 2 of the level of creativity.) original and reflect work must be original character, Copyright Law. a minimal level of presented with the creativity. application for - The work has been For protection to registration; fixed in a definite apply, the copyright 4. Application must medium of work must be be duly expression, from published for the first commissioned by a which it can be time in Qatar as per Commissioner for perceived, Article 5(2) of the Oaths/Notary. reproduced or Copyright Law No. 7 otherwise of 2002 (“Copyright communicated. Law”) or must be published for the first In addition, for a time in another piece of artistic, it country and then should not be created published in Qatar for use as a model or within 30 days of their pattern to be first publication multiplied by any (Article 5(3) of the industrial process. Copyright Law). However, if the author of the work is a Qatari citizen, then

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Country Country Middle East & Africa EGYPT ISRAEL KENYA MOROCCO NIGERIA QATAR QATAR (Part 2) QATAR (Part 3) Part I protection attaches when the copyright work is first published within or outside Qatar (Article 5(2) of the Copyright Law). What statutes or Logos are not The Copyright Act of The Copyright Act of Article 3 of the law 2- Copyright Act C28, • Copyright Law No. 7 LAW No. 7 OF 2002 Law No. 7 of 2002 regulations 2001 (Cap 130, Rev LFN 2004 of 2002. ON THE afforded protection 2007 00 and 34-05 does on the Protection of would be 2009) • Berne Convention PROTECTION OF under copyright law. not cite the term Copyright and applicable to Act can be Can be accessed at for the Protection of COPYRIGHT AND "Logos" among the Related Rights. copyright downloaded from artworks protected http://www.nigeria- Literary and Artistic NEIGHBORING protection for http://www.copyright law.org/CopyrightAct. Works. Can be accessed at: RIGHTS - Article 2 by the law. Logos logos? .go.ke/downloads/ca htm http://www.wipo.int/ can be protected tegory/4-copyright- wipolex/en/details.js Can be accessed at: act.html under the law p?id=3567 http://www.wipo.int/wi governing polex/en/details.jsp?i Trademarks and d=3567 Industrial Designs / models (Industrial Property Law No. 17-97) Identify any N/A In Shivook Not reported. There is no such No cases reported. • Court of Cassation No cases reported. Not available important court Albomim v. Dfus case under the Case No. 204/2013. or other legal Oman (O.M. Moroccan copyright • Court of Cassation decisions 4564/94, of law. Case No. 130/2008. (cases where December 25, • Court of Cassation logos were or Case No. 93/2008. 1994), the District were not • Court of Cassation protectable) Court of Haifa Case No. 103/2006. decided that stylized • Court of Cassation logos can be the Case No. 86/2006. object of copyright protection.

Similarly, in Merkel Stav v. Electro Ashad (C.F. 1913/01, of May 24, 2005), the District Court in Tel-Aviv

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Country Country Middle East & Africa EGYPT ISRAEL KENYA MOROCCO NIGERIA QATAR QATAR (Part 2) QATAR (Part 3) Part I found that copying a registered stylized trademark along with other visual elements, which appeared on a competitor's packaging, constituted copyright infringement.

On the other hand, in Joop! et al. v. Kal perfume et al. (C.F. 1171/97, of June 18, 2006), involved a claim brought by a manufacturer of famous perfumes against an Israeli company engaged in parallel importation of perfumes. The District Court of Tel- Aviv ruled that trademarks are not normally intended to be works of art, but they rather fulfill a functional purpose of indicating a source. Therefore, legitimate use of the trademark by a third party cannot be enjoined on the \NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Country Country Middle East & Africa EGYPT ISRAEL KENYA MOROCCO NIGERIA QATAR QATAR (Part 2) QATAR (Part 3) Part I grounds of copyright infringement.

However, the findings in the matter of Joop! that trademarks do not normally constitute copyright eligible works, was criticized in later legal literature. Is copyright No, logos are No. There is no Yes No, there are no A logo may be Yes, the Copyright Yes. However, it is Yes registration for protected under copyright registry in proceedings defined as a symbol Law protects works of advisable for logos a logo possible? trademark law. Israel. applicable in or small design drawing and to be protected as Morocco for adopted by an paintings with lines, trademarks. registration of organization to aid colors, architecture, the identification of its sculpture, decorated copyright. organization, and the arts, engravings, goods or services sketches, designs affiliated with same. and three- dimensional Due to the fact that a geographic or logo is usually used topographic works as a pattern which is (Article 2(9) of the multiplied and Copyright Law). duplicated by industrial purposes, it would usually not qualify for copyright protection despite being an artistic work.

Where however, at the time of creation of the logo, it was not intended for use as a model or pattern to be multiplied by any industrial purpose,

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Country Country Middle East & Africa EGYPT ISRAEL KENYA MOROCCO NIGERIA QATAR QATAR (Part 2) QATAR (Part 3) Part I then the image would qualify as an artistic work and protected by copyright upon fixation. How is The author should The author of a work The author of a work Ownership in Copyright initially An author of a A Declaration that the The author of the ownership of a and the owner of the vests in the author copyright work is the applicant is the be a named living is the first owner of copyright can be work will be the copyright copyright can be of a piece of work, owner. The author is author of the work individual. the copyright. proved by any owner of copyright determined? Is separate people (or unless otherwise defined in the should be submitted Accordingly, in a means. The artwork unless otherwise there a concept an entity) where the stipulated in writing Copyright Law as any with register once work made for hire, normally belongs to specified / of an employer author has been under contract. natural person who they file the copyright the copyright vests its creator who is transferred through owning a work specifically conceived and application contract. under a work in the author commissioned to always an individual, The other originated the work. made for hire (subject to very create the work or except in the case exceptions are: A Declaration that concept? Must specific exceptions), he creates it during where artwork was Where there are the applicant is the an author unless the parties the normal course of made by an • Where a literary, several authors to a author of the work always be a agreed otherwise, his employment for employee in the artistic or musical copyright work, all co- should be submitted specifically expressly or the creation of context of his duty work is made by the authors shall be the with register once named living implicitly. works. within a corporation. author in the course owners of the they file the individual? of his employment financial rights as to copyright If a work is The author must be by the proprietor of a that work. A sole co- application. a named natural newspaper, author must not published but the person(s). magazine or similar exercise any of his identity of the author periodical for the rights as to the is unknown, the term purpose of copyright work unless of copyright publication, the said all other authors protection is 70 proprietor shall be the expressly agree in years from the date first owner of writing. If the work of of publication. copyright in the work the co-authors is in so far as the distinguishable, each copyright relates to co-author can exploit the publication, his/her right as to except there is a his/her part contract to the separately, unless contrary. otherwise agreed by writing among all co- • Where a piece of authors. work is made by or Consequently, there under the direction does exist the or control of the concept of the

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Country Country Middle East & Africa EGYPT ISRAEL KENYA MOROCCO NIGERIA QATAR QATAR (Part 2) QATAR (Part 3) Part I Government, a State employer owning a authority or a work made under prescribed hire, if expressly International body, stated in the the copyright in same employment contract shall vest initially in between the the Government on employer and behalf of the Federal employee (Article 33 Republic of Nigeria, of the Copyright in the State authority Law). on behalf of the State, or in the An author does not international body, as need be a specifically the case maybe and living named not in the author. individual. If work of a deceased author is A person need not be first published by his alive to be beneficiaries, then recognized as the the rights of the work author of a piece of shall be protected for work. 50 years from the date of the works first publication (Article 31 of the Copyright Law). What is the Term The rights arising Copyright is The terms varies as Moral rights are not The term of As provided for under The economic rights The economic rights of Protection for follows: protection for Article 15 of the shall be protected from copyright protected during the limited in time. They shall be protected a copyrighted 1. Literary, musical copyrighted work are Copyright Law, the during the life of the generally endure for life of the author are transmissible during the life of the work? Does it or artistic works as follows: term of protection for Author and for fifty the lifetime of the plus 70 years. if after death to the Author and for fifty vary for different (other than the financial rights of calendar years after author and for a made by several heirs. Patrimonial calendar years after types of works? photographs) – • Literary, musical a copyrighted work is his death. Protection further 50 years authors, the term is rights are in general his death. Protection Lifetime of author + or artistic work: for the period of the for original, artistic or for original, artistic after his death. 70 years after the 50 years after limited to the whole seventy (70) years authors’ life and for literary work shall be or literary work shall death of the last authors death; life of the author in after the end of the 50 years after his/her for the following be for the following surviving one. For 2. Audio-visual addtion to 70 years year in which the death. As opposed durations: durations: anonymous and works & after his death. author dies. Article 17 of the pseudonymous photographs – 50 Copyright Law which - In the case of the - in the case of the works, the duration years from the date • Cinematograph states that moral work of joint work of joint of copyright is 70 work was made or films and rights which are authorship, the authorship, the rights years from first first publication photograph: fifty perpetual and rights shall be shall be protected for publication. whichever date is (50) years after the transferable by protected for fifty fifty calendar years

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Country Country Middle East & Africa EGYPT ISRAEL KENYA MOROCCO NIGERIA QATAR QATAR (Part 2) QATAR (Part 3) Part I earlier; end of the year in inheritance after the calendar years from from the date of the 3. Sound which the work was authors’ death. the date of the death death of the last recordings – 50 first published. of the last surviving surviving co-author. years after the end The term of co-author. of the year in which • Sound recordings: protection for a - In the case of - in the case of audio the recording was fifty (50) years after copyrighted work audio-visual or visual or collective made; and the end of the year in does vary according collective work, the work, the rights shall 4. Broadcasts – 50 which the recording to the type of work rights shall be be protected for fifty years after the end was first published. (Article 15 of the protected for fifty years as from the of the year in which Copyright Law). years as from the date on which the the broadcast took • Broadcasts: fifty date on which the work was first place. (50) years after the work was first published. For works end of the year in published. For works that are not which the broadcast that are not published, the term of first took place. published, the term protection shall run of protection shall from the first day of run from the first day the calendar year of the calendar year after the completion after the completion date of the work. date of the work. - In the case of a - in the case of a work published work published under under a a pseudonym or pseudonym or published published anonymously, the anonymously, the rights shall be rights shall be protected for fifty protected for fifty calendar years from calendar years from the first day of the the first day of the calendar year calendar year following the date on following the date on which the work was which the work was first published. first published. Nevertheless, where the pseudonym used by the author leaves Nevertheless, where no doubt as to the the pseudonym author’s identity, the used by the author term of protection leaves no doubt as shall be calculated as to the author’s from the first calendar identity, the term of year following the \NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Country Country Middle East & Africa EGYPT ISRAEL KENYA MOROCCO NIGERIA QATAR QATAR (Part 2) QATAR (Part 3) Part I protection shall be author’s death. This calculated as from provision applies the first calendar where the author year following the reveals his identity author’s death. This before the expiration provision applies of the protection where the author period. reveals his identity before the expiration of the protection period. Are there N/A Yes. Copyright can, Cost savings as There are no Copyright laws do Under Article 48 of benefits to in certain cases, copyright is cheaper provisions for not envisage the the Copyright Law, using copyright provide an additional to acquire than protecting a logo protection of logos. an infringer of a rights/laws for layer of protection trademark. under copyright law. copyrighted work logo against Therefore use of An artistic work shall shall be subject to enforcement not be eligible for imprisonment for a infringements, trademark law is the (instead of copyright, if at the period no less than trademark law)? especially when the most efficient time when the work is six months and no logo in question is manner. made, it is intended more than 12 months not registered as a by the author to be and/or shall be fined trademark. used as a model or between QAR 30,000 multiplied by any and 100,000. industrial process. Whereas, the Trademark Law No. 9 of 2002 provides that an infringer of a trademark shall face an imprisonment term not exceeding two years and/or a fine not exceeding QAR 20,000. Are there N/A Trademark Limited rights The provisions of Copyright is limited in Copyright protection No No disadvantages protection provides protection under the article 133 of the years such as 70 applies only if the in using stronger protection law in comparison to Trademark law years for literary, work is published for copyright when an infringer trademark rights. grants clear musical or artistic the first time inside rights/laws to uses a mark which protection to logos. work, whilst Qatar or if the work is protect or trademarks are published for a first is confusingly similar Therefore, it is enforce rights in perpetual. time in another to the original advisable to opt for logos (such as country and then trademark, but not protection of a logo \NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Country Country Middle East & Africa EGYPT ISRAEL KENYA MOROCCO NIGERIA QATAR QATAR (Part 2) QATAR (Part 3) Part I preclusion or similar enough to as a trademark or Questions of published in Qatari questions of constitute copyright 3D trademark in ownership may arise within 30 days of their proper infringement. Morocco. in copyright as to first publication ownership)? priority when there (Article 5(2) and (3) are similar works but of the Copyright Law) in trademarks, the – subject to proprietor is clear and international the date of agreements. application also However, Article 8(8) clearly stated. of the Trademark Law No. 9 of 2002 Copyright is tied to a protects logos even if single work, whilst not registered in trademarks are tied Qatar, so long as to a range of goods. they have been registered as a A disadvantage trademark in a which could arise, different jurisdiction albeit in rare or so long as the logo occasions, is a constitutes a well- situation where the known sign (Article 2 creator of the logo, of the Paris seeks to enforce his Convention). rights in copyright in a manner which could be detrimental to the rights a brand owner who has trademark protection for his logo. Special - Through extensive No Concerning artistic Considerations practice, it is found works, copyright will that logos are not exists where such registered and work has been protected under the created for use as a Trademarks Law No. model or pattern to 9 of 2002 more be multiplied by any frequently than it is industrial process registered and A person need not be protected under alive to be Copyright Law No. 7

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Country Country Country Middle East & Africa EGYPT ISRAEL KENYA MOROCCO NIGERIA QATAR QATAR (Part 2) QATAR (Part 3) Part I recognized as the of 2002. author of a piece of work. Completer George Jomaa - Dominic Mwale – Mohammed Eddiani Busola Bakinson – Deeb. & Co. For Firas Qumsieh Shlomo Cohen Mwale & Co. Jackson, Etti & Edu Legal Services (Managing Director - Raghda Hamadneh, Saba IP - Cabinet Diani Advocates NJQ & Associates) SMAS IP Verifier (if

needed)

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Middle East & Africa SIERRA LEONE SOUTH AFRICA TUNISIA TURKEY UNITED ARAB EMIRATES (UAE) Part II How is Rights are created upon Copyright exists by operation of Rights are created upon creation, Copyright work is protected upon its For logos, copyright arises from the copyright fixation. law and is created as soon as the or fixation, or registration. creation with no formality and/or moment of creation. created in the work in question is (a) an original Notably, while copyright through ceremony. While not mandatory, it is country work and (b) such work has been creation and fixation is available possible to register a work which (creation/ expressed into a material form. to both locals and foreigners, provides proof to help identify fixation/ registration of copyright is only ownership and the date of creation for registration)? available to local Tunisians. a piece of work. What are the Original in character; There are two general Minimum level of creativity. The main legislation on copyright law, The work must be creative. Creativity requirements affixation in a definite medium requirements for copyright. The ''Law No. 5846 on Intellectual and is defined as the characteristic that for protection of expression; first being originality and the Artistic Works", establishes under gives originality and distinctiveness (originality/ created by a citizen of Sierra second being expression into a Article 1/B that scientific and literary to the work. creativity/ Leone or person who is material form (no © in idea). works, musical works, works of fine formalities or ordinarily resident in Sierra art and cinematographic works are requirements Leone or by a body corporate; for first published in Sierra copyrightable, provided that they have enforcement)? Leone or in the case of a work the characteristic of their author. first published outside Sierra With regards to works of fine art, in Leone within 30 days of its addition to the criteria of the work publication outside Sierra having the characteristic of its author, Leone; or work in respect of Article 4 requires works of fine art to which Sierra Leone has an also have aesthetic value. However, obligation under an the individuality and originality terms international treaty to grant and concepts are also debated as to protection. whether 'having characteristic of its author' could imply those. While the registration for literary works, computer software (with the exclusion of video games) and works of fine art is not mandatory, the Regulation No. 26171 (On the Recording and Registration of Intellectual and Artistic Works) stipulates that phonogram producers which make the first fixation of sounds and the producers that make the first fixation of films are obliged to record and register their rights in order to facilitate proof of ownership, to exercise their economic rights, and to prevent the violation of \NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Middle East & Africa SIERRA LEONE SOUTH AFRICA TUNISIA TURKEY UNITED ARAB EMIRATES (UAE) Part II their rights by third parties. What statutes or Copyright Act No. 8 of 2011 The South African Copyright Act Logos will be automatically The Copyright Law and the same UAE Federal Law No. 7 of 2002 regulations no 98 of 1978. protected under copyright law requirements set forth in Article 1/B Concerning Copyright and would be Can be accessed at: upon their date of creation. shall also be applied to logos. That Neighbouring Rights (the UAE applicable to http://www.wipo.int/wipolex/en/ Can be accessed at: being said, the logos for which the Copyright Law). copyright details.jsp?id=14529 http://www.cipro.co.za/legislation protection is sought shall also have protection for %20forms/Copyright/Copyright%2 Can be accessed at: charachteristic of its author. Based logos? 0Act.pdf http://www.wipo.int/wipolex/en/text.jsp?f on merits of each specific case, it ile_id=124612 could be possible to asses a logo as a work of fine art provided that it has an aesthetic value in accordance with the Article 4. Identify any None reported No reported cases. N/A Supreme Court of Appeals,11th. No reported cases. important court Circuit of Law, the decision dated or other legal 9.12.2015, numbered 2015/5813 E. , decisions 2015/13267 K. (cases where (http://www.kazanci.com) logos were or were not protectable) Is copyright Yes. A logo may be classified No. Other than registration in Copyrights (logos or others Yes, it is possible. Yes. Registration is however not registration for as artistic work which is respect of cinematograph film formats) are automatically mandatory under the UAE Copyright a logo possible? capable of registration. works, there is no registration for protected in Tunisia. However, Law but is recommended for copyright in South Africa. registration is only possible for enforcement purposes. Registration is however not local Tunisians and not for mandatory. foreigners. How is The general rule is that ownership The ownership of copyright work The general principle is that the The ownership is determined In most cases, the first owner of a ownership of a of copyright vests in the vests in the . Even if the person who actually creates a work is through authorship or vesting author copyright work is the author. An author copyright author/creator of the work. of economic rights in a work was created in terms of the the author of such work. The is defined as the person who created determined? Is Section 21(c) of the Copyright Act copyright through a transfer or author's employment with a public ownership of the work is acquired the work. It therefore follows that the there a concept provides that “Where a person transmission. or private employer, the copyright automatically with the creation of the author must be an identifiable living of an employer commissions the taking of a vests in the employee. The work. There is a specific provision in individual. owning a work Yes. The copyright of a work photograph, the painting or ownership in this context refers to Copyright Law for works created by under a work shall vest in an employer or drawing of a portrait, the making No concept of a 'work for hire.' There made for hire person who commissioned the of a gravure, the making of a the economic rights inherent in an employee. According to Article are no provisions that deem that the concept? Must work if the employed author cinematograph film or the making copyright. The economic rights 18(2) of the Copyright Law “Provided work of an employee is owned by an an author created the work (a) in the of a sound recording and pays or may be transferred or licensed. that the contrary is not determined by employer. always be a course of his employment by agrees to pay for it in money or a private contract between the parties In the case of 'Collective Works,' the specifically the employer or person; (b) money’s worth, and the work is or is understood from the nature of owner of copyright is the natural or legal named living under a contract of service; or made in pursuance of that \NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Middle East & Africa SIERRA LEONE SOUTH AFRICA TUNISIA TURKEY UNITED ARAB EMIRATES (UAE) Part II individual? (c) on commission by the commission, such person shall, the situation, the rights on the works person who directed the creation of the person who commissioned the subject to the provisions of created by officers, servants and work. work, in the absence of any paragraph (b), be the owner of employees while they are performing enactment or contract to the any copyright subsisting therein.” their jobs shall be used by their contrary. employers or by the ones who have However, the above does not No. assigned them to work. The same apply to artistic works like logos. As such, ownership in a logo will rule applies in respect of the vest in the creator. If for instance, executive bodies of legal persons.” a creative agency is contacted for the specific purpose of creative a According to this provision, the once off logo, the agency will own employee still remains as the author the copyright even where the of the work but as a part of the client has paid for the work. employment, the right to exercise copyrights (the economic right) is Regarding employment however, legally assigned to the employer upon Section 21(d) of the Copyright Act the creation of the work. provides that “Where a work is made in the course of the author’s employment by another person under a contract of service or apprenticeship, that other person shall be the owner of any copyright subsisting in the work” (i.e. the employer). What is the Term In the case of all works except Life of the author, plus 70 years. For most works, the term of copyright The right of an author shall be Duration depends on the type of of Protection for protection in the UAE is the lifetime of protected during the life of the work that has been created. photographs, the copyright a copyrighted the author plus fifty years from the author and for fifty years after Generally, the term of copyright is endures for the lifetime of the work? Does it first day of the calendar year following his death. 50 years, subject to the following: author plus 50 years. In the case vary for different of photographs, the duration is 25 the author's death. However, this term types of works? In the case of varies for different types of works. joint Literary, Musical or Artistic years from the year in which the authorship, during the life of Works – copyright exists for the work was made. the last surviving author and life of the author plus 50 years for fifty years after his death. following death, calculated from the end of the year the author In the case of a collective died in or 50 years from the date work and audio visual work, of first publication, performance in for fifty years from the date on public, offering for sale of records which the work was either thereof or the broadcasting made, first made available to thereof , whichever is later. the public or first published, Films and Photographs – 50

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Middle East & Africa SIERRA LEONE SOUTH AFRICA TUNISIA TURKEY UNITED ARAB EMIRATES (UAE) Part II whichever date is latest. years from the end of the year in which the work is made publicly In the case of a work published available, or the end of the year in anonymously or under a which the work is first published, pseudonym, for fifty years whichever is longer, or fifty years from the date on which the from the end of the year in which work was made, first made the work is made. available to the public or first Sound Recordings – 50 years published, which date is latest, from the end of the year in which but where the author’s identity the recording is first published. is revealed or is no longer in Broadcasts – 50 years from the doubt before the expiration of end of the year in which the that period then for the life time broadcast first takes place. of the author and for fifty years Programme-carrying Signals – after his death. 50 years from the end of the year Where the copyright is owned in which the signals are emitted to by a public corporation or a satellite. other public body corporate the Published Editions – 50 years term of protection shall be fifty from the end of the year in which years from the date on which the edition is published. the work was made public. In the case of a sound recording or broadcast, the rights of the author are protected until the expiry of fifty years from the date of making of the work, or where the work is made available to the public during the period with the consent of the author until the expiration of fifty years from the date of its communication to the public. In the case of a program carrying signals or photographic work, fifty years from the date of making the work or the signal. Are there No. Trademark law has a Copyright is highly enforced in Copyright registration can be used for Yes, there are circumstances in which a Copyright law (although usually benefits to history of strong enforcement copyright infringement claim may be raising more uncertainty than Tunisia and is one of the enforcing copyright works before \NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Middle East & Africa SIERRA LEONE SOUTH AFRICA TUNISIA TURKEY UNITED ARAB EMIRATES (UAE) Part II using copyright and institutions readily in trade mark rights) will benefit a strongest arguments used Customs. Registration certificates can available where a trade mark rights/laws for place. Whereas copyright law case if used TOGETHER with against third parties in civil court also be used to apply for a customs infringement claim cannot be brought – logo is mostly unenforced. trade mark rights. The additional proceedings. watch service before the Customs i.e., where a logo is used by an infringer enforcement claims will serve to strengthen a Authorities upon a central recordal of for goods or services not covered by a (instead of case of infringement and where the copyright. The acceptance of the trade mark registration. trademark law)? trade mark law may fail (due to copyright recordal by the Customs confusion not being found) copyright law may serve as a Authority will activate the customs valuable back-up. monitoring on the passing of possibly pirated goods in order to initiate the suspension of release of such products. The registration certificates of copyrighted works are also very practical and useful tools to prove the ownership and to determine context of the work in possible civil and criminal actions. These certificates are also used during the enforcement of the copyright in case of infringement before the Court. As the framework of the copyrighted work is clearly defined in the certificate, the examination will be carried through more effectively, which increases the chances of obtaining preventive or injunctive measures during such actions. Are there Copyright law is largely None No, there are not. It can be difficult to establish ownership As there is no registration of disadvantages unenforced. Institutions are not of copyright under UAE law. Although copyright, ownership queries in using in place and there are no the UAE Copyright Law provides that it surrounding the copyright work copyright recorded cases on the matter. is not necessary to register copyright in will most often need to be dealt rights/laws to order to bring an infringement claim, it with. At the same time, the very protect or can be very difficult to succeed with an existence of copyright (against enforce rights in enforcement action without a the previously mentioned logos (such as registration in place. requirements) will also be preclusion or scrutinized. This creates a level of questions of uncertainty in enforcement of proper copyright. Trade mark ownership)? registrations hold more certain

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Middle East & Africa SIERRA LEONE SOUTH AFRICA TUNISIA TURKEY UNITED ARAB EMIRATES (UAE) Part II ownership values The lifespan of copyright is limited while a trade mark right may be kept in force indefinitely. Copyright is linked to one single work and protects certain actions surrounding that work. Trade mark rights on the other hand are linked to a variety of goods/services under the registration and is not necessary linked to an exact reproduction of the right, but rather action which is (in most cases) likely to cause confusion and/or deception disadvantages may be encountered if one chooses to make use of copyright INSTEAD of trade mark rights. Special Whilst registration is not mandatory, in There is no provision for the Considerations practice, it can be very difficult to registration of copyright in South succeed with an enforcement action Africa, except for cinematograph without a registration place films. Registration of cinematograph films is however not a requirement in order for copyright to exist.

The standard of originality required for copyright is low. Whilst a work does not necessarily have to be unique, it must not have been copied from another source. In determining originality, the level of skill and labor involved in creating the work is questioned. Completer Abdul Aziz Bensouda – Amie Ashley Skinner – Berdou SABA & CO IP -TUNISIA Ms. Sila Basaran w/ Deris Patent & Rob Deans, Clyde & Co LLP, UAE Bensouda & Co. Attorneys DEPARTMENT Trademarks Agency

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country Country Country Country Middle East & Africa SIERRA LEONE SOUTH AFRICA TUNISIA TURKEY UNITED ARAB EMIRATES (UAE) Part II Verifier (if Mr. M. N. Aydin Deris needed)

\NORTHVA - 701790/000420 - 1127614 v1 September 2019

Region Country Country North America CANADA UNITED STATES OF AMERICA How is copyright Copyright arises on creation of a work without the need for registration or other formalities. A work is protected upon fixation in a tangible medium of expression. created in the The Copyright Act (RSC 1985, c C-42) expressly requires fixation for some types of work country (creation/ (and not others); however, the courts have held that a “work” must have some “material form” fixation/ (see e.g. Théberge v Galerie d'Art du Petit Champlain inc 2002 SCC 34 at para 25, [2002] 2 registration)? SCR 336). What are the • Originality: To be protected by copyright, a work must be “original”. It must be more than The work must be original, but the requisite amount of creativity is extremely low. See requirements for a mere copy of another work, but it need not be creative or novel. What is required is an Feist Publ'ns Inc. v. Rural Tel. Service Co., 499 U.S. 340 (1991). protection exercise of skill and judgment that is not so trivial that it could be characterized as a purely (originality/ mechanical exercise. “Skill” is the use of one’s knowledge, developed aptitude or practiced creativity/ ability in producing the work. “Judgment” is the use of one’s capacity for discernment or formalities or ability to form an opinion or evaluation by comparing different possible options in producing requirements for the work. See CCH Canadian Ltd. v Law Society of Upper Canada (2004 SCC 13 at para 16, enforcement)? [2004] 1 SCR 339).

• Benefits of Registration: Registration is not required for copyright to arise, or to enforce copyright. However, it can be beneficial to register. A registration is evidence that copyright subsists in the registered work, and that the registered owner is the proper owner of the copyright (Copyright Act, s 53). (Note: even without registration, if the name of someone purporting to be the author is indicated on the work, that person will be presumed to be the author; if no author is indicated but an owner is, that person will be presumed to be the owner (Copyright Act, s 34.1)). Registration also prevents a defendant from taking advantage of section 39 of the Act, which states that a plaintiff is not entitled to any remedy other than an injunction where the defendant can prove that he or she was not aware, and had no reasonable ground for suspecting, that copyright existed in the infringed work (Copyright Act, s 39).

What statutes or • SOR/97-457 - The Copyright Act and the Copyright Regulations. 17 U.S.C. 101 et seq. (the Copyright Act); 37 C.F.R. 201 et seq.; Compendium of U.S. regulations would Copyright Office Practices (3d Ed.) 913 (not a binding regulation or source of law, but be applicable to used by the Copyright Office for examination of applications). • The Industrial Design Act (RSC, 1985, c I-9): Sections 64 and 64.1 of the Copyright Act copyright address the interface between copyright protection and industrial design protection. The protection for intent of these sections is to create an exception to copyright infringement for works that are logos? more appropriately protected as industrial designs.

• The Competition Act provides that where intellectual property rights have been used in one of the prohibited, anti-competitive manners listed in s. 32(1) of the Competition Act the Federal Court can, among other things, void any license related to the use, direct the grant of licenses, expunge registrations of trademarks, and direct that "such other acts be done or omitted as the Court may deem necessary to prevent any such use” (Competition Act, RSC, 1985, c C-34, s 32(2)).

Identify any • Cases in which copyright infringement of a logo was successfully claimed: U.S. courts have generally been willing to recognize the coexistence of trademark and \NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country North America CANADA UNITED STATES OF AMERICA important court or Canadian Tire Corp. v Retail Clerks Union, Local 1518 (plaintiff successfully prevented copyright protection for logos. Although there have been no landmark court decisions other legal striking workers from using its logo) (7 CPR (3d) 415, (1985), 36 ACWS (2d) 4 (FCTD)); in this area, one interesting case is as follows: Frederick Warne & Co. v. Book Sales, decisions (cases Tommy Hilfiger Licensing Inc. v International Clothiers Inc. (defendant sold clothing with a Inc., (involving the Beatrix Potter "Peter Rabbit" books and recognizing that "Because where logos were or crest similar to a crest for which THLI had a trademark and copyright registration. (2003 FC the nature of the property right conferred by copyright is significantly different from that were not 1087, 239 FTR 260). Note the plaintiff appealed the dismissal of the trademark infringement of trademark, trademark protection should be able to co-exist, and possibly to overlap, protectable) claim, and the trial judgment was reversed on this point only: 2007 FCA 261 at para 32, with copyright protection without posing preemption difficulties." and that "Dual [2005] 1 FCR 148); Rotisseries St-Hubert Ltée v Syndicat des Travaileurs(euses) de la protection under copyright and trademark laws is particularly appropriate for graphic Rotisserie St-Hubert de Drummondville (CSN) (plaintiff successfully prevented union from representations of characters"). 481 F.Supp. 1191 (S.D.N.Y. 1979) using material that infringed its logos during a labour dispute) (17 CPR (3d) 461, [1987] RJQ 443 (Sup Ct)); Corp. Sun Média c S.C.F.P. (employer successfully prevented striking workers from using logo on protest banner) (2007 QCCS 2943, DTE 2007T-630); Cie générale des établissements Michelin - Michelin & Cie v CAW – Canada (plaintiff succeeded in a copyright infringement claim against a union that used images of the "Michelin Man" in its literature) ([1997] 2 FC 306, 68 ACWS (3d) 156); Guillemette v Centre coopératif de loisirs & de sports du Mont Orignal (“Under the provisions of s. 2 of the Copyright Act, R.S.C. 1970, c. C-30, the plaintiff's logo, which was designed by him, is manifestly an "artistic work".” at CPR 411) (15 CPR (3d) 409, 15 CIPR 123 (FCTD)); Spiros Pizza & Spaghetti House Ltd. v Riviera Pizza Inc. (plaintiff “possessed copyright and moral rights in the logo” para 4) (2005 ABQB 80, 377 AR 266); Visa International Service Assn. c Auto Visa Inc. (41 CPR (3d) 77, [1991] RJQ 2197 (QC SC)); Dufour c Langlois (2001 CanLII 16628 (QC CQ)); Wing v Golden Gold Enterprises Co. (66 CPR (3d) 62, 108 FTR 308); E. Remy Martin & Co. S.A. v Magnet Trading Corp. (HK) Ltd. (Remy Martin successfully opposed registration of the applicant’s trademark on the grounds that the applicant could not be satisfied it was the person entitled to register the mark, since it infringed Remy Martin’s copyright in its Centaur design mark (23 CPR (3d) 242, 1988 CarswellNat 1457 (TMOB)); but see also Interactiv Design Pty Ltd. v Grafton-Fraser Inc. (a person may believe they are entitled to registration notwithstanding another’s copyright) (87 CPR (3d) 537, 1998 CarswellNat 3069 (TMOB)); Ace Cafe London Ltd. v Ace Cafe Toronto Ltd. (2012 TMOB 219, 107 CPR (4th) 427) (similar to Remy Martin) and Chery Automobile Co. v Wang (2013 TMOB 104, 113 CPR (4th) 327) (similar to Remy Martin).

• Kraft Canada Inc. v Euro Excellence Inc.: Kraft Canada Inc. attempted to prevent "grey market" importation into Canada of genuine goods intended to be sold in a foreign market. It brought an action against Euro Excellence for secondary infringement based on the logos on Toblerone and Côte d'Or chocolate bars (secondary infringement pursuant to s. 27(2) of the Copyright Act prohibits the importation of a copy of a work that a person knew or should have known would infringe copyright if it had been made in Canada by the person who made it). At the trial level (2004 FC 652 at para 8, [2004] 4 FCR 410), the judge held that the Côte d'Or elephant logo and the Toblerone bear in a mountain were sufficiently original to be protected by copyright, but “Côte d'Or” in block script and the red shield (which was a background for the words and elephant) were not. These findings were not challenged at the Court of Appeal (2005 FCA 427, [2006] 3 FCR 91) or the Supreme Court (2007 SCC 37, [2007] 3 S.C.R. 20). Kraft Canada lost at the Supreme Court. The court's reasons were fragmented. Some judges held that Kraft Canada could not rely on section 27(2) because it requires that the work

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country North America CANADA UNITED STATES OF AMERICA would be infringing if made in Canada by the person who made it, and that was not the case here. The logos were applied to the goods by the copyright owner. Kraft Canada Inc. was not the copyright owner, but rather the exclusive Canadian licensee. If the logos had been applied to the goods in Canada by the copyright owner that may have been a breach of the exclusive license but in that case the cause of action is breach of contract. As exclusive licensee, Kraft Canada Inc. would have no claim against the copyright owner for copyright infringement.

• Cases in which logos were not protected by copyright include: Data Accessories Corporation v Directory Advertising Consultants Limited (1997 CarswellNat 3344, 1997 CanLII 15887 (TMOB)). Although Data Accessories prevailed in this trademark opposition proceeding, its ground of opposition related to copyright infringement failed. The mark at issue was a logo consisting of a black rectangle with the letters DAC in white within a white rectangular border. The court did not need to consider this ground, but it noted in obiter that “it is doubtful that copyright subsists in the opponent’s trademark DAC & Design since there is little, if any, originality in that logo.” (para 16) Is copyright Yes, as long as copyright subsists in the logo. An example of a registered logo was the logo Yes, a visual art work that is used as a trademark, logo, or label may be registered if it registration for a at issue in VIA Rail Canada Inc. c Location VIA-ROUTE Inc. ([1992] RJQ 2109, 96 DLR (4th) satisfies the requisite qualifications for copyright. 37 C.F.R. 202.10. logo possible? 347 (QC CA)). How is ownership • The general rule is that the author is the first owner of a work (Copyright Act, s. 13). Copyright ownership belongs to the individual who created the work, unless it was of a copyright But if a work is made by a person “under a contract of service or apprenticeship” and it is created in the scope of his or her employment, in which case the employer is determined? Is made in the “course of employment”, the author’s employer is the first owner, absent an considered the owner. Independent contractors can be hired on a work made for there a concept of agreement to the contrary (s. 13(3)). First, the person must be an employee, not an hire basis pursuant to a written agreement, but only with respect to creation of the an employer owning independent contractor. This determination is based on factors such as the terms of any following types of works: (1) contribution to a collective work, (2) part of a motion a work under a work agreement(s), whether the employer controls or directs the employee’s work and whether the picture or other audiovisual work, (3) translation, (4) supplementary work, (5) made for hire employee bears a risk of loss or chance of profit. Second, the work must be completed in the compilation, (6) instructional text, (7) test or answer material for a test, or (8) atlas (17 concept? Must an course of employment. This determination is based on factors including the terms of U.S.C. 101). If an independent contractor is hired to create any other type of work, author always be a employment (for example, the hours of employment), who owns the tools used to create the then an assignment of rights to the hiring party will be necessary. Under the work specifically named work, and where the work is created. Note that where the employer is the first owner, the made for hire doctrine, corporate entities can be considered authors of copyrightable living individual? employee remains the author. works.

• The author must be a natural person.

• Special rules apply in the case of sound recordings and older photographs. In the case of sound recordings, “the maker of a sound recording has a copyright in the sound recording, consisting of the sole right… (a) to publish it for the first time, (b) to reproduced it in any material form, and (c) to rent it out, and to authorize any such acts.” (s. 18). A “maker” of a sound recording is “the person by whom the arrangements necessary for the first fixation of the sounds are undertaken” (s. 2). This maker can be a corporation (s. 18(2)(a)(iii)).

• In the case of photographs, if the plate or other original of an engraving, photograph or portrait was commissioned for valuable consideration before November 7, 2012, the

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country North America CANADA UNITED STATES OF AMERICA commissioner is the first owner of the copyright (so long as they have paid). What is the Term of • The general rule is that the term of copyright is the life of the author plus fifty years, For works created after January 1, 1978 by individual authors, the term is life plus Protection for a calculated from the end of the year in which the author died (Copyright Act, s. 6). In the case 70 years. For works created after January 1, 1978, by corporate authors, the term copyrighted work? of a work of joint authorship, the relevant life is that of the last author to die (s. 9(1)). If a joint is 95 years from publication or 120 years from creation, whichever is shorter. Does it vary for author is from a non-NAFTA country, however, and that country grants a shorter term, For works created prior to January 1, 1978, the term will vary depending on a number different types of copyright persists for only that shorter term (s. 9(2)). of circumstances, such as whether the work was registered and if the registration was works? renewed. • For anonymous or pseudonymous works, the term is the shorter of fifty years from the end of the year of first publication, or seventy-five years from the end of the year the work was made (however, if the author(s) become(s) known, the general rule then applies) (s. 6.1).

• For government works, the term of copyright is to the end of the year of publication (as that term is used in the Copyright Act) plus 50 years (s. 12). Are there benefits • Unlike trademark law, "use" is not required to support a claim for violation of copyright. Yes. The standard for infringement is substantial similarity, rather than likelihood of to using copyright This means that (i) there can be copyright protection for a logo that is not a valid trademark confusion. Thus, use of a logo on unrelated goods or services could be actionable rights/laws for logo (cannot be registered, has been expunged, or cannot be protected as an unregistered mark), under copyright law, but not under trademark law. Moreover, copyright law allows for enforcement and (ii) it is not a defense to infringement for a defendant to establish that it did not use the the award of statutory damages and recovery of attorney's fees and costs if the (instead of logo as a trademark and/or in association with goods or services. registration was timely obtained or obtained prior to the infringing act, whereas action trademark law)? based on trademark law requires proof of damages or defendant's profits. • The tests for infringement are different. The test for trademark infringement is likelihood of confusion - the question is whether the use of the defendant's mark likely to lead to the inference by the relevant public that the goods or services associated with that mark are manufactured, sold, performed or endorsed by the plaintiff. The test for copyright infringement is substantial similarity - the question is whether the defendant has reproduced the work or any substantial part thereof.

• While a trademark must be distinctive, there is no similar concept of loss of distinctiveness for a copyright-protected work.

• Statutory damages are available for copyright infringement (Copyright Act s. 38.1), but not for trademark infringement. Note, however, that the range is wide and the amount is ultimately at the discretion of the court.

• Plaintiffs claiming copyright infringement can claim both damages and an accounting of the defendant's profits (Copyright Act, s. 25). In trademark infringement, the plaintiff must elect between damages or an accounting of profits.

• Owners of unregistered copyright can assert rights nationally, while owners of unregistered trademarks are limited to the geographic boundaries within which they can establish a reputation.

\NORTHVA - 701790/000420 - 1127614 v1 September 2019 Region Country Country North America CANADA UNITED STATES OF AMERICA Are there • Proving ownership of copyright can be an issue. If ownership is claimed because the Copyright protection for a logo may fall into the public domain, whereas trademark disadvantages in work was created by an employee, the plaintiff may have to prove the author was an rights in the logo can subsist for as long as the logo is being used in a source- using copyright employee (as opposed to an independent contractor) and that the work was created in the identifying manner. The Copyright Act also has a three year statute of limitations, rights/laws to course of their employment. Where the plaintiff was not the first owner of copyright, the while the Lanham Act does not have a statute of limitations. Per the U.S. Supreme protect or enforce plaintiff must prove an assignment in writing (Copyright Act, s 13(4)), and while the written Court's decision in Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S.Ct. 1962 (2014), rights in logos assignment does not necessarily have to be produced, the court must be satisfied it existed. laches can form a strong defense to a trademark infringement claim, but may be a (such as preclusion weaker defense to a copyright infringement claim. or questions of • In addition, copyright reverts to an author's estate 25 years after death where the proper ownership)? author of a work is the first owner of copyright. In that case: “no assignment of the copyright and no grant of any interest therein, made by him, otherwise than by will, after June 4, 1921, is operative to vest in the assignee or grantee any rights with respect to the copyright in the work beyond the expiration of twenty-five years from the death of the author.”

• Logos that are dominated by words may not be copyrightable - for example, copyright does not extend to a single word.

• Exceptions and defenses are available to defendants accused of copyright infringement that are not available to defendants accused of trademark infringement. Of particular note for logos are: independent creation, fair dealing, non-commercial user-generated content, and incidental inclusion.

• The Copyright Act includes special rules related to copying by certain entities or for certain purposes, including for example copying by educational institutions (s 29.4-30.04) and libraries, archives and museums (s 30.1-30.21).

• There are different limitation periods for copyright infringement and trademark infringement.

• If a copyright is not registered, a defendant can plead ignorance of the copyright. In that case, an injunction is the only remedy; no monetary relief is available (Copyright Act, s. 39).

Special Significant amendments to the Trademarks Act have been passed but are not yet in force. A copyright registration is required to initiate federal court litigation for copyright Considerations Among other things, they will expand the definition of trademark to formally include "non- infringement. 17 U.S.C. 411. traditional" trademarks such as scent and sound. The changes are otherwise unlikely to affect the analysis above. Economic Action Plan Act, No. 1, SC 2014 c 20. Completer Peter Mendelson, Purdue Pharma L.P. Peter Mendelson, Purdue Pharma L.P. Verifier (if needed)

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