Copyright 2021

A practical cross-border insight into copyright law

Seventh Edition

Published in association with Bird & Bird LLP, featuring contributions from:

Advokatfirmaet GjessingReimers AS Marks & Clerk Law LLP SiqueiraCastro Advogados Armengaud Guerlain Nagashima Ohno & Tsunematsu Solubility Bird & Bird LLP Ofo Ventura Intellectual Property & SyCip Salazar Hernandez & BOEHMERT & BOEHMERT Litigation Gatmaitan Fross Zelnick Lehrman & Zissu, P.C. OLIVARES Wenger Plattner Hylands Law Firm Semenov&Pevzner Wintertons Legal Practitioners LexOrbis Shin Associates ISBN 978-1-83918-076-7 ISSN 2056-4333

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Consulting Group Publisher Rory Smith

Publisher James Strode Contributing Editor: Senior Editor Sam Friend Phil Sherrell Head of Production Bird & Bird LLP Suzie Levy

Chief Media Officer Fraser Allan

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Disclaimer This publication is for general information purposes only. It does not purport to provide comprehensive full legal or other advice. Global Legal Group Ltd. and the contributors accept no responsibility for losses that may arise from reliance upon information contained in this publication. This publication is intended to give an indication of legal issues upon which you may need advice. Full legal advice should be taken from a qualified professional when dealing with specific situations. Table of Contents

Expert Chapter

Expanding the Boundaries of Copyright Law 1 Phil Sherrell & Will Smith, Bird & Bird LLP

Q&A Chapters

Australia Norway 7 Solubility: Jeff Bergmann & Louise Brunero 78 Advokatfirmaet GjessingReimers AS: Øystein Flagstad Brazil 15 SiqueiraCastro Advogados: Eduardo Ribeiro Augusto Philippines 84 SyCip Salazar Hernandez & Gatmaitan: Vida M. Panganiban-Alindogan & Anna Loraine M. Canada Mendoza 19 Marks & Clerk Law LLP: Catherine Lovrics & Lesley Gallivan Russia 92 China Semenov&Pevzner: Roman Lukyanov, 27 Hylands Law Firm: Erica Liu (Liu Yuping) & Ksenia Sysoeva & Irina Ostapchuk Andrew Liu (Liu Yungui) Switzerland 99 France Wenger Plattner: Melanie Müller & 34 Armengaud Guerlain: Catherine Mateu Yannick Hostettler

Turkey Germany 105 40 BOEHMERT & BOEHMERT: Silke Freund & Ofo Ventura Intellectual Property & Litigation: Dr. Sebastian Engels Ozlem Futman & Yasemin Aktas

India United Kingdom 48 LexOrbis: Aprajita Nigam & Dheeraj Kapoor 112 Bird & Bird LLP: Rebecca O’Kelly-Gillard & Phil Sherrell Japan 57 Nagashima Ohno & Tsunematsu: Kenji Tosaki USA 119 Fross Zelnick Lehrman & Zissu, P.C.: David Donahue & Jason D. Jones Malaysia 62 Shin Associates: Jessie Tan Shin Ee & Joel Prashant Zimbabwe 126 Wintertons Legal Practitioners: Cordellia Nyasha Mexico Midzi 72 OLIVARES: Luis C. Schmidt, Guillermo Treviño & Manuel Santin Welcome

From the Publisher

Dear Reader,

Welcome to the seventh edition of ICLG – Copyright, published by Global Legal Group. This publication provides corporate counsel and international practitioners with comprehensive jurisdiction-by-jurisdiction guidance to copyright laws and regulations around the world, and is also available at www.iclg.com. This year, there is one expert chapter titled Expanding the Boundaries of Copyright Law. The question and answer chapters, which in this edition cover 18 jurisdictions, provide detailed answers to common questions raised by professionals dealing with copyright laws and regulations. As always, this publication has been written by leading copyright lawyers and industry specialists, for whose invaluable contributions the editors and publishers are extremely grateful. Global Legal Group would also like to extend special thanks to contributing editor Phil Sherrell of Bird & Bird LLP for his leadership, support and expertise in bringing this project to fruition.

Rory Smith Consulting Group Publisher Global Legal Group Welcome Chapter 1 1

Expanding the Boundaries of Copyright Law Phil Sherrell

Bird & Bird LLP Will Smith

Introduction (a) a work of architecture being a building or a model for a building; or (b) a work of artistic craftsmanship.”6 The DSM Directive,1 about which we have written in previous If the work in question does not fall within the specified cate- editions of this guide, came into force in June 2019 and is now gories, copyright will not subsist. in the process of implementation by Member States. The next The same is not necessarily true of other European countries. EU reform to touch on the application of copyright to digital For example, in France, Germany and Italy (amongst others) there content (the proposed Digital Services Act, which is slated to is no exhaustive list of categories of works. Generally, any creation include safe harbour reforms) will now take its turn on centre with sufficient originality is capable of being a work and therefore stage in Brussels, but in the meantime the CJEU continues, eligible for protection. The result is that protection is afforded more quietly, to develop a number of fundamental aspects of to a broader class of creative works, including, for example, the copyright law as provided for in the InfoSoc Directive,2 almost protection of the economic interests of the organisers of sports two decades earlier. events and performances by way of a neighbouring right. Of those developments, this chapter will focus on the recent Legislative attempts to harmonise copyright in the EU have decisions of the CJEU in Cofemel 3 and Brompton4 and analyse the not tried to grapple with this divergence. Whilst the InfoSoc new (liberal) guidance which they offer as to the criteria for Directive refers to works, it makes no attempt to define what is copyright protection to arise and in particular what amounts to a (or is not) capable of being a work. “work”. For the UK and EU Member States which have a closed list system of copyright protection (i.e. a system in which the categories of works are set out in an exhaustive list), the decision Works of artistic crafstmanship in Cofemel suggests that such systems are fundamentally incompatible with EU copyright law. The policy considerations behind As might be expected, the UK’s closed category approach led to both the Cofemel and Brompton decisions are also indicative of litigation regarding the outer limits of these categories and, in an increased flexibility as to the application of copyright law, particular, the scope of a “work of artistic craftsmanship”. which is set to offer opportunities for protection to be claimed The leading authority on this issue is the decision of the in respect of subject matter where it was previously unavailable. House of Lords in the 1970s in Hensher which concerned a suite Although this chapter will focus on works of artistic craftsman- of furniture.7 Unfortunately, the principles flowing from this ship, which from an English law perspective is the type of copy- decision have proved difficult to follow because the defendant right work most directly affected by the decisions in Cofemel and made a concession regarding the meaning of “craftsmanship” Brompton, the implications of the decisions are much broader, and because there was no consensus amongst the House of with the potential to impact all types of copyright work. Lords as to the meaning of “artistic”.8 In the 1990s, the decision in Hensher was considered in a case Background before the New Zealand High Court called Bonz Group.9 In that case the judge concluded that: In order to understand the potential significance of the decision “… [F]or a work to be regarded as one of artistic craftsmanship it in Cofemel to English law, it is first necessary to recap some principles of English copyright law and where it differs from EU must be possible fairly to say that the author was both a craftsman copyright law. and an artist. A craftsman is a person who makes something in a skilful way and takes justified pride in their workmanship. An artist is a person with creative ability who produces something which What can be a work? has aesthetic appeal.” This interpretation has been considered favourably in subse- English copyright law is largely found in the Copyright, Designs quent decisions of the English Court. However, the require- and Patents Act 1988 (“CDPA”). The very first line of this Act ment for “aesthetic appeal” is generally understood to set a fairly states “Copyright is a property right which subsists … in the following high threshold for qualification for copyright protection as a descriptions of work”.5 There follows an exhaustive list of cate- work of artistic craftsmanship. gories of copyright work which are afforded protection under For example, in the case of Lucasfilm vs Ainsworth, which English law. This includes original literary, dramatic, musical or concerned copyright claimed in Stormtrooper helmets from the artistic works (so called “LDMA” or “authorial” works), each of Star Wars films, the High Court held that whilst Stormtrooper which are further defined. The CDPA defines artistic works as: helmets were works of craftsmanship, they were not artistic because it was not part of their purpose to appeal as a piece of art, “a graphic work, photograph, sculpture or collage, irrespective of 10 artistic quality; rather it was to give the correct impression of the character inside.

Originality “Accordingly, for there to be a ‘work’ as referred to in [the InfoSoc Directive] the subject matter protected by copyright must be expressed in a manner which makes it identifiable with sufficient precision and In addition to the requirement for there to be a work per se, for objectivity, even though that expression is not necessarily in permanent copyright to subsist in an authorial work (as opposed to a neigh- form.” 14 bouring rights works such as sound recordings or broadcasts), It was on this basis that the CJEU held that the taste of a that work must be original. cheese was not capable of being a work. Again, the InfoSoc Directive does not attempt to define origi- Whilst the reasoning in Levola Hengelo is perhaps not as clear nality. However, this concept is now relatively settled at an EU law or convincing as it could be, an important principle is clear from level following the decision of the CJEU in Infopaq which states: the judgment. That is, the concept of a “work” should have a “… copyright within the meaning of Article 2(a) of [the InfoSoc uniform interpretation within the EU: Directive] is liable to apply only in relation to a subject-matter “The [InfoSoc Directive] makes no express reference to the laws of which is original in the sense that it is its author’s own intellectual the Member States for the purpose of determining the meaning and 11 creation.” scope of the concept of a ‘work’. Accordingly, in view of the need for This is a different test from the historical test for originality a uniform application of EU law and the principle of equality, that under English law which required only that the work be the concept must normally be given an autonomous and uniform interpre- product of the author’s skill, labour and judgment. tation throughout the European Union.” 15 There remains a debate about whether the intellectual creation This case provides the background for the decision in Cofemel. threshold is substantively different to the skill, labour and judgment threshold. However, the prevailing view is that, if there is a difference, the bar has been raised, rather than lowered.12 Cofemel

Cofemel and G-Star were two companies who designed Brexit and produced clothing. G-Star brought proceedings in the Portuguese court against Cofemel alleging that some designs of Given that this chapter discusses the potential impact of deci- jeans, sweatshirts and t-shirts produced by Cofemel infringed sions of the CJEU on English law, it would be remiss not to the copyright in G-Star’s own designs. As part of its defence, mention Brexit. Cofemel argued that such clothing designs could not be classi- The UK formally left the EU on 31 January 2020 and entered fied as works entitled to protection by copyright. into a transition period which, at the time of writing, is due The case went to the Portuguese Supreme Court which referred to expire on 31 December 2020. Under the European Union the matter to the CJEU. The key question referred was whether (Withdrawal) Act 2018, any direct EU legislation operative the InfoSoc Directive prevents Member States from granting before the end of the transition period, as well as decisions of copyright protection to designs subject to requirements other than the CJEU rendered before that time, are deemed to form part of originality. For example, by requiring a high level of artistic value. domestic law. This means that, for the time being, decisions of The decision of the CJEU was given in September 2019. The the CJEU are still binding on the UK Courts. CJEU summarised the earlier decisions, including Lenova Hengelo However, in due course the UK Courts will become free to and confirmed that: depart from CJEU case law and it remains to be seen what effect “The concept of ‘work’ that is the subject of all those provisions consti- this “freedom” might have on UK law. The decision of the UK tutes, as is clear from the Court’s settled case-law, an autonomous not to implement the DSM Directive suggests that the policy concept of EU law which must be interpreted and applied uniformly, of the current Government may be to diverge from EU copy- requiring two cumulative conditions to be satisfied. First, that right law, at least in some respects, post-Brexit. Much is likely to concept entails that there exist an original subject matter, in the sense depend on the ultimate outcome of trade negotiations with the of being the author’s own intellectual creation. Second, classification US and the EU, which are likely to impose conflicting and irrec- as a work is reserved to the elements that are the expression of such 16 oncilable demands as to the UK’s future copyright policy. creation.” Regarding the first limb of the test, as discussed above, at an A Harmonised Concept of a “Work”? EU level the requirement for originality, and the threshold to be applied in order to determine originality, is relatively settled law. In relation to the second limb, the CJEU expanded upon the Levola Hengelo requirement for the work to be expressed in a sufficiently precise and objective manner. First, legal authorities and third parties The question of what can be regarded as a work was the issue must be able to identify clearly and precisely the subject matter referred to the CJEU in the recent case of Levola Hengelo.13 This which is protected. Secondly, there is a need to avoid an element case concerned whether the taste of a cheese could be capable of subjectivity in determining whether any given subject matter of protection by copyright (i.e. could it be a work). The CJEU is protected. In this regard, the CJEU referred to the decision in held that it could not. Some of the reasoning of the CJEU in Levola Hengelo in holding that the required precision and objec- Levola Hengelo is quite circular. The CJEU identifies two cumu- tivity is not attained where an identification is essentially based lative conditions which must be satisfied for subject matter to on the sensations, which are intrinsically subjective, of an individual who perceives the subject matter at issue. be classified as a work: first, the subject matter must be orig- The CJEU then considered the Charter of Fundamental inal; and secondly only something which is the expression of the Rights of the European Union and noted that it is not a require- author’s intellectual creation may be classified as a work. The ment that subject matter qualifying for intellectual property first requirement appears to introduce a requirement of orig- protection must all qualify for the same type of protection by inality into whether the subject matter was capable of being a virtue of the nature of that subject matter itself. That is to say, work per se. The key to the second requirement appears to be in the same subject matter may qualify for both copyright and the word “expression” which distinguishes a protectable work design right protection – the two are not mutually exclusive. from a mere idea. In this regard, the CJEU also states that: The CJEU expressly recognised the principle of “cumulation”

of protection of designs, on the one hand, and copyright protec- National Applications of Cofemel tion, on the other (discussed further below). Finally, the CJEU confirmed that the effect of the InfoSoc At the time of writing we are not aware of any national court Directive was to preclude national legislation which made copy- decisions applying the judgment in Brompton. However, Cofemel right protection conditional upon a specific aesthetic value. The has been considered on at least two occasions. only requirement is that there is an original work.

Response Clothing Limited vs The Edinburgh Woollen Mill 19 Brompton This was the first UK case to consider the implications of The case of Brompton concerned whether copyright could subsist Cofemel. Following a trial in December 2019, the judgment of in the appearance of Brompton’s well-known folding bicycles; the Intellectual Property Enterprise Court was given in January i.e. whether Brompton could use copyright in order to prevent 2020. the sale of copycats of its iconic folding bicycles. The bicycles The case concerned a fabric pattern used in women’s clothing had been protected by a patent which had subsequently expired. (described as the “Wave Fabric”). Response claimed that the The defendant argued that the appearance over which protec- Wave Fabric was protected by copyright. The argument that tion was claimed was dictated by the bicycle’s technical func- a fabric could be a graphic work was rejected which led to an tion (namely to enable it to fold into three different positions) extensive discussion by the judge as to whether the fabric could and therefore, by analogy with the law of design rights, copy- be protected by copyright as a work of artistic craftsmanship. right protection should be excluded. The Belgian court referred The judge concluded that because, inter alia, the Wave Fabric the question of whether the InfoSoc Directive should be inter- was intended to be aesthetically pleasing to customers and was, preted as excluding works whose shapes are necessary to achieve in fact, a commercial success, it would fall within the definition a technical result from copyright protection. In its judgment, delivered in June 2020, the CJEU held that of a work of artistic craftsmanship under Bonz Group (discussed there was no such restriction unless that technical result had above). prevented the author from expressing his creative choices: This was clearly contrary to the approach of the House of “…a subject matter satisfying the condition of originality may be Lords in Hensher, as the judge noted: eligible for copyright protection, even if its realisation has been dictated “My impression is that none of their Lordships in Hensher would by technical considerations, provided that its being so dictated has not have concluded that the Wave Fabric is a work of artistic craftsman- 20 prevented the author from reflecting his personality in that subject ship had that been the issue before them.” matter, as an expression of free and creative choices.” 17 Even though in Hensher it was conceded that the furniture suite In other words, provided there is still room for intellectual was a work of craftsmanship, some of the judges commented on creation on the part of the author, the expression of that intellec- how the term “craftsmanship” should be understood. The fact tual creation will be capable of copyright protection. that Wave Fabric was not made by hand would have taken it However, the CJEU also stated that: outside the definition of “craftsmanship” (according to at least “Where the shape of the product is solely dictated by its technical func- two of the House of Lords judges), and the judge in Response tion, that product cannot be covered by copyright protection.” 18 Clothing felt that the Wave Fabric would have failed to meet the This mirrors the limitation which applies to the protection of requirement for the work to be “artistic” according to at least Community designs. Art 8(1) Reg 6/2002 (Community Design some of their Lordships. Regulation) provides that: The judge then considered the cases of Levola Hengelo and “A Community design shall not subsist in features of appearance of a Cofemel and held that the fabric was the expression of the author’s product which are solely dictated by its technical function.” free and creative choices and therefore is entitled to copyright In other words, there is a question of fact in such cases as to protection under the InfoSoc Directive. the extent to which the author was able to express free and crea- This led the judge to consider whether it was possible to inter- tive choices. pret the CDPA in conformity with the InfoSoc Directive such The CJEU were also asked by the referring court whether the that the fabric in question did qualify for copyright protection following factors were relevant in determining whether a shape (i.e. was a work of artistic craftsmanship). The judge held that is necessary to achieve a technical result: such an interpretation was possible if the (less stringent) defi- ■ the existence of other possible shapes able to achieve the nition in Bonz Group was followed (rather than that in Hensher). same technical result; Following the definition in Bonz Group, the fabric did in fact ■ the intention of the alleged infringer to achieve the result; have aesthetic appeal and therefore satisfied the definition of a ■ the effectiveness of the shape in achieving the result; and work of artistic craftsmanship. ■ the existence of an earlier (now expired) patent on the However, the judge also commented that complete conformity process for achieving the technical result. of the CDPA with the InfoSoc Directive, as interpreted by Its findings were: Cofemel, would exclude any requirement for aesthetic appeal and ■ the existence of other possible shapes may make it possible thus would be inconsistent with that part of the decision in Bonz to establish that there was a possibility of choice but was Group. As this comment was made obiter and the judge was able not decisive in influencing the choice made by the author; to interpret the CDPA in conformity with the InfoSoc Directive ■ the intention of the alleged infringer is irrelevant; and in this instance, the court did not go so far as to state that the ■ as to the existence of an earlier patent and the effective- CDPA was incompatible with (and therefore a misimplementa- ness of the shape chosen, these factors should be taken tion of) the InfoSoc Directive. into account only in so far as they make it possible to reveal what was taken into consideration in choosing the shape of the product concerned. The court should take into Wycon vs Kiko21 account all relevant aspects of the case when the claimed work was designed, but not factors external and subse- This was a case before the Italian court relating to whether quent to the creation of the product. the layout of Kiko’s stores could be protected by copyright as

an architectural plan and, if so, whether that copyright was looked at more closely due to prevalence of similar, earlier infringed by the defendant Wycon’s stores. Kiko was successful designs. In Response Clothing, the Defendant made enquiries at first instance and on appeal. The case was subsequently to search out similar fabrics available earlier than the date the referred to the Supreme Court. Wave Fabric was created. Searching for what might be termed Applying the principles set out in Cofemel, the Supreme Court “prior art” is a strategy more familiar to design right or patent upheld the decisions of the lower courts and held that an interior cases. Nonetheless, it was considered to be relevant by the Court design plan is protectable by copyright as an architectural work (although in the end counted against the Defendant because no if it results from an original combination of elements which such fabrics were identified). is not aimed at solving a technical-functional problem.22 Any Similarly, in Brompton the CJEU suggested that while the exist- exclusive rights vest in the overall combination of elements (e.g. ence of other possible shapes capable of achieving the same the colours of the walls, particular lighting effects, repetition of technical result was not decisive, it could be relevant in assessing decorative elements, the use of certain materials, the size and the choice made by the author. the proportions). In Brompton, the CJEU also said that the assessment as to This decision therefore seems to accord with the UK court’s whether the bicycle was an original creation (i.e. not solely reading of Cofemel in Response Clothing. dictated by technical function) required consideration to be taken of all relevant aspects of the case. Therefore it may be Comment expected that future claimants will seek to submit detailed evidence of fact regarding the design process and choices to There are a number of interesting issues which arise from the establish that a free and creative choice was made. above cases both from a UK and a wider EU perspective.

Closed Lists Works of artistic craftsmanship If it was not already the case, it seems fairly clear following Following the decision in Response Clothing it is likely that a lower Cofemel that countries with closed lists of copyright works, threshold will apply to the qualification of a work for protec- such as the UK, are vulnerable to a challenge that the InfoSoc tion as a work of artistic craftsmanship in the UK. This is likely Directive has not been properly implemented. to see producers of three-dimensional objects which would In the first instance national courts should seek to interpret perhaps not previously be considered to be works of artistic national law in such a way as to be consistent with EU law (as craftsmanship (such as the clothes in issue in Cofemel and the was the case in Response Clothing). However, there is a limit to the furniture in Hensher) seeking to rely on copyright protection extent to which this may be possible and there may be certain under this category. “works” in which copyright is claimed which cannot be inter- Given the requirement to comply with the InfoSoc Directive preted as falling with any of the closed categories. (at least for the time being) the Court would seem to have This could ultimately lead to claims against Member States limited scope to row back from the position in Response Clothing and/or amendments to national legislation. without risking a declaration of incompatibility with EU law (as to which, see below). Cumulation of Rights In addition to the specific issues identified above, a recur- Other works ring theme in the decisions discussed is the interrelationship between different IP rights. The potential for multiple rights, Although Cofemel applied to a clothing design, the general prin- with different criteria for subsistence/registration, to protect the ciple regarding qualification as a copyright work may well have same underlying product is known as the cumulation of rights. implications for other categories of work. This issue was considered recently in the context of a trade Provided the requirements for originality and a sufficiently mark application in the CJEU decision in Gömböc.23 In that case clear expression of the author’s intellectual creation are met then the CJEU held that: copyright protection should be available. “…the rules of EU law concerning the registration of designs and This is likely to lead to an attempt to expand the outer limits those applicable to the registration of trade marks are independent, of copyright protection in relation to other types of work. For without any hierarchy existing as between those rules.” example, rights owners have long sought copyright protection In Cofemel, the CJEU expressly recognised that designs for sports events and television show formats, with limited are capable of classification as copyright works (regardless of success to date. In light of Cofemel, we would expect to see whether or not they are protected by design right). In the UK renewed attempts to obtain protection for these sorts of content this would seem to open up the potential for original designs to (for example as dramatic works), particularly where the elements be protected by copyright where perhaps they would fall short of the claimed work are clearly and objectively defined. of UK registered design right protection. To qualify for UK registered design protection, designs must not only be new but Evidence also to create a different overall impression on the informed user (i.e. have individual character). This is generally considered to require more than merely the expression of the designer’s indi- The potential for the scope of copyright protection to be broad- vidual creation. ened into previously uncharted territory is also likely to lead to a In Brompton, copyright protection was held to be available (in change in the nature of the evidence that parties claiming copy- principle) to a product which had previously been protected by a right might be expected to produce. In the case of traditional copyright works, such as a painting patent (i.e. where a prior IP right had expired). or a book, there is rarely a dispute regarding originality. In 2016, the EUIPO First Board of Appeal upheld the exam- However, where copyright begins to tread into mass produced iner’s decision to refuse an application by Kiko to register its products, such as clothing, it is likely that originality will be store layout (depicted as a graphic image with specified colours) as a trade mark on the grounds that it lacked inherent distinctive

24 character (and had not acquired such character through use). Endnotes Nonetheless, in the Wycon case discussed above it was held that copyright could still subsist in essentially the same subject 1. Directive (EU) 2019/790 on copyright and related rights in matter. the Digital Single Market. When it comes to the cumulation of rights, copyright could be 2. Directive 2001/29/EC of the European Parliament and said to be in a unique position. As the cases above demonstrate, of the Council of 22 May 2001 on the harmonisation of copyright has the potential to overlap with each of designs, trade certain aspects of copyright and related rights in the infor- marks and patents. However, whilst not a monopoly right, copy- mation society. right has a number of advantages over these other rights. In 3. C-683-17. particular: copyright is unregistered; it has what is generally 4. C833/18. considered to be a lower threshold for protection; and it offers 5. S1(1) CDPA. a longer form of protection than that available for patents or 6. S(4)(1) CDPA. designs. 7. Hensher (George) Ltd v Restawile Upholstery (Lancs) Ltd [1975] Furthermore, in light of the cases discussed in this chapter RPC 31. it is clear that the range of “products” (used in the widest 8. Ibid. See Lord Kilbrandon at page 98: “Your Lordships’ possible sense) which could be subject to copyright protection House has been offered “ definitions” of the word “artistic” framed is extremely broad. This means that for many industries copy- by each of Graham J., the Court of Appeal, counsel for the appellant, right could have the potential to “fill the gaps” where effective together with two by counsel for the respondent, and has rejected them IP protection was previously lacking. all. In addition, I rather gather that there is no definition framed by a member of the Appellate Committee which is altogether accept- Conclusion able to any other member; this means that each of their Lordships has rejected, or at least refrained from adopting, nine solutions of the The partial and sometimes theoretical nature of CJEU refer- problem.” ences means that they do not always provide completely clear 9. Bonz Group (Pty) Ltd v Cooke [1994] 3 N.Z.L.R. 216. guidance to national Courts, but the Cofemel and Brompton cases 10. Lucasfilm Ltd v Ainsworth [2008] EWHC 1878 (Ch) at para do not suffer from that defect; as Response Clothing shows, the 134. This finding was not challenged on appeal. rules have clearly changed. The implications are not, however, 11. C-5/08 at [37]. entirely satisfactory. It is inevitable that the development in isola- 12. See, for example, SAS Institute Inc v World Programming tion of jurisprudence concerning separate intellectual property Limited [2013] EWCA Civ 1482 (at paragraph 37). rights will, on occasion, lead to some surprising or conflicting 13. C-310/17. outcomes. In the field discussed above, it now appears that, in 14. C-310/17 at [40]. at least some cases, the bar for obtaining copyright protection 15. C-310/17 at [40]. is set at a lower level than that for protecting exactly the same 16. C-683/17 at [29]. work as a registered design. This is illogical, not least as copy- 17. C-833/18 at [26]. right endures for a significantly longer period than registered 18. C-833/18 at [33]. designs, and provides a broader penumbra of protection. There 19. [2020] EWHC 148 (IPEC). do not appear, however, to be any significant calls for this to be 20. Ibid. at [42]. considered at a legislative level. In the meantime, creators and 21. Italian Supreme Court Decision 780/2020, with thanks to other rightsholders will be able to explore opportunities to find Dr Eleonora Rosati for her English summary of the effect new ways to protect their investments, something which may be of the decision. particularly appreciated at a time when many forms of exploita- 22. This decision came before the decision of the CJEU in tion (and hence revenue generation) are circumscribed. Brompton. 23. C833/18. 24. Case R 1135/2015-1.

Phil Sherrell heads Bird & Bird’s international Media, Entertainment & Sport sector and focuses on litigating disputes relating to the media industry, content and brands. Phil’s team offers the full range of contentious IP and media law advice, handling complex trade mark and copyright infringement litigation, disputes relating to the dissemination of information (confidential, private, defamatory, etc.), as well as complaints to UK media regulators including the ASA, IPSO and Ofcom. Phil sits on the Copyright and Technology Working Group of the British Copyright Council and is the editor of ICLG – Copyright. He appears regularly in the media discussing all aspects of media and IP law and led the team which created Bird & Bird’s own content platform, MediaWrites.

Bird & Bird LLP Tel: +44 20 7415 6000 12 New Fetter Lane Email: [email protected] London, EC4A 1JP URL: www.twobirds.com United Kingdom

Will Smith is a senior associate in Bird & Bird’s Intellectual Property Group based in London. Will advises on copyright issues across a range of sectors including media, sport and consumer products. He has advised both rightsholders and alleged infringers involved in copyright disputes, as well as advising businesses on the copyright law implications for new products, particularly in the online environment.

Bird & Bird LLP Tel: +44 20 7415 6000 12 New Fetter Lane Email: [email protected] London, EC4A 1JP URL: www.twobirds.com United Kingdom

Plugged directly into the copyright ecosystem of content creators, owners, distributors and users, our future-facing copyright team are digital experts: tech-savvy, regulation-aware and a step ahead of current trends. We continue to top the rankings for our copyright practice and this first- class reputation has enabled us to offer our clients a comprehensive service that sets us apart from our competitors. We have advised high profile creators and rights holders on copyright enforcement; collecting societies and rights organisations on licensing and competition issues; technology platforms on matters relating to user-generated content, hyperlinking, and corresponding liability issues; and businesses across the value chain on issues regarding the ownership and exploitation of data. Not only do we have the range and depth of expertise, but with more than 300 IP specialist lawyers across over 30 offices, we have numbers in force. www.twobirds.com

Australia Australia

Jeff Bergmann

Solubility Louise Brunero

12 Copyright Subsistence ■ Dramatic (e.g. works that can be performed, including choreography/dance works or mime, or a script for a film or play). 1.1 What are the requirements for copyright to subsist ■ Musical (e.g. notated music). in a work? ■ Artistic (e.g. drawings, paintings, photographs, models and sculptures, engravings, blueprints, maps). The Copyright Act 1968 (Cth) (Copyright Act) provides the owner Certain subject matter other than “works”, is also protected of “works” certain exclusive rights to control the exploitation of under Part IV of the Copyright Act, and includes: such works. ■ Sound recordings. For eligible subject matter to attract copyright protection ■ Films. under the Copyright Act, it must be: ■ Television/sound broadcasts. (a) reduced to a “material form” – includes any form, whether ■ Published editions including typographical arrangements visible or not, of storage of the work, or a substantial part of (such as the combined features of font style, size, page the work, whether or not it can be reproduced (e.g. literary, margins and headings, etc.) of a published work. dramatic, musical or artistic “works” are considered to be Certain performers also have the following rights: “made” when first reduced to writing (or embodied in an ■ A right to a share of copyright in a sound recording of a article or thing for sound recordings); and live performance. (b) original – the subject matter should be a product of the ■ Rights to make a sound recording, film or broadcast a live performance and to distribute such recordings. author’s intellectual creation and not copied. This is not a requirement for subject matter other than works. The subject matter must also: 1.4 Are there any works which are excluded from (i) be made by a resident or citizen of Australia; copyright protection? (ii) be made or first published in Australia; or (iii) have a connection with a member country of the relevant The Copyright Act does not expressly exclude any specific works. international copyright treaty (e.g. the Berne Convention). Rather, any subject matter that meets the requisite criteria will Copyright protects the way in which information is presented fall within the Copyright Act. or expressed. It does not protect the information, ideas or concepts themselves. 1.5 Is there a system for registration of copyright and, if so, what is the effect of registration? 1.2 Does your jurisdiction operate an open or closed list of works that can qualify for copyright protection? There is no system for registration of copyright in Australia. Protection is free and automatic, and exists upon creation of the Australian copyright law does not have a closed list of works that eligible subject matter (i.e. once it is reduced to material form). qualify for copyright protection. However, for subject matter to attract protection under the Copyright Act, it must fall within 1.6 What is the duration of copyright protection? Does the scope of the broad category of “works” under Part III of the this vary depending on the type of work? Copyright Act, or “subject matter other than works” under Part IV of the Copyright Act. The general rule is that the duration of copyright will exist for the lifetime of the author, plus 70 years, after which the exclu- 1.3 In what works can copyright subsist? sive rights expire. For subject matter other than works, copyright lasts for: Under Part III of the Copyright Act, copyright automatically ■ 70 years from the year of first publication of a sound exists in the following “works” upon creation. recording or film. ■ Literary (e.g. stories, poems, a table or compilation ■ 50 years from the year a television or sound broadcast was expressed in words, figures or symbols, and includes a made. computer program (or compilation of computer programs)). ■ 25 years from the year of first publication of a published edition of a work.

1.7 Is there any overlap between copyright and other 1.8 Are there any restrictions on the protection for intellectual property rights such as design rights and copyright works which are made by an industrial process? database rights? Yes. Where copyright works have been “industrially applied” as Yes, copyright overlaps with other intellectual property rights. outlined in question 1.7 above.

Trade marks 22 Ownership Artistic works in logo designs or imagery, and in some instances, musical or literary works, may be eligible for registration as trade 2.1 Who is the first owner of copyright in each of the marks under the Trade Marks Act 1995 (Cth). works protected (other than where questions 2.2 or 2.3 apply)? Design rights The Designs Act 2003 (Cth) (Designs Act) allows individuals to seek to register certain visual features (shape, configuration, The arrangements concerning ownership under the Copyright pattern, ornamentation) of a product that are new and distinc- Act are complex; however, the general rule is that: tive, providing the registrant with certain exclusive rights to (a) for works, the initial author owns the copyright; and exploit that design in relation to that product. Copyright may (b) for certain subject matter other than works, the “maker” exist in certain works which may also be eligible for design owns the copyright, where the maker is: registration. (i) for a sound recording, the person who owns the record Australia’s approach to dealing with this overlap centres on which the recording is made; around the notion that, if a product or work qualifies for design (ii) for live performances, the performers will jointly own protection for 10 years, then that person should not also get the copyright; copyright protection for the lifetime of the author plus 70 years. (iii) for films, the person doing all of the things necessary As a general rule, most copyright protection in a work is lost for the production of the first copy of the film (i.e. the upon registration of a corresponding design under the Designs producer); and Act. This means the rights of the creator can only be enforced (iv) for a TV or sound broadcast, the person who provides under the Designs Act, and only whilst the design is registered. the broadcasting service and delivers the broadcast. As a further general rule, copyright protection in a work is (c) For published editions, the publisher will generally own also lost where it has been “industrially applied” (such as where the copyright in the typographical arrangement. more than 50 copies of the work are made). However, “works The “first owner” under the Copyright Act may be varied by of artistic craftsmanship” are exempt from this and retain copy- contractual arrangements. See also question 2.3 below. right protection even when applied industrially. Further, a person who commissions the making of certain The Copyright Act does not define “work of artistic crafts- subject matter other than works may be deemed the “maker”, manship” and the meaning of the term has not been settled by and hence the owner of copyright. Also, the owner of copyright case law. However, it is clear that the work must: in a work may be different to the owner of the moral rights in that work. ■ be of artistic quality – that is, it must have sufficient aesthetic quality to be a “work of artistic craftsmanship” and the intent of the creator is relevant to this question; and 2.2 Where a work is commissioned, how is ownership ■ involve craftsmanship – that is, the work must reflect of the copyright determined between the author and the sound workmanship and skill. commissioner?

Database rights For literary, dramatic or artistic works that are created or made Australia does not recognise database rights as a distinct set of by an author under the terms of employment by the owner of a rights. Rather, any protection for databases must be found via newspaper or magazine (or similar periodical), for inclusion in traditional intellectual property right regimes, such as a literary that newspaper or magazine, the author is the copyright owner work protected by copyright. Subsistence of copyright in a data- only in so far as the copyright relates to: base is assessed under a first principles analysis of whether the work ■ reproduction for inclusion in a book; or satisfies the requisite criteria of originality and reduction to mate- ■ reproduction of the work in the form of a hard copy from rial form. Infringement of copyright in a database also follows a a paper edition. first principles analysis of whether the aspect of the work alleged to Otherwise the owner of the newspaper or magazine is the have been copied comprises a substantial part of the original work, owner. assessed qualitatively (not quantitatively), and where the work is a Where a person makes, for payment, an agreement with database, a factor critical to the assessment of the quality of what is another person for the taking of a photograph for a private or copied is the “originality” of the part which is copied. domestic purpose, the painting or drawing of a portrait or the making of an engraving, the copyright in that work is owned Patents by the commissioner, unless commissioned before 30 July 1998. It is beyond the scope of this chapter to discuss whether computer programs and software code may be protected as 2.3 Where a work is created by an employee, how is patentable inventions, other than to note that Australian law ownership of the copyright determined between the does not yet seem settled on this issue. For completeness, we employee and the employer? note that a patent application and a granted patent is likely a literary work protected by copyright, but that the Patents Act 1990 (Cth) expressly provides that it is not copyright infringement to The Copyright Act provides that, unless excluded or modified do certain acts in respect of patent documents open for public by contract, copyright in any works created by an employee in inspection. pursuance of the terms of his or her employment are owned by the employer. However, determining whether a work is made

in pursuance of the terms of employment requires an analysis Therefore, parties must ensure that the terms of any licences of the particular facts of each instance, including the relevant do not contravene the CCA, particularly certain prohibitions terms and whether the work was created in pursuance of them on anti-competitive exclusive dealing, and anti-cartel provi- or outside their scope. sions. The Australian Consumer and Competition Commission (ACCC), the Australian Government agency responsible for ensuring compliance with the CCA, has published guidelines as 2.4 Is there a concept of joint ownership and, if so, to how it sees the CCA applying to intellectual property licences what rules apply to dealings with a jointly owned work? following the removal of the safe harbour. Common law and equitable principles (e.g. duress, uncon- Yes – where the work is the product of a collaboration between scionability) may also regulate the terms of licences agreed to one or more persons, the copyright may be jointly owned by parties. (defined as a “work of joint authorship”). Such joint ownership will generally only arise where each author’s contribution cannot 3.4 Which types of copyright work have collective be separated from that of the other. Where this occurs, the joint licensing bodies (please name the relevant bodies)? owners take their interest in the copyright as tenants in common and consent from both (or all) authors must be obtained before exploiting such copyright and/or receiving any financial bene- The main collecting bodies which operate in Australia are the fits, assigning the copyright or granting licences. following. Otherwise, where each contribution can be separated from the other (e.g. the literary work in the lyrics can be separated Literature including images and illustrations accompa- from the musical work), each author will only own the copyright nying text ■ The Copyright Agency Limited (CAL) – manages four in their own separate work. types of literature licences, with all but the first item below being voluntary. 32 Exploitation ■ Statutory education licences – administering licences, collecting and distributing royalties on behalf of copy- 3.1 Are there any formalities which apply to the right owners in relation to educational institutions, transfer/assignment of ownership? as well as private education providers and registered training organisations. Since copyright is considered personal property, the Copyright ■ Commercial licences – sets the terms and administers Act permits assignment to other persons. In order to effec- pay-per-use licences for news and magazines, books tively transfer or assign copyright (in whole or in part) from and journals, and offers annual licences for business, local governments and religious associations. one person to another, such assignment must be in writing and ■ Media monitoring licences – provides copyright signed by, or on behalf of, the assignor. licences for the use of members’ works by media moni- Moral rights are personal rights and cannot be assigned, but toring organisations. they do pass to the author’s estate on death. Also, the author ■ Government licences – enables Commonwealth, State may give consent to certain acts that may otherwise breach their and Territory governments to make unlimited uses of moral rights. copyright material for the services of the government.

3.2 Are there any formalities required for a copyright Visual arts licence? ■ In addition to the four licence types above, CAL also manages visual arts licences to help manage the end-to-end visual art licensing process. Subject to restrictions on works of joint authorship, a copy- ■ Viscopy Limited – a not-for-profit copyright collecting right owner is free to license its copyright in any manner that it society exclusively for visual artists. wishes. However, any “exclusive” licence must be in writing and ■ Aboriginal Artists Agency Limited (AAAL) – a not-for- signed by, or on behalf of, the owner, authorising the licensee, profit organisation representing indigenous artists, providing to the exclusion of all other persons (including the owner), to copyright licensing services similar to those of Viscopy commit an act that, by virtue of the Copyright Act, the owner Limited, including negotiating licences for its members. of the copyright would, but for the licence, have the exclusive right to do. Music, lyrics, sound recordings and music videos The Copyright Act also provides that a licence granted by the ■ Australasian Performing Right Association (APRA) – copyright owner binds every successor in title to the interest in represents songwriters and composers and provides busi- the copyright of the grantor of the licence to the same extent as nesses with licences to use copyright material and manages the licence was binding on the grantor. and distributes the royalties from these licences. ■ Australasian Mechanical Copyright Owners’ Society Limited (AMCOS) – responsible for licensing musical 3.3 Are there any laws which limit the licence terms parties may agree to (other than as addressed in works to third parties who reproduce music on CDs, questions 3.4 to 3.6)? DVDs, streaming platforms, etc. ■ Phonographic Performance Company of Australia Limited (PPCA) – administers the “sound recording” copyrights Before its repeal, section 51(3) of the Competition and Consumer Act of music for record companies and their recording artists. 2010 (Cth) (CCA) provided an exemption for certain conduct concerning intellectual property rights (including licensing) from Film certain otherwise prohibited anti-competitive conduct. This safe ■ Screenrights – represents owners of rights in film and tele- harbour was repealed as of 13 September 2019, leaving all intel- vision, and also administers the statutory licences under lectual property dealings subject to all provisions of the CCA. the Copyright Act that allow educational institutions to copy material from film, radio and television.

3.5 Where there are collective licensing bodies, how Film – the exclusive right to: are they regulated? (a) make a copy of the film; (b) cause the film to be seen and heard in public; and Collecting societies are regulated by the ACCC, and usually seek (c) communicate the film to the public. authorisation from the ACCC for their licensing arrangements, TV broadcasts and sound broadcasts – the exclusive right to: in order to alleviate any risk that those arrangements may breach (a) in the case of a TV broadcast, in so far as it consists of the provisions of the CCA. The ACCC may in turn apply certain visual images, to make a cinematograph film of the broad- conditions on such authorisation. cast, or a copy of such film; (b) in the case of a sound broadcast, or of a TV broadcast in so far as it consists of sounds, to make a sound recording of 3.6 On what grounds can licence terms offered by a the broadcast, or a copy of such sound recording; and collective licensing body be challenged? (c) in the case of a TV broadcast or sound broadcast, to re-broadcast it or communicate it to the public otherwise The Copyright Act establishes an independent body, the than by broadcasting it. Copyright Tribunal, to receive applications for review of arrange- The exclusive right for the copyright owner of a published ments adopted, or proposed to be adopted, by a collecting society edition of a literary, dramatic, musical or artistic work (or two or for distributing amounts it collects in a period, but the Copyright more of such works), is to make a facsimile copy of the edition. Act does not specify the grounds on which such challenges may be made. The Tribunal may make an order confirming, varying or substituting the arrangement. 4.2 Are there any ancillary rights related to copyright, Where a society refuses to grant a licence to a person, that such as moral rights, and, if so, what do they protect, person may apply to the Tribunal for a licence. and can they be waived or assigned? The Tribunal is required to have regard to the guidelines made by the ACCC in proceedings concerning licences, if requested by Moral rights exist as personal rights conferred on the author of a a party, and the ACCC may also seek to become a party to such work, or the performer in a live or recorded performance. proceedings. Moral rights, in relation to an author or performer, are: (a) a right of attribution (i.e. the right to be identified as the 42 Owners’ Rights author of the work or performer of the performance); (b) a right against false attribution (i.e. the right of a person to 4.1 What acts involving a copyright work are capable of not have another person’s name falsely applied in relation being restricted by the rights holder? to a work or performance); or (c) a right of integrity (i.e. the right to not have the work or performance subjected to derogatory treatment). Each type of subject matter includes certain exclusive rights Moral rights are personal rights of the author or performer reserved to the copyright owner. The following table shows and cannot be waived or assigned, but the author or performer certain acts a copyright owner has the exclusive right to do, or may give consent to certain acts that may otherwise breach their authorise others to do. moral rights. Moral rights also devolve by will.

Work Reproduce, Publish, Perform, Adapt 4.3 Are there circumstances in which a copyright Communicate owner is unable to restrain subsequent dealings in works Literary Y Y which have been put on the market with his consent? Dramatic Y Y Musical Y Y Certain acts do not constitute infringement of copyright in works, including copying short extracts from works and Artistic Y N intended for use by places of education, importing and selling or distributing certain books and computer programs and For literary, dramatic and musical works that are themselves importing non-infringing copies of a sound recording. an adaptation of the first-mentioned work, copyright owners can also reproduce, publish, perform and communicate those adaptations. 52 Copyright Enforcement For literary works (other than a computer program) or a musical or dramatic work, copyright owners have the exclusive 5.1 Are there any statutory enforcement agencies and, right to enter into a commercial rental arrangement in respect of if so, are they used by rights holders as an alternative to the work reproduced in a sound recording, and in the case of a civil actions? computer program, can enter into a commercial rental arrangement in respect of the program. No, there aren’t any statutory enforcement agencies. The following exclusive rights are granted for subject matter other than works. 5.2 Other than the copyright owner, can anyone else Sound recording – the exclusive right to: bring a claim for infringement of the copyright in a work? (a) make a copy of the sound recording; (b) cause the recording to be heard in public; Except as against the owner, an exclusive licensee has the same (c) communicate the recording to the public; and rights of action as it would have, and is entitled to the same (d) enter into a commercial rental arrangement in respect of remedies as it would be entitled to, if the licence had been an the recording. assignment.

5.3 Can an action be brought against ‘secondary’ Copyright matters are typically heard in the Federal Court of infringers as well as primary infringers and, if so, Australia or the Federal Circuit Court of Australia (or certain on what basis can someone be liable for secondary State or Territory courts exercising federal law jurisdiction). infringement?

5.6 On what basis are damages or an account of profits The Copyright Act provides liability for the authorisation of calculated? copyright infringement by a person, and requires the following matters to be taken into account in determining such liability: (a) the extent of the person’s power to prevent the act The Copyright Act provides that a Court may award a successful concerned being carried out; plaintiff either damages or an account of profits, unless it is (b) the nature of any relationship existing between the person established that an infringement was committed but at the time and the person who carried out the act concerned; and the defendant was not aware and did not have any reasonable (c) whether the person took any other reasonable steps to grounds for suspecting, that the act of infringement was an prevent or avoid the act being carried out, including infringement of the copyright. In this case, the plaintiff will not whether the person complied with any relevant industry be entitled to damages, but is entitled to an account of profits. codes of practice. An account of profits may be awarded in copyright proceedings as a means of accessing the profit obtained from the infringement. An account of profits is calculated by reference 5.4 Are there any general or specific exceptions which can be relied upon as a defence to a claim of to the profits made by the infringer, generally by the sale price infringement? minus the cost of manufacturing and delivering each infringing item. Determining the amount to be awarded to an applicant is complex, and courts may apportion the profits, or award the There are certain specific defences, namely fair dealing for the entirety of the profits obtained, depending on the circumstances. purpose of: Damages on the other hand are calculated to compensate (a) criticism or review; (b) parody or satire; a plaintiff for its loss suffered by the infringement, typically (c) reporting news; or designed to reinstate the plaintiff back to the position they were (d) research or study. in before the infringing act had taken place. The Court looks Another exception to copyright infringement may apply at a variety of methods, such as what would have been a reason- where the infringer can prove that consent has been granted by able licence fee had the infringer sought a licence from the plain- the copyright owner by way of implied licence. Such licence may tiff, the value of the copyright and any reduction in value due to be implied by law, and be granted in order to give business effi- the infringement, as well as any loss of sales or reputation due cacy to a transaction. to the infringement. The following do not infringe copyright in any copyright The Copyright Act allows the Court, in assessing damages material: for the infringement, to consider a number of additional factors (a) certain use by or for persons with a disability; when determining the amount to award, including: (b) certain use for the purposes of libraries, archives and key (a) the flagrancy of the infringement; cultural institutions; and (b) the need to deter similar infringements of copyright; (c) certain use by educational institutions. (c) the conduct of the defendant after the infringing Copyright The Copyright Act provides that a person (including a carrier Act, or after the defendant was informed that the defendant or carriage service provider, for example, an ISP) who provides had allegedly infringed the plaintiff’s copyright; facilities for making, or facilitating the making of, a communi- (d) whether the infringement involved the conversion of a cation is not taken to have authorised any infringement of copy- work or other subject matter from hardcopy or analogue right in a work merely because another person uses those facil- form into digital; ities to carry out an act that is included in the copyright. The (e) any benefits shown to have accrued to the defendant by Copyright Act also provides certain limitations on the remedies reason of the infringement; and available against carriage service providers found to be involved (f) all other relevant matters. in copyright infringement that relates to the carrying out of certain online activities. The Copyright Act also provides that certain other use of 5.7 What are the typical costs of infringement copyright material does not infringe copyright, including use of proceedings and how long do they take? product information approved in respect of medicines, reproductions incidentally and automatically made in running a computer The costs involved in infringement proceedings depend largely program and incidental filming or televising of artistic works. on the complexity of the case, the nature of the parties (i.e. an individual or corporation, and the size of the corporation and 5.5 Are interim or permanent injunctions available? the type of activities it undertakes), and the remedies being sought. Costs also include the type of representation used by the plaintiff (e.g. barrister and/or solicitors) and the law firm The Copyright Act permits a court to grant, amongst other of choice. Therefore, case costs can range from thousands to things, an injunction, subject to such terms, if any, as the Court millions of dollars. thinks fit. A copyright owner may also apply for an injunction In terms of timing, again, this depends largely on the complexity requiring a carriage service provider or search engine provider of the case, the nature of the parties and type of infringement to take such steps as the Court considers reasonable to disable alleged (including the need for and complexity of expert evidence). access to an online location outside Australia that infringes or Therefore, cases can take days, to months, to years, in order to facilitates an infringement, and has the primary purpose or the be resolved. Urgent interlocutory and also ex parte proceedings primary effect of infringing or facilitating an infringement of are available where the circumstances dictate. Copyright cases, copyright, or, in the case of a search engine provider, that refers regardless of their complexity or number of parties, are eligible to users to the online location.

be referred to mediation. The litigation process involves various The Copyright Act also includes offences related to the unau- pre-trial procedures (pleadings, directions, discovery, etc.) which thorised access to encoded broadcasts, and the making and usually take several months. Hearings tend to take from a day or possession of unauthorised decoders. two through to weeks/months for complex cases, and most judg- A person also commits an offence under the Copyright Act ments are reserved and delivered several months after trial. if the person who is responsible for administering a library or archives fails to keep declarations relating to copying in the library or archives under the Copyright Act. A person also commits an 5.8 Is there a right of appeal from a first instance offence if the person disposes of or destroys those declarations. judgment and, if so, what are the grounds on which an The Copyright Act also contains offences related to the unau- appeal may be brought? thorised recording, selling, copying and distributing of unauthorised recordings of performances. An appeal of a decision of a single judge of the Federal Court of Australia can be made to the Full Court (comprising three or more judges). An appeal of certain decisions of the Federal 6.2 What is the threshold for criminal liability and what are the potential sanctions? Circuit Court of Australia can be made to a single judge of the Federal Court of Australia or if a judge considers it appropriate, to the Full Court of the Federal Court. Also, an appeal may be made The threshold for criminal liability depends on the type of to the Federal Court of Australia from certain decisions made by a offence, being indictable, summary, or strict liability offences. Court of a State or Territory exercising federal jurisdiction. The Copyright Act states that Chapter 2 of the Criminal Code In order for an appeal to succeed, a party must convince the (Code) applies to all offences against the Copyright Act. The appellate court that the Judge in the original case made an error Code that sets out the general principles of criminal responsi- of law, and that the error was of such significance that the deci- bility and states that an offence consists of “physical” elements sion should be overturned. Such errors include: and “fault” elements. A “physical” element of an offence could be conduct, a result (a) applied an incorrect principle of law; or of conduct, or a circumstance in which conduct, or a result of (b) made a finding of fact on an important issue that could not conduct, occurs. A “fault” element may be intention, knowl- be supported by the evidence. edge, recklessness, or negligence. Appeals may also be made to the High Court of Australia In establishing a person’s guilt in respect of offences, the against decisions of the Supreme Courts of the States and following must be proved: Territories and from the Federal Court of Australia but special (a) the existence of such physical elements as are, under the leave must be sought and granted. In addition to the grounds law creating the offence, relevant to establishing guilt; and above, the High Court usually requires the matter to have an (b) in respect of each such physical element for which a fault issue of significance. element is required, one of the fault elements for the physical element. 5.9 What is the period in which an action must be Section 4G of the Crimes Act 1914 provides that indictable commenced? offences are offences punishable by imprisonment exceeding 12 months. For these offences, the highest “fault” threshold is applied. The Copyright Act provides that an action or proceeding shall For summary offences, being those that are punishable by 12 not be brought for an infringement of copyright, or in respect of months imprisonment or less, or by a fine only, certain fault the conversion or detention of an infringing copy, or of a device elements are generally applied. (including circumvention device) used or intended to be used for For strict liability offences, the Code states that there are no making infringing copies, after the expiration of six years from “fault” elements for any of the physical elements of the offence, the time when the infringement took place or the infringing and the defence of mistake of fact is unavailable. copy or device was made, as the case may be. When a copyright owner or exclusive licensee threatens a 72 Current Developments person with an action or proceeding for infringement of copyright, it is important to consider the strength of the claim and whether the threat could allow the person aggrieved to bring 7.1 Have there been, or are there anticipated, any significant legislative changes or case law a claim for injunctive relief and damages on the ground that developments? the threat is unjustifiable. The owner or licensee will need to satisfy the Court that the acts in respect of which the action or proceeding was threatened constituted, or, if done, would Online marketplaces constitute, an infringement of copyright. An online marketplace has twice been found to have infringed a third party’s IP. Redbubble Limited operates a web-based busi- 62 Criminal Offences ness which enables an artist to upload images to Redbubble’s website and select goods to which the image can be applied. Consumers can then order goods through the website, but under 6.1 Are there any criminal offences relating to terms that sought to distance Redbubble from actively applying copyright infringement? the image to the goods. Separate Federal Court judges found Redbubble liable for There are multiple offences related to copyright infringement. copyright infringement in actions brought by Pokémon and The Copyright Act sets out multiple indictable, summary Hells Angels respectively, in respect of artwork uploaded to and strict liability offences, including making infringing copies Redbubble’s website. In the particular facts of each instance, commercially, exhibiting infringing copies in public or importing Redbubble was liable for only nominal damages and neither them publicly, causing work infringing copyright to be performed case “resulted in material financial or operational impact on publicly, and the making or possessing of devices for making Redbubble”. Nevertheless, the decisions are precedents for infringing copies. those operating online marketplaces of a similar nature.

News media bargaining code 7.2 Are there any particularly noteworthy issues around On 31 July 2020, following the ACCC’s unsuccessful attempts to the application and enforcement of copyright in relation develop voluntary codes of conduct with Google and Facebook to digital content (for example, when a work is deemed and news media businesses, the ACCC released a draft of a to be made available to the public online, hyperlinking, mandatory code under which certain Australian media will be etc.)? able to bargain with Google and Facebook to quickly secure fair payment for news content, including through a binding “final Not to our knowledge. offer” arbitration process. If a deal is not reached through a formal three-month negotiation and mediation process, an 7.3 Have there been any decisions or changes of law independent arbitrator would choose within 45 business days regarding the role of copyright in relation to artificial which of the two parties’ final offer is the most reasonable. intelligence systems, including the use of copyright Groups of media businesses (e.g. regional and community mast- in those systems and/or any work generated by those heads) would also be allowed to collectively negotiate with the systems? platforms. While the draft code would initially apply only to Google and Not to our knowledge. We also note that the Copyright Act Facebook, other digital platforms may be added if they attain a states that in order for copyright to subsist in a work, the author bargaining power imbalance with Australian news media busi- must be a “qualified person” at the time when the work was nesses in the future. made. Artificial intelligence systems do not fall within either The code would also set down minimum standards to govern element of “qualified person”: non-payment related issues, being standards that digital plat- (a) an Australian citizen or a person resident in Australia; or forms must meet in their dealings with news media businesses, (b) a body corporate incorporated under a law of the including being required to: Commonwealth of a State. ■ give news media businesses 28 days’ notice of algorithm It is also generally considered that the criterion of “origi- changes likely to materially affect referral traffic to news, nality” requires the involvement of independent human intellec- algorithm changes designed to affect ranking of news tual effort, and this element is implicit in the duration of copy- behind paywalls, and substantial changes to the display right being defined by reference to the lifetime of the author. and presentation of news, and advertising directly associ- Legislative changes would be required to address this issue to ated with news; prevent perpetual copyright protection. ■ give news media businesses clear information about the Therefore, it is unlikely that the Copyright Act would operate data they collect through users’ interactions with news on to recognise copyright protection in works generated by AI. digital platforms; Copyright may, however, exist in the underlying code, and works ■ publish proposals for how they would recognise original generated by AI systems, could also be protected under contrac- news content on their services; and tual provisions, or confidentiality. ■ provide news media businesses with flexible user comment moderation tools, including an ability to “turn off” comments on individual stories they post to digital platforms. Acknowledgment The minimum standards would also allow news media busi- The Authors would like to acknowledge the assistance of their nesses to prevent their news content being included on any indi- colleague Jesse Gordes in preparing the first draft of this chapter. vidual digital platform service. Media businesses would be eligible under the draft code if the online news content they produce investigates and explains: ■ issues of public significance for Australians; ■ issues that engage Australians in public debate and inform democratic decision-making; or ■ issues relating to community and local events. In addition, they must: ■ adhere to minimum levels of professional editorial standards; ■ maintain a suitable degree of editorial independence; ■ operate in Australia for the main purpose of serving Australian audiences; and ■ generate revenue of more than $150,000 per year. The code is not intended to capture any non-news media content, such as drama, reality television, entertainment content or sports broadcasting. The ACCC has invited all interested parties to provide their views on the draft code by 5pm on 28 August 2020, ahead of the code being finalised shortly after.

Jeff Bergmann, during his 25-year career, has covered all aspects of IP commercialisation for clients from multinational and large corporations through to investee companies of venture capital clients, and individual clients in the academic and not-for-profit sectors. In 2007, he established Solubility to specialise in assisting creative clients in IP commercialisation law. He is one of only six Certified Licensing Professionals in Australia and one of only four IP Transactions Stars in Australia (Managing IP). He has also been listed in the IAM Patent 1000/Licensing 250 since 2010, IAM Strategy 300 since 2016, -17, -18, -19 and Doyles Guide of Leading Non-Contentious Intellectual Property Lawyers in Victoria in 2019 and 2020. In addition to his legal qualifications, Jeff has a strong technical base having completed a Bachelor of Science, majoring in Pharmacology.

Solubility Tel +61 437 667 288 Level 1, 4 John St, South Melbourne Email [email protected] Vic 3205 URL www.solubility.com.au Australia

Louise Brunero joined Solubility in October 2018 with over 10 years of experience as an IP specialist assisting clients in contentious and non-contentious IP matters. Her varied practice has seen her work with a range of clients from boutique primary producers and local start-ups through to big pharma and multinational biosciences clients and government departments. Working in top-tier and large private practice, and most recently as a sole practitioner, Louise has extensive experience in IP litigation (including infringement and validity challenges for patents, trademarks and copyright), IP commercialisation (including advising, drafting and reviewing distribution, supply and licensing agreements) and drafting and negotiating agreements on ownership and exploitation of IP rights. She also has an excellent understanding of the Federal Court jurisdiction and court process having worked as a litigator for 7+ years and having served as an Associate at the Federal Court of Australia. In addition to her legal qualifications, Louise has a strong technical base having completed a Bachelor of Science with Honours in Chemistry.

Solubility Tel +61 429 943 803 Level 1, 4 John St, South Melbourne Email [email protected] Vic 3205 URL www.solubility.com.au Australia

Solubility is a team of highly skilled professionals with a long history in the specialised field of IP commercialisation law, commercial law and R&D for scientific and creative businesses. We provide a specialised IP commercialisation law service for creative businesses seeking personalised, responsive and expert assistance. As well as being lawyers, everyone at Solubility has qualifications in science. As award-winning leaders and certified experts, we have become the go-to team for IP and commercialisation law solutions from a wide group of Australian and global companies requiring this specialised skill. www.solubility.com.au

Brazil Brazil

SiqueiraCastro Advogados Eduardo Ribeiro Augusto

12 Copyright Subsistence systems, methods, projects or mathematical projects or concepts as such; diagrams, plans or rules for performing mental acts, playing games or conducting business; blank forms intended 1.1 What are the requirements for copyright to subsist for completion with all kinds of scientific or other information, in a work? and the instruction appearing thereon; the texts of treaties or conventions, laws, decrees, regulations, judicial decisions and The Brazilian Law n.º 9.610/98 regulates the rights of the other official enactments; information in common use such as authors and its neighbouring rights in Brazil. According to this that contained in calendars, diaries, registers or legends; names law, the creations of the mind are intellectual protected works, and titles in isolation; and the industrial or commercial exploita- whatever their mode of expression or the medium, tangible or tion of the ideas embodied in works. intangible, known or susceptible of invention in the future. In practical terms, these works should be new and original. 1.5 Is there a system for registration of copyright and, if so, what is the effect of registration? 1.2 Does your jurisdiction operate an open or closed list of works that can qualify for copyright protection? Yes, there is a system for registration of copyright in Brazil and the author of the work has the option to register it. However, Brazil operates an open list of works that can qualify for the it is not mandatory to register in order to enforce the copyright right of the author protection. against a third party. The protection of copyright in Brazil exists independently of the register. 1.3 In what works can copyright subsist? 1.6 What is the duration of copyright protection? Does Copyright can subsist in the following works: the texts of this vary depending on the type of work? literary, artistic or scientific works; lectures, addresses, sermons and other works of the same kind; dramatic and dramatico-mu- The duration of copyright protection is 70 years counted from 1st sical works; choreographic and mined works whose stage perfor- January of the year following the death of the copyright owner. mance is set down in writing or otherwise; musical composi- The only exception is audiovisual works with a term of protec- tions with or without words; audiovisual works, with or without tion of 70 years counted from 1st January of the year following accompanying sounds, including cinematographic works; photo- the year of launch. graphic works and other works produced by a process analogous to photography; drawings, paintings, engravings, sculptures, 1.7 Is there any overlap between copyright and other lithographs and works of kinetic art; illustrations, maps and intellectual property rights such as design rights and other works of the same kind; drafts, mock-ups and three-di- database rights? mensional works relating to geography, engineering, topog- raphy, architecture, park and garden planning, stage scenery Yes, some works are protected by copyright and design rights. and science; adaptations, translations and other transforma- For instance, a chair or a woman’s shoe. There is also overlap tions of original works, presented as a new intellectual creation; between copyright and figurative trademarks. computer programs; and collections or compilations, anthologies, encyclopaedias, dictionaries, databases and other works which, by virtue of the selection, coordination or arrangement 1.8 Are there any restrictions on the protection of the subject matter, constitute intellectual creations. for copyright works which are made by an industrial process?

1.4 Are there any works which are excluded from copyright protection? Yes, there are restrictions, since Brazilian law considers that only a natural person can be an author of a work protectable by copyright. Yes, the following works are excluded from copyright protection, according to Brazilian law: ideas, normative procedures,

22 Ownership 3.4 Which types of copyright work have collective licensing bodies (please name the relevant bodies)?

2.1 Who is the first owner of copyright in each of the works protected (other than where questions 2.2 or 2.3 Music and audiovisual works have collective licensing bodies. apply)? The ECAD (in English, the Central Office for Collection and Distribution of Royalties) is the licensing body for music and the The author and the owner of moral rights of copyright will DBCA (in English, the General Association of Brazilian Directors always be a natural person. A company can be the owner of the and Authors) is the licensing body for audiovisual works. right to explore a work protectable by copyright. 3.5 Where there are collective licensing bodies, how are they regulated? 2.2 Where a work is commissioned, how is ownership of the copyright determined between the author and the commissioner? The collective licensing bodies are regulated by the Brazilian Copyright Law, who exercise public activities and observe its The commissioner could be the owner of the right to explore social function. the work, but the author will always be the owner of the moral rights upon the work. 3.6 On what grounds can licence terms offered by a collective licensing body be challenged? 2.3 Where a work is created by an employee, how is ownership of the copyright determined between the The licence terms offered by a collective licensing body can be employee and the employer? challenged when the owner of the licensed work is not associated with the licensing body. The Brazilian Law n.º 9.610/98 does not bring any rule about this situation, so it must be analysed case by case and the employment 42 Owners’ Rights contract should regulate if the employee or the employer should be the owner of the right to explore the work. Furthermore, as 4.1 What acts involving a copyright work are capable of already explained above (question 2.1), the owner of moral rights being restricted by the rights holder? will always be a natural person, as will the employee. On the grounds of Brazilian law, the rights holder can restrict 2.4 Is there a concept of joint ownership and, if so, any kind of unauthorised use of its copyright work. what rules apply to dealings with a jointly owned work?

4.2 Are there any ancillary rights related to copyright, Yes, there is a concept of joint ownership and the co-author of such as moral rights, and, if so, what do they protect, the work has all the rights of the author, except for uses that may and can they be waived or assigned? daamage the combined exploration of the work. Yes, there are moral rights according to Brazilian law. The 32 Exploitation moral rights establish, for instance, that in any kind of utilisation of the work, the named author should be informed. The 3.1 Are there any formalities which apply to the moral rights cannot be waived or assigned. transfer/assignment of ownership?

4.3 Are there circumstances in which a copyright The transfer of ownership must always be in writing and it is owner is unable to restrain subsequent dealings in works presumed onerous. which have been put on the market with his consent?

3.2 Are there any formalities required for a copyright A copyright owner is unable to restrain subsequent dealings in licence? works which have been put on the market with his consent.

A copyright licence should always be in writing. 52 Copyright Enforcement

5.1 Are there any statutory enforcement agencies and, 3.3 Are there any laws which limit the licence terms if so, are they used by rights holders as an alternative to parties may agree to (other than as addressed in civil actions? questions 3.4 to 3.6)?

No, there are no statutory enforcement agencies used by rights The Brazilian Law disposes that if the licence contract does not holders as an alternative to civil actions. specify the type of utilisation, the contract should be interpreted restrictively, and the utilisation should be limited to an essential one in view of the purpose of the contract. 5.2 Other than the copyright owner, can anyone else bring a claim for infringement of the copyright in a work?

If duly authorised by the contract, the licensee can bring a claim for infringement of the copyright work.

5.3 Can an action be brought against ‘secondary’ 5.9 What is the period in which an action must be infringers as well as primary infringers and, if so, commenced? on what basis can someone be liable for secondary infringement? An action must be commenced within a three-year term after the infringement situation. In Brazil, an action cannot be brought against the secondary infringers. However, anyone that commercialises, exposes to 62 Criminal Offences sale, acquires, distributes, maintains in a storehouse or utilises a counterfeited work will be considered a primary infringer. 6.1 Are there any criminal offences relating to copyright infringement? 5.4 Are there any general or specific exceptions which can be relied upon as a defence to a claim of infringement? Yes, any kind of copyright infringement is considered a criminal offence by Brazilian law.

Yes, there are some exceptions that can be relied upon as a defence to a claim of infringement and they are listed in arti- 6.2 What is the threshold for criminal liability and what cles 46, 47 and 48, of the Brazilian Copyright Law. For instance, are the potential sanctions? any reproduction of small parts of the work to be used by the copyist and without commercial purposes will not be considered The threshold for criminal liability is four years of reclusion, an infringement situation. plus financial sanction.

5.5 Are interim or permanent injunctions available? 72 Current Developments

Yes, there are interim and permanent injunctions available in 7.1 Have there been, or are there anticipated, any significant legislative changes or case law order to restrict any kind of unauthorised use of work protected developments? by copyright.

The bill n.º 3992/2020 suggests a modification of the Brazilian 5.6 On what basis are damages or an account of profits Copyright Law to authorise the use of works protected by copy- calculated? right by hotel rooms without any kind of compensation. The owners of copyrights, such as Brazilian musicians, are currently The damages are calculated by the criteria of article 103, of the rallying to question this bill. Brazilian Copyright Law. This article establishes that when it is not possible to know the number of counterfeit products that 7.2 Are there any particularly noteworthy issues around were commercialised, the defendant should pay the amount of the application and enforcement of copyright in relation money corresponding to 3,000 products beyond the number of to digital content (for example, when a work is deemed products that were apprehended. to be made available to the public online, hyperlinking, etc.)? 5.7 What are the typical costs of infringement proceedings and how long do they take? The Brazilian Copyright Law already restricts any kind of unauthorised use or sharing, by any means or proceedings, of works The court expenses are the typical costs of infringement protected by copyright. proceedings, and they take between two and seven years on average. 7.3 Have there been any decisions or changes of law regarding the role of copyright in relation to artificial intelligence systems, including the use of copyright 5.8 Is there a right of appeal from a first instance in those systems and/or any work generated by those judgment and, if so, what are the grounds on which an systems? appeal may be brought?

No, there are no changes or decisions with regard to the role of Yes, there is a right of appeal from a first instance judgment, copyright in relation to artificial intelligence systems. and any undue interpretation or application of the law will be grounds on which an appeal may be brought.

Eduardo Ribeiro Augusto has over 15 years of work experience in the intellectual property area, with a focus on trademark registration, anti-piracy measures and border measures. His work on Course Conclusion Work in the Graduate Course in Intellectual Property of the Getúlio Vargas Foundation (FGV/SP) is recommended for publication. He is a member of the Brazilian Bar Association and a member of the Lawyers Association of São Paulo. Eduardo is also a member of the Brazilian Intellectual Property Association (ABPI).

SiqueiraCastro Advogados Tel: +55 11 3704 9840 Rua Tabapuã 81, 1st to 6th floors Email: [email protected] 04533-010, São Paulo/SP URL: www.siqueiracastro.com.br Brazil

During our 71 years of history, we have played a main role in the evolution companies in the scenario of a highly globalised economy. It also makes of the legal sector in Brazil. Today, we are one of the largest firms in Latin our firm a safe and reliable access door for foreign companies that intend America, with a team of more than 2,500 members in 18 Brazilian cities. to invest in Brazil. Always focused on innovation, we have expanded our services to all areas A strong culture of collaboration and partnership guarantees the integra- of business law and evolved to offer our clients more than legal work. We tion of our different offices and generates efficiency and proximity, as well render strategic consultation with legal intelligence. as flexibility for the relationships with our clients. This intelligence is our greatest asset. Providing the full range of legal The impact of SiqueiraCastro in the legal and business worlds, besides services is just the start for us. It is through deep and multidisciplinary being known by clients and by the market in general, is regularly recognised knowledge – inside and outside the legal universe – that we are able to by specialised publications, in Brazil and abroad. Year after year, we are aggregate expertise to all our business solutions. We are more than full repeatedly awarded in every different areas of business law. service. We are a full solution firm. We are more than lawyers. We are www.siqueiracastro.com.br business advisors with legal training. From the solution of highly complex problems to managing routine daily challenges, we advise our clients regarding the strategic conduction of business, the maximisation of opportunities and the anticipation/mitiga- tion of risks. All this is achieved through continuous investment in technology, people and processes. International alliances and partnerships give us insight into global trends and allow us to be part of the growth and affirmation of our country and our

Canada Canada

Catherine Lovrics

Marks & Clerk Law LLP Lesley Gallivan

12 Copyright Subsistence 1.4 Are there any works which are excluded from copyright protection?

1.1 What are the requirements for copyright to subsist in a work? While copyright can subsist in designs applied to a useful article, or artistic works from which the design is derived, once the useful article is mass produced (quantity of 50 or more), copy- Copyright exists automatically in every original literary, right may no longer be enforceable with limited exceptions. dramatic, musical and artistic work, published or unpublished, The exceptions include graphics applied to the face of articles, once the work is in a fixed form. The author must be a citizen trademarks, representations of people or characters, textiles and or resident of Canada or any other treaty country (i.e. Berne buildings. See question 1.7 for details. Convention, WCT or UCC country or WTO member) on the date of making the work. A work must be original, meaning it was not copied from 1.5 Is there a system for registration of copyright and, if so, what is the effect of registration? another work and the author exercised skill and judgment in creating it. The skill and judgment must not be so trivial that it could be characterised as a mechanical exercise (e.g. changing It is possible, but not mandatory, to register copyrights. Benefits the font to produce another work). of registration are: (a) the registration certificate is considered prima facie evidence of copyright subsistence in the work and copyright ownership; and (b) if the work is registered, an 1.2 Does your jurisdiction operate an open or closed infringer cannot rely on a defence of “innocent infringement” list of works that can qualify for copyright protection? which, if successful, limits an owner’s remedy to an injunction.

Copyright protection extends to original works that are literary, 1.6 What is the duration of copyright protection? Does dramatic, musical and artistic, and compilations being the selec- this vary depending on the type of work? tion or arrangement of literary, dramatic, musical or artistic works, as well as databases and other selections or arrangements of data. Specific works included in these broad categories are The general term of copyright in Canada is the life of the last non-exhaustive, and include every original production in the living author plus 50 years following the end of the calendar year literary, scientific or artistic domain, whatever the mode or form in which the author dies. Canada has committed to extend the general term of copyright to life of the author plus 70 years, and of expression. this legal change is yet to be implemented into Canadian law. Neighbouring copyrights extend to performer’s perfor- There are special rules for the term for anonymous/pseudon- mances, communication signals and sound recordings. ymous works, as well as posthumous works. Copyright in works owned by the Crown subsists for 50 years 1.3 In what works can copyright subsist? following the end of the calendar year in which that work was first published. Literary works include everything from books to computer Copyright in a performer’s performance subsists for 50 years from the end of the calendar year in which the performance software code, packaging and advertising text. Artistic works occurs unless, during term, the performance is fixed on a sound include paintings and etchings but also logos, maps, charts, recording, in which case, copyright subsists for 50 years from the photographs and architectural and technical drawings. Musical end of the calendar year in which the fixation occurs, or, if during works include any work of music or musical composition, with or the term, that sound recording is published, the copyright will without lyrics. Dramatic works include cinematographic works, subsist until the earlier of the end of the calendar year in which as well as plays, choreographic works and mimes, provided the the sound recording was published plus 70 years or 100 years scenic arrangement or acting form is fixed in writing or other- after the end of the calendar year in which the fixation occurred. wise. Compilations include the selection or arrangements of Copyright in a sound recording subsists for 50 years from the original works, as well as databases or other original selections end of the calendar year in which it was recorded or, if during that or arrangements of data. term, the sound recording is published, the copyright subsists until the earlier of 70 years from the end of the calendar year in which first publication occurred or the end of 100 years from the end of the year in which the sound recording was made.

1.7 Is there any overlap between copyright and other 2.3 Where a work is created by an employee, how is intellectual property rights such as design rights and ownership of the copyright determined between the database rights? employee and the employer?

There is no separate (or sui generis) statutory protection for data- Copyright in works created by employees (i.e. those working bases in Canada. Original compilations of data, resulting from under a “contract of service”), within the course of their employ- the selection or arrangement of data, have copyright protection. ment, will automatically be owned by the employer unless there The compilation cannot result from a mechanical exercise; for is an agreement to the contrary. There is no statutory definition example, the database may not be considered original if the data of “contract of service” and the Courts have looked at many entry process results in the “almost instantaneous” appearance common law factors in defining this term, primarily whether in the database. the employer has direct control over the employee’s work. Also, Under the Act, where a design is applied to a useful article to be in the course of the employee’s employment, generally the (i.e. an article that has some function other than merely serving work must fall within the scope of the employee’s duties. Despite as a substrate for artistic or literary matter) and that article is this ownership structure, employees that author articles or other mass produced (50 or more copies), the copyright in that design contributions to newspapers, magazines and similar periodicals on the article becomes unenforceable and the only protection have a right to restrain publication of their work other than as for the article will be through registration under the Industrial part of the newspaper, magazine or periodical unless there is an Design Act. As noted, there are exceptions to this rule. The agreement to the contrary. copyright will remain enforceable in (a) graphic or photographic representations applied to the face of an article, (b) a trademark 2.4 Is there a concept of joint ownership and, if so, or label, (c) woven or knitted materials or ones suitable for piece what rules apply to dealings with a jointly owned work? goods, surface coverings or making clothing, (d) architectural works/models of a building, (e) a representation of a real or fictitious being, event or place applied to the article, or (f) articles The concept of joint authorship/ownership exists under the Act. sold as a set, where less than 50 sets are made. A work of joint authorship is created where there is a collaboration of two or more authors in which the contribution of one author is not distinct from that of the other authors. 1.8 Are there any restrictions on the protection While not completely settled at Canadian law, it is gener- for copyright works which are made by an industrial ally accepted that joint authors own the work in equal shares as process? tenants in common as opposed to joint tenants. Therefore, generally speaking, one author cannot exclusively license or assign the See question 1.7. copyright without dealing with the other joint authors/owners. In addition, it is not a copyright infringement to copy, reproduce, reverse engineer, or make drawings of totally functional 32 Exploitation articles where all the design features are dictated solely by the article’s utilitarian features (e.g. a car valve). 3.1 Are there any formalities which apply to the transfer/assignment of ownership? 22 Ownership Any assignment must be in writing and signed by the copyright 2.1 Who is the first owner of copyright in each of the owner or their duly authorised agent. works protected (other than where questions 2.2 or 2.3 apply)? 3.2 Are there any formalities required for a copyright Generally speaking, the first owner of the copyright is the licence? author. The author is not defined in the Act but will generally be considered the individual(s) who actually created the work A licence granting a proprietary interest in a copyright (e.g. an through an exercise of skill and judgment. exclusive licence) must be in writing and signed by the owner of There are exceptions, most notably, works made in the course the copyright or their duly authorised agent. If the licence does of employment by employees, as discussed in question 2.3 below. not transfer a proprietary interest but merely permits actions by Also, the owner of copyright in a sound recording is its “maker”, the licensee which would normally be infringements, the agree- i.e. the person by whom the arrangements necessary for the ment need not be in writing. making of the recording are undertaken. This is typically the record producer or record label. 3.3 Are there any laws which limit the licence terms Copyright in works created or published under the direction parties may agree to (other than as addressed in or control of the Crown is owned by the government. questions 3.4 to 3.6)? Broadcasters own the copyright in their communication signals. Copyright in works generally automatically reverts to an author’s 2.2 Where a work is commissioned, how is ownership estate 25 years after the author’s death, meaning an exclusive of the copyright determined between the author and the licence (and assignment) made by the author of a work will not commissioner? vest any rights 25 years following the author’s death, unless covered by the author’s will. Any agreement entered into by Unless there is a written assignment from the author to the the author related to disposition of the reversionary interest commissioning party, copyright in the commissioned work still is deemed void. There is an exception for collective works. automatically vests first in the author. Otherwise, there are no such laws under the Act; however, However, the commissioning party may have certain implied licence terms might be subject to restrictions under other laws, rights to reproduce and use the commissioned works. for example, competition laws.

th 3.4 Which types of copyright work have collective works created after June 7 , 1988, for purposes other than rent licensing bodies (please name the relevant bodies)? or sale; (i) rent out a computer program or a sound recording; (j) where the work is in a tangible object, sell or transfer ownership of the tangible object as long as that ownership has never previ- There are numerous organisations in Canada involved in the ously been transferred in or outside Canada with the copyright collective licensing of rights of copyright for specific types of owner’s authorisation; (k) make the work available online to the works. The major collective licensing bodies in Canada are: public; and (l) authorise any of these acts. Access Copyright, which represents writers and publishers for Performers have rights in their performances to: (a) first fix the copying of literary materials; the Society of Composers, them on a recording and make copies of the recording; (b) commu- Authors and Music Publishers (“SOCAN”) which administers nicate live performances by telecommunication; (c) perform them public performance and telecommunication rights in musical in public; (d) rent out recordings of the performances; (e) make works for composers and music publishers, and more recently such sound recordings available to the public through online reproduction rights as well; the Canadian Musical Reproduction on-demand services; (f) if the sound recording is fixed in a Rights Agency (“CMRRA”) which licenses reproduction tangible object, sell/transfer ownership of the tangible object as rights, including synchronisation rights, in musical works for long as that ownership has never previously been transferred in or music publishers; CONNECT Music Licensing, which licenses outside of Canada with the performer/copyright owner’s authori- the reproduction of sound recordings and the reproduction sation; and (g) authorise any of these activities. and broadcast of music videos on behalf of record compa- Makers of sound recordings have the right to: (a) first publish nies, producers and artists; the Re:Sound Music Licensing the sound recording; (b) reproduce it in any material form; (c) Company which collects royalties for performing artists and rent it out; and (d) authorise any of these acts. record companies concerning their performance rights; and the Broadcasters have the right in respect of their communication ACTRA Performing Rights Society (“ACTRA PRS”) which signals to: (a) record the signal; (b) make copies of that recording; collects royalties for recording artists. (c) authorise another broadcaster to retransmit the signal to the There are also several collectives in the Province of Québec, public simultaneously with its broadcast; (d) perform a televi- which administer similar rights in French language works. sion communication signal in a place open to the public if an entrance fee is paid; and (e) authorise any of these acts. In addition, it is prohibited under the Act (with some excep- 3.5 Where there are collective licensing bodies, how tions) to: (a) circumvent a technological protection measure are they regulated? (“TPM”); (b) offer, provide or market services that are primarily for the purpose of circumventing a TPM; or (c) provide or The requirements to become a collective licensing body are market any technology which is designed or produced primarily set out in the Act. They are regulated, generally speaking, by for the purpose of circumventing a TPM. It is further prohibited the Canadian Copyright Board (“the Board”), an administra- for a person to knowingly, and without proper consent, remove tive tribunal created under the Act. Some collective licensing or alter electronic rights management information (i.e. infor- bodies must submit proposed tariffs to the Board, in both offi- mation identifying the work, its author or other rightsholder) if cial languages, of all royalties to be collected. The Board, after they knew or ought to have known that its alteration or removal proper review and hearing from the parties, certifies the tariffs would conceal or facilitate infringement. It is further prohib- to be paid for a set period of time. The Board may change the ited for a person to knowingly sell, rent, distribute, or telecom- royalties or terms of any licence. municate to the public a work where such information has been Other collective licensing bodies may, but are not mandated altered or deleted in violation of this section. to, file their proposed tariffs with the Board for approval in the event that the licensing body and the users cannot privately 4.2 Are there any ancillary rights related to copyright, agree on terms. such as moral rights, and, if so, what do they protect, and can they be waived or assigned?

3.6 On what grounds can licence terms offered by a collective licensing body be challenged? Authors and performers have moral rights in their works and performances, respectively. The right to the integrity of the work/performance is infringed if the work or performance, As stated, the Board can vary any terms in a collecting body’s to the prejudice of the author’s or performer’s reputation is: proposed tariff as well as resolve disputes between collectives and (a) distorted, mutilated or otherwise modified; or (b) used in users when they cannot agree on licence terms. Decisions of the association with a product, service, cause or institution. They Board can be appealed to the Federal Court of Appeal (“FCA”). also have the right, where reasonable, to be associated/credited with the work/performance by name or by pseudonym or to 42 Owners’ Rights have their name removed from the work/performance. Moral rights exist as long as the associated copyright exists and can 4.1 What acts involving a copyright work are capable of be bequeathed to the author’s/performer’s heirs. Moral rights being restricted by the rights holder? cannot be assigned but may be waived. The same remedies are available for moral rights infringement as for copyright, namely, The Act gives copyright owners the exclusive right to: (a) produce damages, injunctions and delivery of infringing copies. or reproduce the work, in whole or substantial part, in any material form; (b) perform the work, in whole or substantial part, 4.3 Are there circumstances in which a copyright in public; (c) publish the work, in whole or substantial part; (d) owner is unable to restrain subsequent dealings in works translate the work; (e) convert one type of work into another, e.g. which have been put on the market with his consent? a novel into a play; (f) make a sound recording or a film out of a literary, dramatic or musical work; (g) communicate the work Generally speaking, once copies of a work have been sold or to the public by telecommunication; (h) publicly exhibit artistic otherwise distributed to the public, with the copyright owner’s

consent, that right of first publication is exhausted and the Even if the dealing is for a permitted purpose, it must also copies can thereafter be re-sold or re-distributed without further be fair. In determining this second issue, the Courts look at consent of the copyright owner. six factors: (a) the purpose of the use; (b) the nature of the However, the rights of copyright set out above remain. use (commercial v. non-commercial); (c) the scope of the use Therefore, no subsequent owner of a lawfully distributed copy (amount copied, how many copies made); (d) alternatives to the can exercise those rights without the copyright owner’s consent, use; (e) the nature of the work; and (f) the effect of the use on the e.g., make further copies, modify the copy, publicly perform or market for the copied work. telecommunicate the copy, or translate it. Educational institutions, libraries, archives, and museums are also granted a series of narrower exemptions from infringement for 52 Copyright Enforcement specific uses of works. Likewise, there are specific acts permitted by religious organisations and charities or fraternal organisations. There are also several infringement exceptions for individuals 5.1 Are there any statutory enforcement agencies and, making non-commercial and personal uses of works, including if so, are they used by rights holders as an alternative to for time-shifting purposes, transferring from one media to civil actions? another, creating online user-generated content which contains third-party works without any motive of gain and making addi- No, there are no such agencies. tional copies of computer programs for back-up purposes or to make the program compatible with another program. There are restrictions on some of these personal use exemptions, including 5.2 Other than the copyright owner, can anyone else bring a claim for infringement of the copyright in a work? not circumventing technological protection measures (“digital locks”) to make these permitted uses. Incidental, non-deliberate inclusion is deemed not to infringe. In addition to assignees, exclusive licensees may sue for copy- There are also infringement exceptions for certain activities, right infringement. such as photographing architectural works such as buildings Under certain circumstances, an “exclusive distributor” of and reading or reciting in public a reasonable extract from a a book, as defined under the Act, may prohibit the importa- published work. tion, sale, rental, distribution by way of trade, offer for sale or Finally, in appropriate cases, the equitable defences of laches rental or public exhibition of books which were printed with the and estoppel are also available against infringement claims. consent of the copyright owner in a foreign country. 5.5 Are interim or permanent injunctions available? 5.3 Can an action be brought against ‘secondary’ infringers as well as primary infringers and, if so, Interim, interlocutory and permanent injunctions are available. on what basis can someone be liable for secondary infringement? Canadian Courts have adopted a three-step test for granting interlocutory injunctions: (1) the applicant must show there is a serious question to be tried; (2) that there would be irreparable It is an infringement for any person to sell or rent, distribute to harm to the applicant’s interests if an injunction were not issued; such an extent as to affect prejudicially the copyright owner, by and (3) the Court has to determine, on a balance of conveni- way of trade distribute, offer of sale or rent, or exhibit in public, ence, which party would suffer the greater harm by ordering or possess or import into Canada or export from Canada for any of refusing the injunction. these purposes, copies of a work, sound recording, performer’s performance on a sound recording, or communication signal 5.6 On what basis are damages or an account of profits that the person knows or should have known would infringe calculated? copyright or would infringe copyright if made in Canada by the person who made it. The Supreme Court in CCH Canadian Ltd. v. Law Society of Under the Act, an infringer is liable to pay the damages the Upper Canada stated that there are three elements to secondary owner has suffered due to the infringement and the part of the infringement: (a) there must be a primary infringement; (b) infringer’s profits that were not taken into account when calcu- the secondary infringer should have known that he or she was lating damages. In appropriate cases of egregious behaviour by dealing with an infringing item; and (c) the secondary infringer an infringer, a Court may also award punitive damages. sold, distributed, or exposed for sale, the infringing items. Alternatively, a Plaintiff can elect to receive statutory damages at any time prior to final judgment. The Act sets statutory damages, with respect to all infringements of a commercial 5.4 Are there any general or specific exceptions nature, for each work in the proceedings, in a range of not less which can be relied upon as a defence to a claim of than CAD 500 and not more than CAD 20,000, at the discre- infringement? tion of the Court. Where the infringement is not commercial in nature, the range of statutory damages is reduced to not less There are numerous general and specific exceptions to infringe- than CAD 100 and not more than CAD 5,000 with respect to all ment under the Act. The broadest exceptions, recharacterised infringements involved in the proceedings for all works. by the Supreme Court of Canada (“SCC”) as “users rights”, not In certain equitable circumstances, the Act permits the Court defences, are the fair dealing provisions which permit persons to to further reduce the statutory damages awarded, per work, to make a fair use of copyright works for the purposes of research, below CAD 500 for commercial infringements. private study, education, parody or satire. Criticism, review and news reporting are also recognised as 5.7 What are the typical costs of infringement fair dealing purposes, provided the source, and if included in the proceedings and how long do they take? source, the author’s, maker’s or performer’s name, are credited. Prosecuting an infringement action from filing the claim to

trial typically takes a minimum of two years, often longer. The 72 Current Developments Courts will hold status reviews to move proceedings forward to either settlement or trial but, often, it still takes years to complete the various stages of litigation and a trial. There are strategies 7.1 Have there been, or are there anticipated, that can be implemented to move through the Court faster, and any significant legislative changes or case law developments? a copyright owner can choose to proceed by way of application (which is a paper-based procedure), which can be faster. Costs vary depending on how many motions or other inter- Canada has committed to extend the copyright term from life of locutory steps may arise in the litigation. Typically, the cost of the author(s) plus 50 years to life of the author(s) plus 70 years. taking an action to trial would be in the range of CAD 150,000 Further, on June 3rd, 2019, the Industry, Technology and to CAD 400,000. Most actions, however, settle before trial. Science Standing Committee (“INDU”) released its report on the statutory review of the Act (https://www.ourcommons.ca/ Content/Committee/421/INDU/Reports/RP10537003/indurp16/ 5.8 Is there a right of appeal from a first instance indurp16-e.pdf), setting out 36 policy recommendations. Earlier, judgment and, if so, what are the grounds on which an on May 15th, 2019, the Canadian Heritage Standing Committee appeal may be brought? released its report, Shifting Paradigms, setting out 22 policy recommendations. The reports were issued following the mandatory Any decision of the Federal Court can be appealed to the FCA, five-year review of the Act. The government looked at substan- pending leave from the Court. Appeals can be brought to chal- tive issues including: (a) creating a new exemption to permit lenge final decisions, judgments on a question of law or interloc- artificial intelligence (“AI”) machines greater access to big data utory injunctions. analytics; (b) broadening the fair dealing sections to accom- If a copyright action is brought in a Provincial Court, which in modate such new technology needs; (c) clarifying the intersec- some instances also has copyright jurisdiction, an appeal can be tion between fair dealing provisions and the prohibitions on brought to the relevant Provincial Appeal Court. the circumventing of technological protection devices; and (d) additional measures to address uses and misuses of the Internet 5.9 What is the period in which an action must be Service Provider (“ISP”) “notice and notice” regime. In 2018, commenced? the government also reviewed administrative issues concerning the Board, which is responsible for setting tariffs for specific An action must be commenced within three years of the time copyright collectives and mediating disputes between other when the Plaintiff knew or was reasonably expected to know copyright collectives and users, where private negotiations have that the infringement had taken place. However, every time failed. Goals for proposed amendments include decreasing another infringing copy is made, it is considered to be a new the time required for Board decisions to be issued, increasing infringement which starts the three-year limitation period Board transparency and allowing for public participation. The running again. Therefore, in cases of ongoing infringement government has yet to table proposed legislation. However, over several years, an action will not be statute-barred by the some of INDU’s recommended changes include that the Federal time limitation, although the owner may not be able to obtain Government: remedies for infringements occurring more than three years ■ Consider making copyright registration a requirement to before the action was commenced. enforce copyright in a work during the additional 20 years to be provided by the planned extension of the general term of copyright from the life of the author plus 50 years 62 Criminal Offences to life plus 70 years. ■ Provide a non-assignable right to terminate an assignment 6.1 Are there any criminal offences relating to of copyright 25 years after the date of assignment, subject copyright infringement? to (i) registration of the copyright, (ii) five years’ notice of intent to exercise the right, and (iii) exercising the right Under the Act, it is a criminal offence to knowingly: (a) make within five years after it becomes available. infringing copies of a work, or other copyright-protected subject ■ Amend the Act to provide that an exercise of the rever- matter, for sale or rental; (b) sell or rent such infringing copies; sionary right under section 14(1) may not take effect earlier (c) distribute such copies for the purposes of trade or to such an than 10 years after a notice of intent to exercise the right. extent as to prejudicially affect the copyright owner; (d) publicly ■ Consider implementing an artist’s resale right. exhibit such infringing copies by way of trade; and (e) import or ■ Update the rules governing first ownership and author- export or attempt to export such infringing copies into or out of ship of cinematographic works to better respond to Canada for sale or rental. different types of industries and productions, and maintain Canada’s competitiveness in a global market. ■ Amend section 29 of the Act to provide that the list of 6.2 What is the threshold for criminal liability and what are the potential sanctions? allowable fair dealing purposes is illustrative, as opposed to exhaustive. ■ Provide regulations to standardise notices of claimed For criminal liability, the infringer must know that his/her infringement under the “notice and notice” regime to be actions are infringing. in a prescribed, machine-readable format. If the infringer is convicted on summary conviction, he/she ■ Update the maximum and minimum statutory damages is liable to a fine of not more than CAD 25,000 and/or a prison awards provided under the Act, and provide a mechanism term of no more than six months. to periodically increase these amounts to reflect inflation. If convicted on indictment, he/she is liable to a fine of not Canadian Heritage’s recommendations included that the more than CAD 1,000,000 and/or a prison term of not more Federal Government: than five years.

■ Expand the reversionary right to provide authors with a In Toronto Real Estate Board v. Commissioner of reversionary interest “from 25 years after assignment”. Competition, the SCC denied leave to appeal from the FCA, ■ Provide moral and economic rights for audiovisual thus affirming the FCA’s decision that denied that copy- performers. right subsisted in TREB’s Multiple Listing Service® database, ■ Amend section 34.1 of the Act to deem screenwriters and finding that there was insufficient skill and judgment to give directors as co-owners of copyright and co-authors for cine- rise to it being an original compilation. The FCA had found that matographic works (including television works). the MLS® database amounted to a collection of factual infor- ■ Limit the scope of fair dealing for the purpose of educa- mation, assembled by REALTOR® agents and entered into the tion to only apply for educational institutions when the database in a mechanical fashion, noting “the process of data work at issue is not commercially available. entry and its “almost instantaneous” appearance in the data- ■ Improve the statutory damages for non-commercial base”. The decision is potentially concerning to owners of elec- infringement under section 38.1(1) of the Act, such as by tronic databases. That said, the FCA’s decision, and the SCC’s increasing the maximum award available. denial of leave, may be held in future to be fact-specific, and distinguishable based on evidence tendered. In Trader v. CarGurus, the Ontario Superior Court of 7.2 Are there any particularly noteworthy issues around Justice addressed various issues relating to “information loca- the application and enforcement of copyright in relation tion tools”, framing, fair dealing and statutory damage awards to digital content (for example, when a work is deemed to be made available to the public online, hyperlinking, for infringement of a large number of digital works. The deci- etc.)? sion suggests that aggregators may not benefit from the safe harbour afforded to information location tools, particularly if the aggregated listing does not link back to the original source, In Google v. Equustek Inc., the SCC upheld a preliminary suggesting information location tools may be limited to business injunction obtained by Equustek obligating Google to de-index models that are akin to traditional search engines. The decision all websites throughout the world of Datalink, the defendant also suggests that framing may amount to infringement. in Equustek’s successful trademark infringement and passing In Rogers Communications Inc. v. Voltage Pictures, LLC, off action which had sold knock-offs of Equustek’s products the SCC considered whether an ISP can be compensated for online. The SCC agreed that the only way this remedy would be identifying account holders using IP addresses alleged to have effective was to order Google to de-index all the websites, even shared movies and other copyright-protected works on peer-to- though it gave the injunction an “extraterritorial” effect and peer networks (“P2P file sharing”). Canada has experienced Google had done nothing actionable. The SCC held that injunc- a trend of so-called reverse class actions alleging copyright tive relief could be ordered against a non-party to the action. infringement against “Jane and John Does” involved in P2P Google has fought back successfully against the injunction in file sharing. Copyright owners rely on the assistance of ISPs California proceedings in which it argued that the injunction through Canada’s “notice and notice” regime to address the P2P should not be enforced extraterritorially, given certain U.S. laws file sharing. Rogers, a Canadian ISP, sought to recover costs such as the First Amendment of the U.S. Constitution and the to identify account holders by IP address. The Copyright Act Communication Decency Act, and principles of international prohibits an ISP from charging any amount for performing obli- comity. The U.S. Court agreed, granting a permanent stay of gations under the “notice and notice” regime unless and until the injunction in the U.S. in December 2017. The reasoning a maximum fee is set by regulations, and no such fee has been in this case would also apply to online copyright infringement. set. The Court found that ISPs are subject to both express and In Nintendo of America Inc. v. Go Cyber Shopping, the implicit obligations under the “notice and notice” scheme. The Federal Court rendered its first decision under the sections of Court confirmed that no fee can be levied by ISPs to forward the Act prohibiting circumvention of TPMs. Go Cyber sold notices under the regime, as this is among an ISP’s express obli- devices and technologies allowing users to play unauthor- gations. While the SCC found that ISPs are implicitly obligated ised versions of Nintendo games on Nintendo systems. The to take necessary steps to ensure the accuracy of their records, Court found that Nintendo’s boot-up security checks, encryp- they are not obligated to be able to readily identify alleged tion, scrambling code and even the shape of genuine Nintendo infringers to a copyright owner in response to a Norwich order. game cartridges qualified as TPMs which had been circum- Accordingly, the Court held that ISPs are entitled to recover vented. Protection being afforded to the shape of the cartridge their reasonable costs for work in response to a Norwich order suggests a broad approach to what will constitute a TPM. The to identify “John/Jane Doe” alleged infringers. What consti- Court awarded significant statutory damages, on a “per work tutes reasonable costs will be determined on a case-by-case potentially unlocked” basis and not on a “per circumvented basis, and in Voltage Pictures v. Salna, the Federal Court calcu- technology” basis, amounting to CAD 11,700,000 (585 games lated compensation of CAD 67.23, plus HST, for searching and x CAD 20,000). The Court also awarded CAD 60,000 for copy- disclosing the customer name and address associated with five right infringement and CAD 1,000,000 for punitive damages. time stamps (i.e. CAD 35/hour x 115.25 minutes / 60 minutes The decision indicates that copyright infringement need not be = CAD 67.23). proven for TPM circumvention to be actionable. In Voltage Pictures, LLC v. Salna, Voltage Pictures, together In Geophysical Service Incorporated v. EnCana, the Alberta with a number of other production companies, sought to certify Court of Appeal upheld a finding of copyright in seismic data, a class action against defendants who were uploading the and found both the raw data (the seismic crew exercised skill and Plaintiffs’ motion pictures to BitTorrent websites. The Court judgment in preparing the devices used to obtain the data and refused to certify the class action on the basis that it will not selecting the positions from which the data should be extracted presume that an account holder has committed infringement from the ocean) and the processed data (the human processers simply based on the fact that the account holder’s IP address has been identified as one through which infringement has of the raw data exercised skill and judgment in creating a useable occurred. Given that multiple devices can share an IP address product) protected by copyright. An appeal to the SCC was and, often, multiple people have access to those devices, the refused. Court found that it was impossible to determine that the actual

infringer was the account holder. Absent the specific evidence 7.3 Have there been any decisions or changes of law required to identify infringers, this decision could suggest that regarding the role of copyright in relation to artificial it will be difficult for copyright holders to proceed by way of a intelligence systems, including the use of copyright reverse class action. in those systems and/or any work generated by those In Bell Media Inc. v. GoldTV.Biz, the Federal Court clari- systems? fied that “ISPs” can be required to block access to websites that host infringing content. This is the first time that a Canadian Issues related to machine-generated works and exceptions for AI Court has issued a site-blocking order. The Court found that it were raised in the INDU report on the statutory review of the could issue such an order through its general power as a Court of Act (https://www.ourcommons.ca/Content/Committee/421/ equity. The Plaintiffs proposed a test which was adopted by the INDU/Reports/RP10537003/indurp16/indurp16-e.pdf), and the Court that incorporated the current test for interlocutory rulings report recommended: as well as a number of factors considered by the U.K. Court in ■ Providing clarity around ownership of computer-generated Cartier International AG & Ors v. British Sky Broadcasting works (e.g. works created with the assistance of AI). Ltd & Ors. One of the ISPs involved in the case, TekSavvy ■ Introducing an exception to copyright to facilitate the use Solutions Inc., argued that the Court does not have the juris- of lawfully acquired copyright-protected works and other diction to issue site-blocking orders and Parliament specifically subject matter for informational analysis. did not include a site-blocking regime when the Copyright Act There has been one copyright claim filed and one copyright was amended in 2012. TekSavvy has appealed the decision to decision to date in Canada involving AI, though neither deals the FCA. squarely with novel copyright issues involving AI-generated works or exceptions for AI text and data mining and the like.

Acknowledgment The authors of the 2021 edition of this chapter thank Jill Tonus and Naomi Zener of Bereskin & Parr LLP for the contributions to previous editions of this chapter.

Catherine (Cat) Lovrics is a Partner at Marks & Clerk Canada, Head of the firm’s Copyright and Digital Groups, and a senior member of the Trademarks Group. Cat’s practice focuses on copyright, trademarks, personality and publicity rights, as well as marketing and advertising law, consumer protection and data and privacy law. Cat is among Canada’s leading copyright and trademark strategists. She was the Leader of the Copyright & Digital Media Group and Co-Leader of the Privacy Cybersecurity & Data Protection Group of a highly ranked Canadian intellectual property firm. Cat has helped national and multinational clients protect, exploit and enforce their IP in a wide range of industries, from creative industries and emergent tech to fashion and food. Cat manages large international trademark portfolios, and has coordinated global enforcement and anti-counterfeiting programs. She advises on IP clearance, rights acquisition, licensing and enforcement. She is the Vice Chair of the Intellectual Property Institute of Canada’s Copyright Committee. She is a Board member of Artists and Lawyers for the Advancement of Creativity, which coordinates Artists’ Legal Advice Services, commonly known as ALAS. Cat is also a Trustee of the Copyright Society of the USA (CSUSA).

Marks & Clerk Law LLP Tel: +1 416 595 1155 100 Simcoe Street +1 416 849 8396 Suite 200 Email: [email protected] Toronto, Ontario, M5H 3G2 URL: www.marks-clerk.com Canada

Lesley Gallivan graduated from Cape Breton University in 2006 with a Bachelor of Arts (with Honours) Degree in Political Science. She subsequently pursued a Master’s Degree in Political Science at Carleton University, graduating in 2009. Lesley then obtained her Law Degree from the University of Ottawa in 2013 and, after completing her articles, was called to the Ontario Bar in 2014. Lesley joined Marks & Clerk in 2008 and since that time has worked on a wide range of trade mark matters, as well as copyright and domain name issues, focusing extensively on contentious proceedings and legal research. Lesley is a member of the Intellectual Property Institute of Canada (IPIC) and the International Trademark Association (INTA). In 2019, Lesley was named a Rising Star by Managing Intellectual Property.

Marks & Clerk Law LLP Tel: +1 613 236 9561 ext. 2010 180 Kent Street Email: [email protected] Suite 1900 URL: www.marks-clerk.com Ottawa, Ontario, K1P 0B6 Canada

Marks & Clerk is recognised as one of the world’s leading specialists in intellectual property law. Through a global network of over 650 people worldwide including a qualified team of experienced patent and trademark associates, the firm is capable of offering a full spectrum of technical expertise on all aspects of intellectual property matters – patents, trademarks, designs and copyright. This includes obtaining protection worldwide, portfolio management, strategic advice, commercial advice, licensing, enforcement, clearance and searches, validity and infringement opinions, due diligence and litigation. With their network of offices in Canada, Europe and Asia, and long-established relationships with other leading IP firms around the world, they are able to provide consistent high quality, seamless and cost-effective service to their clients both domestically and globally. www.marks-clerk.com

China China

Erica Liu (Liu Yuping)

Hylands Law Firm Andrew Liu (Liu Yungui)

12 Copyright Subsistence (2) Current affairs news. (3) Calendar systems, general tables, general forms and formulae. 1.1 What are the requirements for copyright to subsist in a work? 1.5 Is there a system for registration of copyright and, if so, what is the effect of registration? The term “works” as stated in the Copyright Law of PR China includes original works of literature, art and science with intellectual results which can be reproduced in a tangible form. Copyright registration is not compulsory in China as the copyright can be enjoyed as long as the works are complete. In China, there is a system for registration of copyright which is optional 1.2 Does your jurisdiction operate an open or closed for the copyright owner. The copyright registration certificate list of works that can qualify for copyright protection? issued could be used as preliminary evidence to prove that the copyright is held by the owner. An open list of the copyrightable works is provided in China, and the copyrightable works include, among other things, works of literature, art, natural science, social science and engineering 1.6 What is the duration of copyright protection? Does this vary depending on the type of work? technology, which are created in any of the following forms: ■ Written works. ■ Oral works. There is no set time limit for the term of protection for an ■ Musical, dramatic, quyi (ancient Chinese performing art), author’s rights of authorship and alteration and his right to choreographic and acrobatic art works. protect the integrity of his work. ■ Works of fine art and architecture. In respect of a work of a citizen, the term of protection of ■ Photographic works. the right of publication and the right of reproduction and other ■ Cinematographic works and works created in a similar way rights to be enjoyed by the copyright owner is the lifetime of to cinematography. the author and 50 years after his death. This expires on 31 ■ Drawings of engineering designs and product designs, maps, December, 50 years after the author’s death. In the case of a sketches and other graphic works as well as model works. work of joint authorship, the term expires on 31 December, 50 ■ Computer software. years after the death of the last surviving author. ■ Other works as provided for in law and administrative In respect of a work of a legal entity or other organisation regulations. or a work for hire in which the copyright (excluding the right of authorship) will vest in a legal person or other organisation, the term of protection of the right of publication and the right 1.3 In what works can copyright subsist? of reproduction and other rights to be enjoyed by the copyright owner is 50 years. This expires on 31 December, 50 years after According to the PRC Copyright Law, the copyright can the first publication of such work. However, any such work that subsist in literary works, oral works, musical works, theatrical has not been published within 50 years of the completion of its works, folk art, dance, acrobatic artistic works, art, architec- creation will no longer be protected in China. tural works, photographic works, film works and works created In respect of a cinematographic work, a work created by a using methods similar to film making, graphic works and model means similar to cinematography or a photographic work, the works such as engineering design plans, product design plans, term of protection of the right of publication and the right of maps, schematic diagrams and computer software. reproduction and other rights to be enjoyed by the copyright owner is 50 years. This expires on 31 December, 50 years after 1.4 Are there any works which are excluded from the first publication of such work. However, any such work that copyright protection? has not been published within 50 years of the completion of its creation will no longer be protected in China. The following works are excluded from copyright protection: (1) Laws, regulations, resolutions, decisions and orders of State agencies, other legislative, administrative and judicial documents, and the official translations thereof.

1.7 Is there any overlap between copyright and other circumstances where the ownership (except the authorship) intellectual property rights such as design rights and should belong to the employer: database rights? (1) works created in the course of employment such as an engineering design plan, product design plan, map, computer There is an overlap between copyright, trademarks and design software, etc. which are created primarily with the use of patent rights. For example, a picture might be protected under material and technical conditions of the legal person or the copyright and be the subject of a trademark or design patent. organisation and for which the legal person or the organisation bears responsibility; or (2) works created in the course of employment the copyright 1.8 Are there any restrictions on the protection of which belongs to the legal person or the organisation for copyright works which are made by an industrial pursuant to the provisions of laws and administrative process? regulations or contractual agreements.

There are no restrictions on the protection of copyright works 2.4 Is there a concept of joint ownership and, if so, which are made by an industrial process as long as they meet what rules apply to dealings with a jointly owned work? the requirement of copyright works in accordance with the Copyright Law of PR China. The copyright of a work jointly created by two or more persons 22 Ownership shall be co-owned by the co-authors. Where a co-authored work can be used separately, a co-author may enjoy independent copyright to the part created by him/ 2.1 Who is the first owner of copyright in each of the her, provided that the overall copyright of the co-authored work works protected (other than where questions 2.2 or 2.3 apply)? shall not be infringed at the time of his/her exercise of copyright. Otherwise, the copyright is owned by the co-authors jointly and is enforced according to the parties’ agreement. Without such The first owner of copyright is the author unless otherwise stip- an agreement, any co-author shall not unreasonably prevent ulated in the Copyright Law. Without contrary evidence, the the other co-author(s) from enforcing the copyright except for citizen, legal person or organisation whose name is stated on the assignment of the copyright, provided that any income or profit work shall be deemed the author. derived shall be divided fairly among the joint authors. The first owner of a work created from adaptation, translation, annotation or collation of an existing work is the person 32 Exploitation who undertakes the adaptation, translation, annotation or collation, provided that the copyright of the original work shall not be infringed at the time of exercise of the copyright by the 3.1 Are there any formalities which apply to the transfer/assignment of ownership? person who undertakes the adaptation, translation, annotation or collation. The first owner of the compilation work is the person who There should be a contract in writing for the transfer/assign- undertakes the compilation, provided that the copyright of the ment of copyright ownership which includes the following original work shall not be infringed at the time of his/her exer- points: cise of copyright. (1) Name of the work. The first owner of film works and works created using (2) Type of rights transferred and geographical scope. methods similar to film making is the producer even though the (3) Transfer price. playwright, director, photographer, lyricist, composer, etc., who (4) Date and method for payment of transfer price. have the right of authorship, shall have the right to receive remu- (5) Default liability. neration pursuant to the contract executed with the producer. (6) Any other content deemed necessary as agreed by both The author of works which may be independently used such parties. as a script, score, etc. in film works and works created using The abovementioned written contract can be recorded with methods similar to film making, etc. shall have the right to exer- the relevant copyright administration authority. cise his/her copyright independently. 3.2 Are there any formalities required for a copyright 2.2 Where a work is commissioned, how is ownership licence? of the copyright determined between the author and the commissioner? A licence contract should include: (1) Type of rights to be licensed. With regards to a commissioned work, the author and the (2) Whether the licence is exclusive or non-exclusive. commissioner reach an agreement on the ownership. Without (3) Area and period of the licensed use. such an agreement, the copyright shall belong to the commis- (4) Standards and method for payment of remuneration. sioned party. (5) Liability of contract breach. (6) Any other content deemed necessary as agreed by both parties. 2.3 Where a work is created by an employee, how is ownership of the copyright determined between the The abovementioned licence contract can be recorded with employee and the employer? the relevant copyright administration authority.

With regards to a work created by an employee, the ownership shall belong to the employee except for the following two

3.3 Are there any laws which limit the licence terms cinematographic productions, or by means of adapta- parties may agree to (other than as addressed in tion, translation or annotation, without permission from questions 3.4 to 3.6)? the copyright owner, unless otherwise provided by the Copyright Law. Use of others’ works by publishers, performers, producers of (7) Exploiting a work of another without paying remuneration. audio-visual recordings, radio stations, television stations, etc., (8) Renting a cinematographic work or a work created in a pursuant to the relevant provisions of the law, shall not infringe way similar to cinematography, computer software, sound the author’s right of authorship, right of revision, right to recordings or video recordings, without the permission of preserve the integrity of work and right to receive remuneration. the copyright owner or copyright-related owner, except where otherwise provided by the Copyright Law. (9) Exploiting the format design of a published book or peri- 3.4 Which types of copyright work have collective odical without permission from the publisher. licensing bodies (please name the relevant bodies)? (10) Broadcasting or publicly transmitting a live performance or recording a performance without the permission of the There are collective licensing bodies for music, such as the Music performer. Copyright Society of China, for audiovisual works, such as the (11) Reproducing, distributing, performing, projecting, broad- China Audio-Video Copyright Association, for written works, casting, compiling, disseminating to the public through such as the China Written Works Copyright Society, for photo- information network works, without the permission from graphic works, such as the Images Copyright Society of China, the copyright owner of the works, except where otherwise and for films, such as the China Film Copyright Association. provided by the Copyright Law. (12) Publishing a book where the exclusive right of publication belongs to another individual. 3.5 Where there are collective licensing bodies, how (13) Reproducing, distributing the sound recordings or video are they regulated? recordings of a performance, or disseminating a performance to the public through an information network, The collective licensing bodies are managed by the State without the permission of the performer, except where Copyright Bureau in accordance with the Regulations on otherwise provided by the Copyright Law. Collective Administration of Copyrights. (14) Reproducing, distributing, disseminating to the public through information networks, sound recordings or video 3.6 On what grounds can licence terms offered by a recordings, without the permission from the producer of collective licensing body be challenged? the sound recordings and video recordings except where otherwise provided by the Copyright Law. (15) Broadcasting or reproducing a radio or television A licensee could challenge the licence terms offered by a collec- programme without permission, except where otherwise tive licensing body on the following grounds (the challenge is provided by the Copyright Law. made to the Copyright Administration Department of the State (16) Intentionally avoiding or destroying the technical meas- Council): ures applied by a copyright owner or copyright-related (1) the collective administration refuses to enter into a owner on their works, sound recordings or video record- licensing contract with a user in accordance with the provi- ings, to protect the copyright or the rights related to the sions of Article 23; copyright, without the permission of the copyright owner (2) the collective administration does not fix a specific amount or copyright-related owner, except where otherwise of licence fees in accordance with the announced rates of provided by laws or administrative regulations. licence fees; and (17) Intentionally deleting or altering the electronic informa- (3) the collective administration does not allow rights holders tion on the management of the rights on a work, sound to inspect the records and business materials stipulated in recording or video recording, without the permission of Article 32. the copyright owner related to the copyright, except where otherwise provided by laws or administrative regulations. 42 Owners’ Rights (18) Producing or selling a work where the signature of another is counterfeited. 4.1 What acts involving a copyright work are capable of (19) Committing other acts of copyright infringement. being restricted by the rights holder? 4.2 Are there any ancillary rights related to copyright, Acts of copyright infringement as prescribed by the Copyright such as moral rights, and, if so, what do they protect, Law include: and can they be waived or assigned? (1) Publishing a work without the permission of the copyright owner. There are moral rights related to copyright, but they are not (2) Publishing a work of joint authorship as a work created ancillary rights. Moral rights include the right of publication, solely by an individual, without the permission of the other right of authorship, right of revision and right to preserve the co-author(s). integrity of the work. Moral rights cannot be waived or assigned. (3) Having a name indicated on a work that has been created entirely by others, in an attempt to seek personal fame and gain. 4.3 Are there circumstances in which a copyright owner is unable to restrain subsequent dealings in works (4) Distorting or falsifying a work created by another. which have been put on the market with his consent? (5) Plagiarising the work of another. (6) Exploiting a work by means of exhibition, making cinematographic productions or a means similar to making There is a specific and clear definition about “exhaustion of

rights” in the Copyright Law of PR China. In practice and 5.2 Other than the copyright owner, can anyone else theoretically, the principle of “exhaustion of rights” is adopted bring a claim for infringement of the copyright in a work? in respect of the “distribution right”. Other than the copyright owner: the exclusive licensee can bring 52 Copyright Enforcement a claim for infringement of the copyright in a work on his own; the non-exclusive licensee can bring a claim together with the 5.1 Are there any statutory enforcement agencies and, copyright owner or with the owner’s authorisation; and copy- if so, are they used by rights holders as an alternative to right collecting societies can bring a claim if authorised to do civil actions? so under the contract in place between the copyright collecting society and the member. The National Copyright Administration (NCA) and the local copyright bureaus are statutory copyright enforcement agencies 5.3 Can an action be brought against ‘secondary’ which can be used by rights holders as an alternative to civil infringers as well as primary infringers and, if so, actions as long as the copyright infringement activities also on what basis can someone be liable for secondary harm the public interests. infringement? According to the Copyright Law, the NCA and local copyright bureaus may order the infringer to stop infringement acts, An action can be brought against “secondary” infringers as well confiscate illegal income, confiscate and destroy infringing as primary infringers as long as the secondary infringers induce or replicas, and impose a fine; where the case is serious, the NCA assist the primary infringers to conduct the infringement deeds. and local copyright bureaus may also confiscate the mate- Both parties are liable jointly for the primary infringement. rials, tools, equipment, etc., mainly used for production of the infringing replicas. A case is considered to constitute a criminal offence if the following infringement acts are found: 5.4 Are there any general or specific exceptions (1) reproduction, distribution, performance, screening, broad- which can be relied upon as a defence to a claim of casting, compilation or transmission of others’ works to infringement? the public through an information network without the consent of the copyright holder, unless otherwise stipu- The defences available to an alleged infringer include fair use, lated in the law; expiration of the term of protection and statutory licence. (2) publication of books for which another party has exclusive In China, the following uses are considered as “fair use”: publication rights; a. Use of another person’s published work for the purposes (3) reproduction or distribution of audio-visual recordings of the user’s own personal study, research or enjoyment. of a performance or transmission of the performance to b. Appropriate quotation from another person’s published the public through an information network without the work in one’s own work for the purpose of introduction consent of the performers, unless otherwise stipulated in of, or comment on, a work, or demonstration of a point. the law; c. Inevitable reproduction or citation of a published work in (4) reproduction or distribution of audio-visual recordings newspapers, periodicals, radio stations, television stations or transmission of audio-visual recordings to the public or other media outlet for the purpose of reporting current through an information network without the consent of events. the producers of audio-visual recordings, unless otherwise d. Reprinting in newspapers or periodicals or other media stipulated in the law; outlet, or rebroadcasting on radio stations or television (5) broadcasting or reproduction of radio and television stations or other media, of current event articles on the programmes without consent, unless otherwise stipulated issues of politics, the economy and religion, which have in the law; been published by other newspapers, periodicals, radio (6) intentional circumvention or sabotage of the technical stations or television stations or other media, except where measures adopted by rights holders for the protection of the the author has declared that publication or broadcasting is copyright or copyright-related rights of their works, audio- not permitted. visual recordings, etc. without the consent of the copyright e. Publishing in newspapers or periodicals or other media holder or the holder of copyright-related rights, unless other- outlet, or broadcasting by radio stations or television wise stipulated by the law and administrative regulations; stations or other media outlet, of a speech delivered at a (7) intentional deletion or alteration of electronic data for public assembly, except where the author has declared that rights management of works, audio-visual recordings, etc. publication or broadcasting is not permitted. without the consent of the copyright holder or the holder f. Translation or reproduction, in a small quantity of copies, of copyright-related rights, unless otherwise stipulated by of a published work for use by teachers or scientific the law and administrative regulations; and researchers in classroom teaching or scientific research, (8) passing off others’ works and production or sale of such provided that the translation or reproduction is not works. published or distributed. The rights holders are entitled to file a complaint before g. Use of a published work by a State organ within the reason- the local copyright bureaus asking them to take raid actions to able scope for the purpose of fulfilling its official duties. stop the infringement acts, but they are not allowed to get any h. Reproduction of a work in its collections by a library, damage compensation in such an administrative case. A civil archive, memorial hall, museum, art gallery or similar lawsuit should be filed then if the right owner would like to get institution, for the purpose of the display or preservation damage compensation. of a copy of the work. The rights holders may choose to file a complaint before the i. Performance of a published work free of charge, that is, administrative agencies or file a civil lawsuit with the court or with respect to the performance. Fees are not charged to initiate both actions at the same time for copyright enforcement. the public and remuneration is not paid to the performers.

j. Copying, drawing, photographing or video recording a The attorneys’ fees can be charged on a different basis, work of art located or on display in an outdoor public place. including a fixed fee, charges on an hourly basis and a contin- k. Translation of a work published by a Chinese citizen, gency fee. legal entity or organisation, which is created in the Han Reasonable expenses to stop the infringement, including the language (Chinese), into a minority nationality language investigation and the court fee, can be partly or wholly recov- for publication and distribution within the country. ered from the losing party. l. Transliteration of a published work into Braille for Under civil procedure law, first instance cases relating to publication. copyright infringement will be concluded within six months In relation to computer software, the prescriptions on “fair after the case is formally accepted by the court. Second instance use” include the following: cases will be concluded within three months after the appeal is 1) Owners of legal duplicate copies of computer software are formally accepted by the court. However, no time limit for a entitled to: civil case involving a foreign party is provided under civil proce- a) load the software onto devices with information-pro- dure law. cessing capacity and according to their operational needs; 5.8 Is there a right of appeal from a first instance b) make backups to avoid damaging the copies. However, judgment and, if so, what are the grounds on which an the backups must not be provided to other persons for appeal may be brought? any use, and must be destroyed once the holder loses the ownership of the legal copies; and In the main proceedings, any party unsatisfied with a judgment c) make necessary modifications to be able to use the made at first instance can appeal to the court at a higher level software in the correct environment for computers or within the prescribed time limit from the date of receipt of the to improve the function of the software. However, the judgment (that is, 15 days for a Chinese party and 30 days for a software that has been modified cannot be provided foreign party). Otherwise, the judgment will enter into force. to a third party without the software copyright owner In the preliminary injunction proceedings, any party unsat- having the requisite licence (unless otherwise provided isfied with the order made by the court can apply for reconsid- in the contract). eration before the same court within 10 days of the receipt of 2) Using computer software to learn and study the design the order. ideas and rules relating to the software in the sense of If an appeal is filed, the first instance judgment will not take loading, displaying, transmitting or storing. effect and the relevant parties must wait until the outcome of the appeal which is final. 5.5 Are interim or permanent injunctions available? In case the concerned party disagrees with any legal grounds or factual grounds on which the first instance judgment is based, Interim injunctions are available in China as the rights holders an appeal could be filed. could apply for an interim injunction before or during litigation proceedings. The final judgment could be considered as a 5.9 What is the period in which an action must be permanent injunction. commenced?

5.6 On what basis are damages or an account of profits The statute of limitation for copyright infringement is three calculated? years, starting from the date when the copyright holder or interested party knew or should have known about the infringing act. A full compensation principle rather than punitive compensa- If a copyright holder or interested party brings a suit after tion is adopted in China. more than three years, and the infringing act is continuing and Based on the Copyright Law and the relevant judicial inter- the copyright is still valid, the court will generally issue a judg- pretations, there are three methods to calculate compensation; ment ordering the defendant to stop the infringing act. The namely, monetary losses suffered by the infringed party, profits compensation amount starts being calculated three years before of the infringer during the period of the infringement, or statu- the date when the right holder brought the suit before the tory compensation. People’s Court. The infringed party has the right to choose either the monetary losses of the infringed party or the profits of the infringer 62 Criminal Offences as the compensation in legal proceedings. If such losses or profits are hard to determine, statutory 6.1 Are there any criminal offences relating to compensation will be adopted to determine the quantum of the copyright infringement? compensation, with a maximum amount of RMB500,000. There are criminal offences relating to copyright infringement. 5.7 What are the typical costs of infringement In accordance with Article 217 of the Criminal Law of PR proceedings and how long do they take? China, whoever, for the purpose of making profit, commits any of the following acts of copyright infringement shall, if the The costs include the litigation fees and the attorneys’ fees. For amount of illegal gains is relatively large, or if there are other a civil case, the court fee for first instance legal proceedings is serious circumstances, be sentenced to fixed-term imprison- charged based on the amount of damages sought. For a civil case ment of not more than three years or criminal detention and without a claim for damages, the court fee is about RMB500 to shall also, or shall only, be fined; if the amount of illegal gains RMB1,000. The court fee in second instance proceedings is the is huge or if there are other especially serious circumstances, he same as that for the first instance proceedings. shall be sentenced to fixed-term imprisonment of not less than three years but not more than seven years and shall also be fined:

(1) reproducing and distributing a written work, musical 72 Current Developments work, motion picture, television programme or other visual works, computer software or other works without permission of the copyright owner; 7.1 Have there been, or are there anticipated,any (2) publishing a book of which the exclusive right of publica- significant legislative changes or case law developments? tion is owned by another person; (3) reproducing and distributing an audio or video recording produced by another person without permission of the There have not been any significant legislative changes or case producer; or law developments in the last year. On 9 September 2018, the (4) producing or selling a work of fine art with a forged signa- Beijing Internet Court was founded to centrally govern specific ture of another painter. types of first instance Internet cases within the jurisdiction of In accordance with Article 218 of the Criminal Law of PR Beijing. Such cases include: disputes over the ownership of copy- China, whoever, for the purpose of making profit, knowingly right or neighbouring rights of works published on the Internet sells works reproduced by infringing the copyright of the owners for the first time; and disputes arising from the infringement as mentioned in Article 217 of this Law shall, if the amount of of copyright or neighbouring rights on the Internet of works illegal gains is huge, be sentenced to fixed-term imprisonment published or communicated online. of not more than three years or criminal detention and shall also, or shall only, be fined. 7.2 Are there any particularly noteworthy issues around the application and enforcement of copyright in relation to digital content (for example, when a work is deemed 6.2 What is the threshold for criminal liability and what to be made available to the public online, hyperlinking, are the potential sanctions? etc.)?

The threshold for criminal liability is RMB30,000 as an illegal Noteworthy issues include issues concerning the responsibility income; detailed information and potential sanctions are set out and obligation of Internet Service Providers, and how to define below: the new types of copyright works which are still novel in China. An act of copyright infringement which is profit-oriented For example, in the lawsuit filed by Beijing Express Hand as stipulated in Article 217 of the Criminal Law with an illegal Technology Ltd., Co. against Guangzhou Huaduo Network income of RMB30,000, which is deemed as a “relatively large Technology Ltd., Co., the Beijing Haidian District Court gave the amount of illegal income”, shall be deemed to fall under the verdict that the short video uploaded is a copyright work. This description of “any other serious cases” if it satisfies any of the case was one of the 10 most significant IP cases in China in 2018. following conditions: (1) the turnover amount of the illegal business operation is RMB50,000 and above; 7.3 Have there been any decisions or changes of law (2) replication and distribution of literary works, music, films, regarding the role of copyright in relation to artificial television programmes, video works, computer software intelligence systems, including the use of copyright and other works without prior consent of the copyright in those systems and/or any work generated by those systems? holder and the quantity of replication is 500 copies and above; or (3) any other serious cases. In China, there are still gaps in legislation and academic disputes In such cases the copyright infringer shall be sentenced to a regarding copyright protection of Artificial Intelligence (AI) prison term or detention term of not more than three years with systems. The criteria for measuring the copyright-ability of AI the imposition of a fine or be subject to a fine only. products are not uniform, and in some cases opposite Judgments An act of copyright infringement which is profit-oriented have appeared. as stipulated in Article 217 of the Criminal Law with an illegal The copyright infringement case between Beijing Feilin Law income of RMB150,000 which is deemed as a “large amount of Firm v. Beijing Baidu Network Communication Co., Ltd [(2018) Jing illegal income” shall be deemed to fall under the description of 0491 Civil Prior 237] is regarded as the first case in relation to “any other very serious cases” if it satisfies any of the following the copyright protection of work generated by an AI system conditions: in China. In this case, the Beijing Internet Court denied copy- (1) the turnover amount of the illegal business operation is right-ability of the analysis report involved as it was created intel- RMB250,000 and above; ligently by computer software rather than natural persons. The (2) replication and distribution of literary works, music, films, panel holds the author of the written works should be natural television programmes, video works, computer software persons according to the Copyright Law of China. and other works without prior consent of the copyright In 2019, another typical Judgment was issued which contains holder and the quantity of replication is 2,500 copies and opinions different from the above first judgment. This case is above; or for Shenzhen Tencent Computer System Co., Ltd v. Shanghai Yingxun (3) any other very serious cases. Techonolog y Co., Ltd. [(2019)Yue 0305 Civil Prior 14010]. Shenzhen In such cases the copyright infringer shall be sentenced to a Nanshan District Court held that the articles involved, which prison term or detention term of more than three years but not were mainly created by the Plaintiff’s Dreamwriter software, more than seven years with the imposition of a fine. satisfied all the requirements of written work under the Copyright In the case of a profit-oriented act, as stipulated in Article 218 of Law of China. In this judgment, “natural person” is not regarded the Criminal Law, with an illegal income of RMB100,000, which as an essential condition in recognition of copyrighted works. is deemed as a “large amount of illegal income”, the offender shall According to the Copyright Law, a legal person or any other be convicted of the sale of infringing replications and sentenced organisation can be deemed as the author. It is popular that AI to a prison term or detention term of not more than three years products should not be excluded from the scope of copyright with the imposition of a fine or be subject to a fine only. objects just because of the “non-natural person” status of AI.

Erica Liu practises as an attorney-at-law and IP partner in Hylands Law Firm’s Beijing Office. Erica Liu began her professional legal career as an attorney-at-law in Hylands Law Firm having joined in 2006 following graduation from her studies. She is now a Partner and Head of the Trademark Department of the firm. Having handled an extensive range of cases for clients, Erica Liu is experienced in all matters relating to trademark and copyright law and practice in connection with contentious and non-contentious matters including filings and strategy, civil lawsuits, criminal lawsuits, online protection, boarder protection, business disputes, contacts, etc. She also deals with matters pertaining to unfair competition and domain names such as advising on domain name disputes and domain name strategy. Erica Liu is a co-author of the following books and articles published by European publishers. Trademark Litigation (2nd Edition). Copyright Litigation (2nd Edition). Getting the Deal Through – Domains and Domain Names (2014). Domain Name Law and Practice (2016). Trade mark use: Is OEM use sufficient to protect your rights in China? (Published in Managing Intellectual Property on March 1, 2014). Protecting Intellectual Property at Exhibitions in China (Legal Studio, 2015). Luxury Law (Thomson Reuters, 2016). Is Your Trademark Stolen in China? Don’t Panic! (2016).

Hylands Law Firm Tel: +86 10 6588 8825 ext. 659 12F Fortune Financial Center Email: [email protected] No.5 Dongsanhuan Zhong Road URL: www.hylandslaw.com Chaoyang District Beijing 100020 China

Andrew Liu practises as a patent attorney in the Patent and Trademark Group of Hylands Law Firm’s Beijing Office. Andrew Liu is the Managing Partner of the Patent and Trademark Group. He joined the firm in 2004 and established the firm’s Patent Team. Andrew Liu’s practice focuses on patent prosecution, invalidation and patent litigation. He has significant knowledge and experience dealing with patent matters in the chemical and mechanical engineering areas, having qualified as a Chemical/Geo-technical Engineer and worked in one of China’s largest fossil fuel corporations prior to entering the legal practice specialising in IP in 2001. Andrew Liu demonstrates strong capa- bility in advising on strategy for dealing with patent invalidation cases and patent litigation, and has particular insight in analysing effective channels for the collection of evidence of patent infringement.

Hylands Law Firm Tel: +86 10 6588 8825 ext. 685 12F Fortune Financial Center Email: [email protected] No.5 Dongsanhuan Zhong Road URL: www.hylandslaw.com Chaoyang District Beijing 100020 China

Hylands Law Firm is a full-service law firm established in the 1990s. group. Among the general law firms in China, we have quite a large IP Headquartered in Beijing, Hylands Law Firm has branches in 19 key cities group. We provide legal services in all aspects of IP to our national clients nationwide including Nanjing, Shanghai, Guangzhou, Hangzhou, Changsha, and international clients and have received many awards for our services Wenzhou, Shenyang, Jiangyin, Hefei, Nanning, Chongqing, Chengdu, in recent years. Shenzhen, Jinan, Yinchuan, Guiyang, Sanya, Dongguan, and Hong Kong. www.hylandslaw.com By participating in TerraLex, Hylands has over 150 cooperative law firms in over 100 countries and regions worldwide, providing a full range of professional services for clients at home and abroad. Hylands has upwards of 300 partners, nearly 1,000 professional legal service personnel and over 100 administrative assistants. We have a large IP group with the Patent Team, Trademark Team, Copyright Team, and Entertainment Team. There are almost 120 people in our IP

Armengaud Guerlain Catherine Mateu

12 Copyright Subsistence 1.5 Is there a system for registration of copyright and, if so, what is the effect of registration?

1.1 What are the requirements for copyright to subsist in a work? There is no system for copyright registration. Copyright law protects a work from the moment it is created, regardless of its registration. For practical purposes of identifying and dating a Any work of the mind created by an author may be protected by work, right holders may register their works at the authors’ soci- authors’ rights, whatever their kind, form of expression, merit or eties or the Agency for the Protection of Programs, or APP, as purpose (articles L111-1 and L112-2 of the Intellectual Property well as request authenticated deeds to bailiffs or to public nota- Code, hereafter IPC). The IPC and the Berne Convention refer ries. Industrial designs and topographies of semi-conductors to a non-comprehensive list of works protected by copyright. In may be registered at the INPI in order to benefit from protec- accordance with the Berne Convention, authors may enjoy intel- tion in France. Industrial designs may also be registered at the lectual property rights for their work by the mere fact of its crea- Office for Harmonization of the Internal Market for protection tion with no requirement of copyright notice or registration. throughout the EU and at the WIPO to obtain an international Therefore, what is known in common law countries as copy- design registration. Under the penalty of a fine under criminal right is called in continental law the Author’s Law, even if law, published works (not private documents) must be depos- for some academics the concepts are not comparable in their ited at the National Public Library, at the National Audiovisual substance. Institute or at the National Cinema Centre, or at habilitated libraries (article L133-1 of the Inheritance Code). Such deposit 1.2 Does your jurisdiction operate an open or closed is required for conservation and public policy reasons and is list of works that can qualify for copyright protection? independent from copyright law. Cinema films available in movie theatres and corresponding contracts on these films must Article L.112-2 of the ICP establishes an open list of protect- be registered at the Public Registry of Film and Broadcasting. able works. It includes “in particular”, books, lectures, dramatic, Such registration establishes ownership of rights and is neces- choreographic, musical and cinematographic works, as well as sary to enforce contracts upon third parties. works of drawing, painting, sculpture and architecture. As this list is not exhaustive, the judicial courts may acknowl- 1.6 What is the duration of copyright protection? Does edge the originality, and therefore protection, of works other this vary depending on the type of work? than those listed in this article. Moral rights have no time limit and may be exercised by heirs. 1.3 In what works can copyright subsist? Regarding economic rights, the duration of copyright protection comprises the author’s entire life plus the 70 years following All works are protected as long as they are original works which the year of his or her death. Collaborative works are protected are materialised in any form of expression. Characteristics such during the authors’ entire lives plus 70 years from the death as genre, form of expression, merit or purpose of the work are of the last contributor. Published pseudonymous, anonymous irrelevant. (unless the author’s identity is then known) or collective works are protected for 70 years starting from the year following their publication. When such work is published in instal- 1.4 Are there any works which are excluded from ments, the 70-year term runs from 1 January of the calendar copyright protection? year following the date on which each instalment was published. Pseudonymous, anonymous or collective works published Concepts and ideas do not benefit from copyright protection at least 70 years after their creation are protected for 25 years because they are not considered to be works materialised in a from the year of publication. Registered industrial designs are form of expression. protected during a five-year term, which can be renewed five times. Unregistered industrial designs are protected for a period of three years from the date on which the design was first made

available to the public within the territory of the European 2.2 Where a work is commissioned, how is ownership Union. Databases may be protected for a 15-year term from the of the copyright determined between the author and the establishment of the database. Topographies of semi-conductors commissioner? are protected for a 10-year term from the end of the calendar year in which the application for registration was filed or from the end Firstly, a hiring party may own authors’ rights once they have of the calendar year in which the layout was first commercially been created and assigned according to the provisions of the exploited, whichever comes first. IPC, which contain compulsory provisions regarding the form of the assignment (in writing most of the time), the specification 1.7 Is there any overlap between copyright and other of each assigned right as well as the determination of royalties. intellectual property rights such as design rights and Secondly, a hiring party may also own authors’ rights on collec- database rights? tive works; collective works are works created on the initiative of a person in which the personal contributions of the various Yes. In the European Union, and more specifically in France, authors who participated in it are merged in the overall work, in addition to copyright law, intellectual property law includes without it being possible to attribute to each author a sepa- the following rights which are closely associated with copyright rate right in the work as created. Thirdly, a hiring party may law: neighbouring rights; rights for sports event organisers; own rights under simplified assignments in case of audiovisual industrial design rights; database rights; and the rights specific production contracts, works created for advertising or in case of to topographies of semi-conductors. The additional conditions computer programs. In any case, in France, copyright is inde- required by each right are the following: pendent of any property right associated with a physical object. ■ Neighbouring rights: there must be a performance for performers’ rights; there must be initiative and responsi- 2.3 Where a work is created by an employee, how is bility for the initial fixation of a sequence of sounds for ownership of the copyright determined between the phonogram producers; there must be initiative and respon- employee and the employer? sibility for the initial fixation of a sequence of images for videogram producers; and there must be a program for an Under French law, an employee who creates a work remains audiovisual communication enterprise. the owner of the copyright of such work. Exceptionally, the ■ Rights for sports event organisers: there must be a sports economic rights in software and its documentation created event or competition. by one or more employees in the execution of their duties or ■ Rights for industrial designs: there must be novelty and following the instructions given by their employer shall be the individual character. property of the employer, and he or she shall be exclusively enti- ■ Database rights: there must be substantial investment in tled to exercise them. As an exception, works created by civil the content, presentation or checking of the content of the servants during the exercise of their functions, or as a result of database. following instructions, are subject to the following rules: ■ Rights for topographies of semi-conductors: must be ■ the state is the owner of the patrimonial rights on the use the result of the creator’s own intellectual effort and not of works strictly necessary for a mission relating to public commonplace in the semi-conductor industry. service; and Depending on the circumstances of each case, intellectual ■ the state shall own a preference right for the commercial property protection may involve only one, several or all of the use of the work. above-mentioned rights.

2.4 Is there a concept of joint ownership and, if so, 1.8 Are there any restrictions on the protection what rules apply to dealings with a jointly owned work? for copyright works which are made by an industrial process? Yes. Jointly owned works are subject to general civil law rules. Thus, co-ownership may be subject to agreements between right The required condition for copyright protection is that the work holders. Furthermore, the IPC provides that collaborative works is the expression of the author’s personality, whatever the form must be exercised jointly, and that when there are different types of expression. It does not matter if the work is made by an indus- of contribution from different authors, each of the joint authors trial process, as long as it shows the expression of the author’s may exploit separately his own personal contribution, provided it personality. For instance, industrially manufactured furniture does not prejudice the exploitation of its own work. or clothing may be protected by copyright if it is established that the shape of the product is the expression of the author’s personality. 32 Exploitation

22 Ownership 3.1 Are there any formalities which apply to the transfer/assignment of ownership?

2.1 Who is the first owner of copyright in each of the works protected (other than where questions 2.2 or 2.3 Yes. The IPC provides mandatory provisions regarding the apply)? transfer of copyright. The agreement must mention each right assigned, the scope of the assignment and proportionate royalties, unless the conditions set by the IPC that allow payment The copyright, which can be assigned once the work has been of a lump sum are met (not possible to calculate the propor- created, is owned by the author of the work. Under French law, tional royalties, assignment regarding a computer program, first the global assignment of future works is prohibited. The person edition of a scientific work, and so on). Audiovisual contracts under which the work has been published is deemed to be the must be in writing. author.

3.2 Are there any formalities required for a copyright perpetual, inalienable and imprescriptible. Civil servants who licence? are authors have restrictions with regards to the right of disclosure and use of their work. Copyright licences are subject to general contract law. Audiovisual contracts must be in writing. The IPC also provides 4.3 Are there circumstances in which a copyright that rights may be licensed with no financial charge (articles owner is unable to restrain subsequent dealings in works L122-6, L122-7 and L131-2). which have been put on the market with his consent?

3.3 Are there any laws which limit the licence terms Yes. European law provides that once the sale of physical objects parties may agree to (other than as addressed in of a work has been authorised by the right owner in the EU, the questions 3.4 to 3.6)? subsequent sale of such object cannot be prohibited by the latter.

Under general contract law, licences with an indefinite duration 52 Copyright Enforcement have been cancelled by courts. 5.1 Are there any statutory enforcement agencies and, 3.4 Which types of copyright work have collective if so, are they used by rights holders as an alternative to licensing bodies (please name the relevant bodies)? civil actions?

Musical works may be licensed to the musical composers’ The French government agency against fraud, DGCCRF, may society (SACEM: https://www.sacem.fr), drama and audio- initiate investigations of infringement, seize infringing goods visual works may be licensed to the drama composers’ society and send the file to the Public Prosecutor who may then initiate (SACD: https://www.sacd.fr), multimedia works to the multi- infringement proceedings. The French and the European media authors’ society (SCAM: https://www.scam.fr) and Observatories on Infringements of Intellectual Property Rights written works to the society for authors of the written word have no direct enforcement powers and are focused on collecting (SGDL: https://www.sgdl.org). Also, the Computer Programs data and promoting IP rights. Regarding digital infringement, Agency (APP: https://app.legalis.net) contributes to the protec- the HADOPI is a French government agency that sends warning tion of the rights of computer programmers, and can carry out messages to internet users to monitor their internet access so that the seizure of computer programs and databases. it is not used to spread or copy digital content protected by copyright. This agency also ensures that the existing technical protec- 3.5 Where there are collective licensing bodies, how tion measures to protect copyright or related rights do not, due are they regulated? to their mutual incompatibility or inability to inter-operate, cause unjustified limitations to the use of a work. The above-mentioned collecting societies are privately regulated and subject to general law provisions such as European competi- 5.2 Other than the copyright owner, can anyone else tion law (ECJ case n° C 351/12). bring a claim for infringement of the copyright in a work?

3.6 On what grounds can licence terms offered by a The author who has transferred copyright may still enforce collective licensing body be challenged? moral rights. Also, article L321-1 of the IPC sets an exception in French procedural law and allows societies that collect Licence terms can be challenged on any legal grounds. For and distribute authors’ royalties, and the royalties of performers instance, provisions that have an anti-competitive effect can be and phonogram and videogram producers, to take legal action cancelled (CFI case n° T-422/08 and ECJ case n° C 351/12). before the courts to defend the rights for which they are responsible under their statutes (article L321-1 of the IPC). Customs 42 Owners’ Rights and the Public Prosecutor may also initiate actions to enforce copyright and neighbouring rights.

are listed in article L122-5 of the IPC. They include private counselling the client. For first instance proceedings, these fees representations or reproductions, press reviews, dissemination range from EUR 8,000 to EUR 30,000 or more depending on of political speeches, parodies and caricatures, exceptions to the case. There are bailiff fees of at least a couple of thousand authors’ rights available to libraries and museums, the reproduc- euros for performing the seizure and a couple of hundred euros tion or representation of works for informative purposes and for executing the decision (notification, seizures of accounts, so on. etc.). The legal costs of first instance proceedings range from a For instance, based on EU Directive n° 2001/29 and on the couple of hundred euros to a couple of thousand euros. There ‘theory of accessory’, the Supreme Court ruled that the appear- may be expert fees if an expert is appointed by the court; for ance of protected illustrations within a movie was not subject instance, to assess the damages. These fees range from EUR to prior authorisation of the author, since the latter only appear 5,000 to more than EUR 50,000 in cases involving complex as a usual element of the movie’s set and are not shown in the issues. As a matter of principle, the loser has to pay the other normal course of their use (Cass Civ 1, May 12, 2012, RIDA n° party’s legal costs and attorney fees (more and more French 229 p.457). courts grant a lump sum for attorney fees close to the fees justi- As provided by international and EU laws, the exceptions fied by produced invoices). In certain cases, the judge may not listed in article L122-5 mentioned above must meet the condi- order compensation for the fees and expenses to the other party tions of the ‘triple test’ and must: if the judge decides to take into account the economic situation ■ correspond to one of the exceptions listed in the law; not of the loser or decides such payments would not be fair. conflict with a normal exploitation of the work; and ■ not unreasonably prejudice the legitimate interests of the 5.8 Is there a right of appeal from a first instance author. judgment and, if so, what are the grounds on which an French law provides specific conditions for the liability appeal may be brought? of internet service providers (due notification and delay in responding to notification). Thus, in cases where the service An appeal may be filed within one month of the notification of provider had an active role in treating the information or when the decision. A two-month extension to this deadline is granted the service provider has, after a due notification, delayed in to parties located outside of France. After a formal appeal, withdrawing the infringing content, courts have considered that the appellant must present its motives within three months. there was a liability for infringement. In practice, most appeals cover the right to contest all aspects of the judgment. Once the appeal is filed, the non-appealing 5.5 Are interim or permanent injunctions available? party may also contest the first instance ruling within the appeal proceedings. Preliminary injunctions may be granted prior to trials on the merits should plaintiffs establish that the infringement is not 5.9 What is the period in which an action must be seriously arguable (Supreme Court, December 19, 2013, case commenced? n° 12-29499). Preliminary injunctions may also be granted in case management orders during proceedings on the merits. The general five-year time limit for seeking remedies applies for Furthermore, successful plaintiffs on the merits are very authors’ rights. In any case, a delay in initiating an action may commonly granted injunctive relief. Under French practice, lead to less important remedies because of a sort of tacit accept- injunctive relief is granted under penalties per day of delay or ance. In addition, in the case of a non-identical copy, it may be a per infringement to the injunction with the benefit of imme- persuasive element for lack of infringement, as the plaintiff has diate execution (there is no suspension of the injunction even if not immediately initiated proceedings. an appeal is lodged). 62 Criminal Offences 5.6 On what basis are damages or an account of profits calculated? 6.1 Are there any criminal offences relating to copyright infringement? As a matter of principle, damages tend to repair the damage resulting from the infringement. Their assessment will deter- Criminal law provisions cover infringement activity as well as mine whether the plaintiff is entitled to lost sales or to a ‘licence actions that purposefully harm technical measures intended to fee’ depending on whether the work protected by copyright is safeguard works protected by authors’ rights or neighbouring used. In any case, upon the plaintiff’s request, the jurisdiction rights. may allocate a lump sum, which shall be no less than the royalty fee the infringer would have paid if he had been authorised to do so. Furthermore, since law n° 2014-315 of March 11, 2014, 6.2 What is the threshold for criminal liability and what parties and jurisdictions must, when assessing the damages, are the potential sanctions? distinguish between the negative economic consequences to the right holder, the moral damage to the latter and the profits made Copyright infringement is ruled by criminal law provisions, by the infringer (article L331-1-3 of the IPC). which have been applied to civil law proceedings. In criminal law proceedings it is important to show wilfulness. Potential 5.7 What are the typical costs of infringement sanctions include up to five years’ imprisonment and a fine of proceedings and how long do they take? EUR 500,000. Penalties also include the suspension of access to an online communications service for wrongdoings committed with an online communications service. There are attorney fees for requesting seizure orders, bringing an action, presenting court petitions, pleading the case and

72 Current Developments Two articles sparked a few debates: ■ Article 15: Online news publishers get a neighbouring right for two years after the publication of a press article (article 7.1 Have there been, or are there anticipated, 15§4). On July 24, 2019 France adopted an Act which any significant legislative changes or case law allows press agencies to negotiate royalties with online developments? platforms (Google News, Facebook, Twitter, etc.) when they have used extracts of articles or videos protected by Copyright has been subject to a few decisions: on February 20, copyright. Act n° 2019-775 creates a dedicated chapter in 2019, the French Supreme Court stated that refusing to return the French Intellectual Property Law Code called ‘Rights of the drawings which draft a movie that was not produced is not press publishers and news agencies’ (Droits des éditeurs de presse et an infringement of the copyright owners’ rights, if the latter do des agences de presse). not prove their will to exploit their work (Cass. 1re civ., February ■ Article 17: Platforms such as YouTube or Facebook have 20, 2019, n° 17-19.273 and n° 17-18.415). to finalise an agreement with the owner of copyrights in Also, the Versailles Court of Appeal ruled, after a decision order to pay the author when his/her creation is used. If by the Supreme Court, that the right to respect of one’s work is no agreement is made, the platforms are held liable. The considered confined when the creator agreed to an adaptation, opposition to the Directive is concerned that this disposi- had he or she found it a denaturation of the original. Indeed, in tion will lead to censorship of such platforms. this case, even though the staging was drastically different, the core subject and texts were not altered (CA Versailles, 1re ch., November 30, 2018, n° 17/08754). 7.3 Have there been any decisions or changes of law regarding the role of copyright in relation to artificial The Supreme Court held various rulings regarding remunera- intelligence systems, including the use of copyright tion of copyrighted works including case n° 18-23.752, February in those systems and/or any work generated by those 5, 2020, where EU professional sellers of blank recording media systems? used for the reproduction of protected works may be liable to pay a private copy levy and case n° 18-21.211, December 11, 2019, The next changes affecting artificial intelligence will take place where retailers that broadcast music from commercial platforms at the time of transposition into French law of Articles 3 and 4 in their stores may be liable to pay an equitable remuneration. of the Copyright Directive 2019/790 of 17 April 2019. These provisions concerning “text and data mining” (TDM), 7.2 Are there any particularly noteworthy issues around a search process based on AI that allows, through computer the application and enforcement of copyright in relation processing, information to be identified among large amounts to digital content (for example, when a work is deemed of data. It is a new exception to copyright to the extent that to be made available to the public online, hyperlinking, access to works would be allowed for the needs of the TDM. etc.)? On 10 June, the Conseil supérieur de la propriété littéraire et artistique (CSPLA), which depends on the French Ministry of Culture, The digital community had its eyes turned toward Brussels in launched a new mission dedicated to the implementation of the Spring 2019 as on April 15, 2019 the Council of the European text and data mining directive as defined by Directive 2019/790 Union passed the Directive on Copyright in the Digital Single and intended to facilitate access to learning data, which is essen- Market adopted by the Parliament on March 26, 2019. The goal tial in the field of artificial intelligence. is modernisation of the EU copyright framework. The objective is to make EU copyright rules fit for the digital age. The Directive notably ensures online news publishers and creators will earn royalties if their work is used by a platform such as YouTube or Google News.

Catherine Mateu, a partner with Armengaud Guerlain, has more than 15 years of experience in French and European Intellectual Property law, serving clients that range from inventors, designers, non-profit groups and local start-ups to multinational corporations. Her practice focuses on finding timely and cost-effective solutions to a wide array of patent, copyright, trademark, design infringement, strategic advice and licensing matters. Catherine Mateu holds a post-graduate degree in Domestic and European Business Law from the Université de Nancy II, an LL.M. in Common Law from the University of East Anglia in Britain, a DESS in Industrial Property from the Université de Paris II, and a DEA in Private International Law from the Université de Paris I. She has been a lawyer at the Paris Bar since 1999, and has received Intellectual Property certification from the French Bar Association. She is bilingual in French and Spanish, and fluent in English and Basque. Catherine Mateu is a regular speaker at Intellectual Property conferences, and has been ranked in industry publications such as IP Stars, The Legal 500, Les Décideurs, Women in Business Law, Chambers and Who’s Who. She is a member of the following associations: AIPPI – regular participant in the AIPPI Working Committees, reporter of the French group Q230 and Co-President of the Designs Committee; APRAM – member of the International and Community Relations Committee; INTA – Co-chair of the Public Resources Committee and former Chair of the Promotion and Outreach Subcommittee, former Chair of the Trade Dress Image Library Subcommittee, former member of the Small and Medium-Sized Enterprises Task Force, and the French contributor to Trade Dress International Practice and Procedures; ADIJ – member of the Public Markets and New Technologies Committee; and EPLAW – Commentator and rapporteur to the drafts of the rules of procedure on the Unified Patent Court.

Armengaud Guerlain Tel: +33 1 4754 0148 12 avenue Victor Hugo Email: [email protected] 75116, Paris URL: www.armengaud-guerlain.com France

Armengaud Guerlain, founded in 1993, is fully specialised in intellec- identical to ours, thereby enabling us to treat files simultaneously in several tual property (patents, trademarks, designs and models, and copyright) countries. In addition to French, the firm’s daily working languages include and the related issues of unfair competition, consumer law, advertising English and Spanish. rights (particularly comparative advertising) and the internet. Reflecting www.armengaud-guerlain.com its well-recognised expertise, the firm has worked with a wide variety of French and international clients, from artists and inventors to blue-chip companies, governments and state-owned enterprises. The firm places particular emphasis on maintaining lasting, high-quality relationships with its clients, combining competence and reactivity. Each file is treated in a collaborative manner. Armengaud Guerlain works with a network of foreign colleagues selected for their high level of technical competence and their use of work methods

Silke Freund

BOEHMERT & BOEHMERT Dr. Sebastian Engels

12 Copyright Subsistence 1.3 In what works can copyright subsist?

1.1 What are the requirements for copyright to subsist Generally, copyright can subsist in any work meeting the in a work? requirements explained above (in essence: individual creation by a natural person in a perceptible form reaching the minimum Copyright will be granted for the work of an author if the work threshold of individuality). Furthermore, derivative works is the author’s own intellectual creation. A work protected under (Section 3 GCA) and collective works as well as collections and Section 2 GCA (German Act on Copyright and Neighbouring database works (Section 4 GCA) are protected like independent rights) must meet the following criteria. It must be: works. Section 1 GCA names works in the literary, scientific and ■ a personal creation (i.e. man-made creation), which is artistic domain. The non-exhaustive list in Section 2 GCA perceptible to other people; and enumerates, in particular, (such as written ■ shows sufficient individuality, thereby exceeding a literary works works, speeches and computer programs), , certain “level of originality”. musical works The decisive hurdle for copyright protection lies in sufficient pantomimic works (including works of dance), artistic works individuality of the work, which exceeds the required level of (including works of architecture and of applied art and drafts of originality. This criterion distinguishes a protected work from such works), photographic works (including works produced purely technical or routine creations, which are predetermined by processes similar to photography), cinematographic works by objective restrictions or standards rather than being an (including works produced by processes similar to cinematog- expression of the author’s creative power. raphy), and illustrations of a scientific or technical nature Although the German courts are still reluctant to fully adapt it, (such as drawings, plans, maps, sketches, tables and three-di- it can be assumed that CJEU has developed a general European mensional representations). concept of copyrightable works based on the Information Although the catalogue in Section 2 GCA is not exhaus- Society Directive, which applies across all types of works and tive, courts are rather reluctant to develop new types of works according to which the threshold of protection must be set low. and tend to categorise creations under already existing types In reaction, the Federal Supreme Court adapted its position of works. For example, courts often justify the protection regarding applied art and also accepted the low threshold for of computer games as cinematographic works. One type of individuality for applied art. Consequently, most personal crea- work not explicitly mentioned in Section 2 GCA and accepted tions will be awarded copyright protection; however, a low level in case-law is multimedia works in which several elements of individuality may result in limited scope of protection. of different media are combined into a coherent work. This A creation which does not exceed the required level of origi- includes, for example, websites which, independently of the nality can be eligible for neighbouring rights which are granted copyright protection of individual elements, can also enjoy for certain artistic achievements, or technical, financial or protection as multimedia works in their entirety. organisational investments connected to the exploitation of a work. 1.4 Are there any works which are excluded from copyright protection?

1.2 Does your jurisdiction operate an open or closed list of works that can qualify for copyright protection? Creations that lack individuality are excluded from copyright protection, as they are not considered works in the sense of Section 2 (1) of the German Copyright Act (“GCA”) provides Section 2 GCA, e.g. objets trouvés and ready-mades (objects of a list of copyrightable works, which is non-exhaustive. The list everyday life). explicitly stipulates that the works enumerated are mere exam- Another important exclusion criterion for copyright protec- ples of copyrightable works. Copyright protection is therefore tion is the principle that the mere idea, which has not yet expe- not limited to already existing types or work, but open to new rienced sufficient manifestation, must remain in the public ones. domain. This concerns, for example, the copyright protec- Further, within the German Copyright Act other types of tion of television show concepts, game or advertising ideas. It works are mentioned that are not included in the list which also always depends on the individual case whether the concept is enjoy copyright protection. already sufficiently manifested to justify copyright protection, although courts tend to be rather reserved here. Irrespective of

this, the concrete design or individual elements of the design of In principle, only human creative activity is protected, so that the shows, games or advertising can be protected by copyright, a creation made solely by a machine or an industrial process does provided they are sufficiently individual. not fulfil those requirements and therefore is excluded from In addition, Section 5 GCA stipulates that official works such copyright protection. as statutory acts, statutory instruments, official decrees and offi- However, a natural person can use a machine as an aid in crea- cial notices, as well as decisions and official head notes of deci- tion. As long as the result of the process is predetermined by sions do not enjoy copyright protection. The same applies to clear instructions from the person, the output may be protect- other official texts published in the public interest for general able as a copyrightable work. information purposes, although with certain restrictions. 22 Ownership 1.5 Is there a system for registration of copyright and, if so, what is the effect of registration? 2.1 Who is the first owner of copyright in each of the works protected (other than where questions 2.2 or 2.3 apply)? An author enjoys copyright protection for a work upon its creation. Hence, the registration of a work is not required for its protection. However, in order to be able to prove the authorship and the According to Section 7 GCA, the creator of the work is the author date of origin of a work, it is possible to deposit the work, e.g. and thus the original holder of copyright. This principle ties in with a notary or a similar office. solely with the intellectual act of creation and applies univer- sally, regardless of whether the creator is in a service or employment relationship. Furthermore, it is not possible to renounce or 1.6 What is the duration of copyright protection? Does assign the copyright as an author by agreement. The author can this vary depending on the type of work? only waive certain specific moral rights or exploitation rights for the future. If several authors have jointly created a work without According to Section 64 GCA, the copyright expires 70 years their shares being separately exploitable, they are co-authors of after the author’s death. This applies to the duration of copy- the work according to Section 8 GCA. right regarding every type of work. In case of several authors Neighbouring rights, which protect certain efforts similar jointly holding copyright in a work, the copyright expires 70 to copyright, are partly based on a more economic approach. years after the death of the last surviving joint author as stipu- The neighbouring rights of the audio-carrier producer (Section lated in Section 65 GCA. Specific provisions for the duration 85 GCA) or the neighbouring right of the producers of films of copyright in cinematographic works and works produced in a (Section 94 GCA) arise, for example, with the person or entity manner similar to cinematographic works, or that of a musical providing the main economic, technical or organisational effort. composition with text define which authors have to be considered in determining the last surviving joint author. The copyright protection of anonymous or pseudonymous 2.2 Where a work is commissioned, how is ownership of the copyright determined between the author and the works expires 70 years after its publication, or, if the work is not commissioner? published, 70 years after its creation. Neighbouring rights have different protection durations depending on the right in question ranging from one year to As stated in question 2.1, copyright always accrues to the person 70 years. who created the protected work, regardless of whether the work was commissioned or created on his/her own initiative. It is not possible to renounce or assign the copyright as an author by 1.7 Is there any overlap between copyright and other agreement. In German copyright law, therefore, the model of intellectual property rights such as design rights and “work made for hire” does not exist. The author can only grant database rights? rights of use to the work. It is therefore important to provide for a sufficiently broad grant of rights in contractual agreements spec- In general, different types of intellectual property rights have a ifying the rights of use assigned to the commissioner of a work. separate scope of protection. Nonetheless, the scope of rights granted by different intellectual property rights can overlap. As such, different aspects of 2.3 Where a work is created by an employee, how is ownership of the copyright determined between the a creation can be protected under copyright as well as under a employee and the employer? trademark, design right or a patent simultaneously. In particular, design rights and copyright may overlap, if a specific design is sufficiently individual to be protected by copyright. The German copyright concept of the relationship between A Database can enjoy copyright protection according to employer and employee complies in principle with the relation Section 4 GCA, as long as the selection and arrangement of the of author and commissioner. elements contained in it are based on a creative process. If a Only the person who creates a work can be the legally recog- database is not created in such manner, the investment into the nised author of that work. The model of “work made for hire” database can still be protected by a neighbouring right granted does not apply under German copyright law and the employer to the maker of a database (Section 87a GCA). can only be granted rights of use to the employee’s work (insofar as the employer has not become a co-author through his/her own creative contribution). Other than with freelance 1.8 Are there any restrictions on the protection contracts, however, in the case of employment and service for copyright works which are made by an industrial contracts Section 43 GCA establishes the presumption rule process? that the employer is entitled to the rights of use of the works created within this employment relationship to the extent that As long as the created work fulfils the requirements mentioned the employer needs those rights for operational exploitation of in question 1.1, there are no restrictions on copyright protection. the work.

Despite this presumption rule, it is advisable to provide This instrument becomes particularly relevant when exten- clauses in employment contracts specifying the grant of rights sive rights of use are granted in exchange for a flat fee payment. in order to avoid legal uncertainties. Although “total buy-outs” with flat fees are not per se inad- missible and case law recognises, for example, that flat fees are sometimes customary in the film industry, the fees must 2.4 Is there a concept of joint ownership and, if so, be calculated in such a way that they guarantee an appropriate what rules apply to dealings with a jointly owned work? share of the total revenue from the exploitation of the work. In particular, since the author must also be appropriately involved Joint ownership of copyrights exists if several parties have each in the further exploitation of the work and due to the risk that made an individual creative contribution to a work. There are only initial use is compensated by flat fees, it is possible that in two alternatives: case of a continuous use, a disproportionality may emerge which ■ A joint ownership as co-authors concerning one work makes the overall remuneration appear inequitable. This may (Section 8 GCA). result in a claim by the author for adjustment of the contract ■ A joint ownership as co-authors concerning compound and extensive additional remuneration. Therefore, in most cases works (Section 9 GCA). negotiating a proportionate participation of relevant authors at The first alternative is the result of the cooperation of more least for continuous exploitation of a work is recommendable. than one author, who have jointly created one intellectual work, In addition to the copyright contract law regulations, the whereas it is impossible to separately exploit their individual general contract law, in particular, the law on terms and condi- shares in the work. Compound works can be exploited sepa- tions also applies to licence agreements. Thus, a copyright rately or as a whole. agreement or parts of it can be void when its content does not comply with legal stipulations such as criminal law (e.g. pornog- 32 Exploitation raphy), social law (e.g. Labour Promotion Act) or is contrary to public policy or simply disadvantages the author.

3.1 Are there any formalities which apply to the transfer/assignment of ownership? 3.4 Which types of copyright work have collective licensing bodies (please name the relevant bodies)? Under German copyright law, the copyright ownership is not transferable other than by inheritance. The author can only There are 13 collecting societies in total, with the following grant rights of use to third parties. being the most important ones: ■ Musical works and neighbouring rights: ■ Society for musical performances and mechanical 3.2 Are there any formalities required for a copyright reproduction rights (“GEMA”). licence? GEMA represents the interests of composers and lyricists of musical works as well as the Music Publisher. In principle, copyright licences are not subject to any formal ■ Society for the exploitation of neighbouring rights requirements. An exception is Section 31a (1) GCA, according (“GVL”). to which a contract by which the author grants or undertakes to GVL exercises the neighbouring rights of performers, grant rights for unknown types of use requires the written form. organisers of artistic performances, phonogram Irrespective of the freedom of form for copyright licences, producers and producers of video clips. it is advisable to conclude a written agreement that is as ■ Literary works and neighbouring rights: precise as possible. In case of doubt, only those rights of ■ Collecting Society Word (“VG Wort”). use are granted which are strictly necessary for the purpose VG Wort exercises the rights of word authors and of the contract, according to Section 31 (5) GCA (so-called publishers, i.e. all linguistic works, such as written works, speeches and computer programs. “Zweckübertragungslehre”). This interpretation rule mostly works ■ Visual works and neighbouring rights: in favour of the author. It is therefore customary to conclude ■ Collecting Society Picture Art (“VG Bild-Kunst”). licence agreements with a precise rights clause. VG Bild-Kunst represents the rights of visual artists, photograph and film creators as well as authors of all 3.3 Are there any laws which limit the licence terms types of representations. parties may agree to (other than as addressed in ■ Audio and audio-visual works and neighbouring rights on questions 3.4 to 3.6)? television and radio: ■ Society for the exploitation of copyrights and neigh- Rights of use can be granted exclusively or non-exclusively, bouring rights of media companies (“VG Media”). limited or unlimited in space, time or content and with regard VG Media represents the rights of private broadcasters to different types of use, including those that are not known yet. and publishers in the digital sector. According to Section 34, 35 GCA, the transfer of rights of use as A full list of existing collecting societies can be found on the well as sublicensing requires the consent of the author. website of the German Patent and Trademark Office: https:// German copyright law has a comprehensive system safe- www.dpma.de/dpma/wir_ueber_uns/weitere_aufgaben/verwer- guarding appropriate remuneration of the author, which is tungsges_urheberrecht/aufsicht_verwertungsges/liste_vg/index. html. now in part also stipulated in Art. 18 of the EU Directive on Copyright in the Digital Single Market. While a contract with inappropriate remuneration does not become invalid, the author, 3.5 Where there are collective licensing bodies, how who is not paid an adequate remuneration for the granting of are they regulated? rights, has a right to have the contract amended and has comprehensive rights for information and accountability to enforce the The collective licensing bodies are regulated according to claim for adequate remuneration. the Act on the Management of Copyright and Neighbouring

Rights by Collecting Societies (“VGG”), supervised by the be assigned other than by reason of death of the author (Section German Patent and Trade Mark Office (“DPMA”), which 29 (1) GCA). Nonetheless, in some cases, authors contractually differs between collecting societies, dependent and independent waive moral rights or undertake not to assert them. However, management entities. some rights like the right to revoke an exclusive right of use for Foreign collecting societies are supervised by the DPMA non-exercise cannot be waived in advance (Section 41 (4) GCA). according to the law of their domicile if they operate within Special provisions can deviate from those general rules and Germany. However, the foreign company requires a licence limit the scope of protection. For instance, as a general rule from the supervisory authority for this purpose. authors of works have the right to prohibit the distortion or Additionally, the regulation takes place indirectly through the any other derogatory treatment of their work which is capable EU Directive on collective management of copyright and related rights and of prejudicing their legitimate intellectual or personal inter- multi-territorial licensing of rights in musical works for online use in the ests in the work (Section 14 GCA), whereas authors of a cine- internal market. matographic work can prohibit only gross distortions or other gross derogatory treatment of their works. 3.6 On what grounds can licence terms offered by a Moral rights exist accordingly in neighbouring rights, e.g. with collective licensing body be challenged? regards to photographs and products manufactured in a similar manner to photographs or performances, but only to a limited extent. The licence must be an appropriate compensation for the specific An ancillary right is, e.g. the right to adequate remunera- use of a work in question. If the licence is not considered appropriate for the specific use by the party requesting a licence, it tion (Section 32 GCA) in case the amount of remuneration for can be challenged. Before legal proceedings can be initiated the use of a copyrighted work is not agreed on or the contract the claimant party shall first recourse to the competent arbitra- governing the remuneration of the use of the work needs to be tion board, located in Munich at the German Patent and Trade adjusted as the agreed remuneration is not adequate. The claim Mark Office. The arbitration board will provide a proposal for to adequate remuneration can be waived or assigned. an appropriate compensation, which is usually accepted by the courts as an appropriate compensation. The claimant has the 4.3 Are there circumstances in which a copyright possibility to obtain a temporary licence by depositing the chal- owner is unable to restrain subsequent dealings in works lenged excessive portion of the licence fee. which have been put on the market with his consent?

42 Owners’ Rights Yes. Where the original or copies of the work have been put into circulation with the consent of the person entitled to 4.1 What acts involving a copyright work are capable of distribute them within the territory of the European Union being restricted by the rights holder? or the European Economic Area, their dissemination shall be permissible, except by means of rental (Section 17 (2) GCA). Copyright protects the moral and economic interests of the The copyright of the work in question is then exhausted to the author. An author’s moral rights include the right to decide extent that the copyright holder cannot prohibit further distri- whether and how the work will be initially published (Section bution of the specific copies in question. This does not mean 12), the right to be recognised as the author (Section 13) and the a general exhaustion of the copyright as other dealings like the right to prohibit the distortion of the work (Section 14). In addi- reproduction, broadcasting or public communication of the tion, copyright covers an author’s exclusive exploitation rights work are not covered by exhaustion. However, the exhaustion with regards to the work in its material form (meaning the orig- extends to the right of the acquirer to adequately advertise the inal of the work or copies of it) and non-material form (meaning copies put into circulation, e.g. for sale, even by means of repro- the right of communication to the public). According to Section duction by depicting the specific good in question. 15 (1) GCA, the exploitation rights in the work’s material form To which extent the principle of exhaustion may also apply to cover the rights of reproduction, distribution and exhibition. immaterial copies of a work is a matter of ongoing discussions. The exclusive right of communication to the public (Section For software it is, for example, accepted by case law that imma- 15 (2) GCA) compromises the right of recitation, performance terial copies of the software might under certain circumstances and presentation, the right of making the work available to the be subject to exhaustion. public, and the right of broadcasting. The same applies to the holder of neighbouring rights: 52 Copyright Enforcement although the exclusive exploitation rights awarded to the owner of neighbouring rights vary and are not as broad as that of a 5.1 Are there any statutory enforcement agencies and, copyright owner. if so, are they used by rights holders as an alternative to civil actions? 4.2 Are there any ancillary rights related to copyright, such as moral rights, and, if so, what do they protect, No, in Germany there are no legal enforcement agencies in and can they be waived or assigned? copyright law. Certain acts of copyright infringement might, however, be subject to criminal prosecution. Moral rights protect the moral interests of an author and his/her relation to the work. They include the right to decide whether and how the work will be initially published (Section 12), the 5.2 Other than the copyright owner, can anyone else bring a claim for infringement of the copyright in a work? right to be recognised as the author (Section 13), the right to prohibit the distortion of the work (Section 14) or the right to revoke a right of use for changed conviction (Section 42 GCA). In principle, only the author himself or herself or the copyright As such, moral rights are an integral part of copyright and not holder can claim an infringement of his or her rights. Owners merely ancillary. Unlike the right of use of a work, the copyright of neighbouring rights are treated equally to authors as well itself and the moral rights it entails are inalienable and cannot as to the purchasers of these rights. However, if the exclusive

rights of use are transferred to a third party, the third party can In urgent cases, claims for injunctive relief can be enforced also assert its own claims in the event of an infringement of the by way of an interim injunction. The urgency can be waived, in exploitation right for which the holder has an exclusive right of particular, if the injured party waits too long with the enforce- use. ment of its claims. Before an injunction is applied for, a warning In the event of an infringement of an exploitation right, the letter is usually sent to the infringer. Although there is no legal holder of a non-exclusive right of use is not entitled to any claim, obligation to send prior warning letters, the infringed party risks but may under specific circumstances enforce the claims of the bearing the costs of the legal dispute in cases where no prior author with the author’s consent. warning letter was sent if the infringer immediately acknowl- Special rules apply to the enforcement of rights by collecting edges the claim in court proceedings. In case the response to societies. a warning letter is provided with the application for injunctive relief, German courts might even grant an injunction without a prior oral hearing and without notifying the infringer. 5.3 Can an action be brought against ‘secondary’ infringers as well as primary infringers and, if so, on what basis can someone be liable for secondary 5.6 On what basis are damages or an account of profits infringement? calculated?

The copyright claim is primarily directed against the infringer There are three alternatives for calculating damages: himself, although participants and instigators can also be liable. 1. compensation for the actual loss of assets; Furthermore, parties who are only indirect perpetrators or 2. the infringer’s profit; or co-responsible for the infringement under specific circum- 3. a reasonable hypothetical licence fee. stances might also be liable for injunctive relief but not The latter is the most relevant method for calculating damages. In these cases, the infringer must have contributed damages, as the actual loss is often difficult to quantify and to the infringement of copyright while he had the legal possi- claiming the infringer’s profit might only lead to small compen- bility to prevent it and further breached a duty of care. The sations in the case of unprofitable infringements. When calcu- duty of care may depend on various factors, such as the business lating the damages under the hypothetical licence, it is irrele- model, function and legal obligations of the party contributing vant whether a licence agreement would have been concluded to the infringement as well as the social adequacy of the partic- at all. The conclusion of a licence is assumed and the amount ipation. Host providers/content providers who provide their of the licence fee is calculated according to what “reasonable users with storage space for content will usually not be liable contracting parties” would have determined. Courts employ as an indirect perpetrator before being notified of an ongoing several means to calculate the fee. If the injured rights holder infringement utilising their services. In the case where the busi- has a licensing practice, such practice can usually be used for ness model of a hosting provider is designed from the outset calculation of damages. In the absence of a licensing practice, for an infringement of rights by the users, the host might also courts frequently refer to the fee catalogues which are published be liable as an indirect perpetrator even without prior knowl- by various professional associations, for example with regard to edge. Also, the controversial Directive on Copyright in the professional photographs. Digital Single Market of 2019 brought a change with regard to providers of user-generated content which give the public access to a large amount of copyright-protected works. According 5.7 What are the typical costs of infringement proceedings and how long do they take? to Art. 17 (1) DSM-Directive, those “online content-sharing service providers” now perform an act of communication to the public themselves, making them directly liable for infringing The costs of infringement proceedings according to the statu- content, unless they have, inter alia, made best efforts to ensure tory fee system are based on the value in dispute, i.e. the value the unavailability of specified works. of the object in dispute (e.g. value of the licence, amount of damages, amount of lost profit). According to German procedural law, the losing party bears the court fees as well as a 5.4 Are there any general or specific exceptions proportion of the opposing party’s attorney fees calculated in which can be relied upon as a defence to a claim of infringement? accordance with statutory provisions. Compared to other countries court proceedings in Germany are very affordable. The duration of infringement proceedings varies with the In contrast to the US copyright system, the German copyright complexity and scope of the court proceedings. Interim injunc- does not provide a fair-use clause. Instead, the law provides for tions can be issued within a few days following the application, individual exceptions tailored to specific cases. Therefore, if the depending on the working methods of the court. First instance specific use is not legally permitted under one of the exception main proceedings, usually vary between six and eight months. provisions, the work may only be used with the consent of the author. A general catch-all clause does not exist. For example, works may be used for religious purposes, on 5.8 Is there a right of appeal from a first instance the basis of freedom of opinion, freedom of the press, artistic judgment and, if so, what are the grounds on which an appeal may be brought? freedom or by the administration of justice or state administration under certain conditions. A special exception to this is the adaptation and redesign of works or their translation. An appeal against a first instance judgment is admissible if the value of the subject matter of the appeal exceeds EUR 600 or if the court of origin has permitted the appeal. On appeal, the first 5.5 Are interim or permanent injunctions available? instance judgment may be reviewed in law and in fact. However, the presentation of new evidence will not be taken into account Copyright claims can be enforced in main proceedings or by way if the evidence could have been submitted at first instance. The of interim injunctions. appeal can therefore only be based on the fact that the contested

decision is based on an inadequate application of law, an inade- 72 Current Developments quate interpretation of the facts and evidence brought before the court or that new facts and evidence justify a different decision. 7.1 Have there been, or are there anticipated, any significant legislative changes or case law 5.9 What is the period in which an action must be developments? commenced? The most relevant of the recent legislative changes is the contro- If a claim for injunctive relief is to be enforced in preliminary versially discussed EU Directive on Copyright in the Digital injunction proceedings, the injured party must show to have an Single Market, which came into force on 6 June 2019 and must interest in urgent legal action. The assessment of this “urgency be converted into national law by 7 June 2021. Three of the period” varies depending on the courts. However, an applica- most relevant changes entail the following regulations: tion should be filed within one month after having obtained ■ Most public attention was drawn to the regulation of knowledge. It must also be taken into account that a warning “online content-sharing service providers”, i.e. a “provider letter should be sent to the infringer before an application for an of an information society service of which the main or interim injunction is filed. one of the main purposes is to store and give the public In the main proceedings, only the statutory limitation periods access to a large amount of copyright-protected works or of the claims are to be considered, which are based on general other protected subject matter uploaded by its users, which civil law. In principle, a limitation period of three years is appli- it organises and promotes for profit-making purposes”. cable commencing at the end of the calendar year in which the According to Art. 17 DSM-Directive, it is now clarified claim arose. that those “online content-sharing service providers” perform a relevant act of communication to the public. In 62 Criminal Offences order to avoid liability, the provider must make, inter alia, best efforts to ensure the unavailability of specified works, 6.1 Are there any criminal offences relating to which may also mean the use of upload filters. Although copyright infringement? most of the major platforms had already established appropriate systems, the regulation could make it more difficult for new competitors to enter the market. Criminal offences relating to copyright are the unlawful exploita- ■ The DSM-Directive also reintroduces the neighbouring tion of copyrighted work (Section 106 GCA), the unlawful right for press publishers, which already existed in affixing of designation of author (Section 107 GCA), unlawful Germany but had been declared inapplicable by the CJEU. infringements of neighbouring rights (Section 108 GCA), the Art. 15 of the DSM Directive now provides for a corre- commercial unlawful exploitation (Section 108a GCA) and the sponding right at European level, according to which the infringement of technological measures and rights management reproduction and making available to the public of press information (Section108b GCA). The prosecution of these publications is protected. The right, which was derogato- offences requires a request filed by the victim, unless the crim- rily named “lex google”, had already been heavily criticised inal prosecution authority deems it a matter of particular public in Germany, although it proved to be of less practical rele- interest (Section 109 GCA), with the exception of the commer- vance than initially anticipated. cial unlawful exploitation (Section 108a GCA) of copyright or ■ Finally, the DSM-Directive introduces an obligation for neighbouring rights which will be prosecuted ex officio. licensees to provide authors and performers with up-to- Despite those offences not being part of the German Criminal date, relevant and comprehensive information on the Code (StGB), they are part of material criminal law. As such, exploitation of their works and performances by the respec- the general provisions of the German Criminal Code apply, tive licensee, and to provide this information on a regular including the requirement of subjective factors such as intent, basis, at least once a year, and taking into account the but also criminal responsibility/culpability and the punishability specificities of each sector. This disclosure requirement of attempt. is meant to support the author’s claim for equitable remuneration. It remains to be seen how the Member States 6.2 What is the threshold for criminal liability and what implement this provision but the new disclosure require- are the potential sanctions? ment is expected to produce additional effort in particular for industries not dealing with author’s remuneration on a Criminal liability requires the intentional commitment of the regular basis. The challenge will be to develop processes aforementioned offences, meaning the infringer acted know- including content management systems dealing with this ingly and willingly. Negligent behaviour does not establish disclosure requirement with as little effort as possible. criminal liability in these cases. Further, the infringer needs to be criminally responsible, meaning he must be capable of appre- 7.2 Are there any particularly noteworthy issues around ciating the unlawfulness of his actions. Children under the age the application and enforcement of copyright in relation of 14 years are deemed to act without criminal responsibility. to digital content (for example, when a work is deemed Besides that, there is no numerical threshold or quota for to be made available to the public online, hyperlinking, criminal liability in regards to copyright infringements. etc.)? Depending on the criminal offence, sanctions can be penalties of imprisonment for a term of up to five years or a fine. In recent years, the CJEU has developed case law on linking content, according to which the setting of hyperlinks to other websites does not constitute an act of exploitation relevant under copyright law if the act of making the linked content available is not aimed at a new audience. This should be the case if the

work is freely accessible on the linked page and the rights holder 7.3 Have there been any decisions or changes of law has thus already made it accessible to an unlimited audience. regarding the role of copyright in relation to artificial According to the CJEU, this applies largely independently of intelligence systems, including the use of copyright the technology used and thus also to framing technologies and in those systems and/or any work generated by those embedded links. The limits of the case law have not yet been systems? fully explored, and there are some tendencies suggesting that a relevant exploitation could be assumed, if the reference to the While it is easier to implement regulations concerning the work linked content as a separate service is intended to attract users of AI in copyright systems that take a more economic approach and thus is aiming to commercialise separately the content. with regards to investment protection as a fundamental justifi- In Germany, the Federal Supreme Court has developed cation for the recognition of exclusive rights, this poses greater case law on thumbnail pictures in the context of image search problems for the German copyright system, in which the concept engines. According to the three relevant decisions, the rights of protection is firmly linked to human creation. No case law holder who makes images available online without technical on this issue has yet been issued in Germany. On a scholarly protection measures must expect the usual acts of use of these level, however, the question has given rise to lively discussions. pictures, which includes in particular the reproduction of the Nevertheless, the copyright system de lege lata reaches its limits images and the act of making the images publicly available where human influence on the outcome of the AI process fades within the framework of an image search engine. The Federal into the background. Even though de lege ferenda some voices call Supreme Court construes this by means of an “implied consent” for more extensive protection, no efforts to implement this de of the rights holder. However, it has not yet been clarified to facto have been made so far. what extent this case law can be generalised beyond the field of Unlike the protection of the work results of AI itself, the accompanying data processing has now been taken into account image search engines. in the DSM-Directive. Text and data mining, which according Some relevant changes could be brought about by the neigh- to the previous legal situation encountered considerable prob- bouring right for press publishers, which is currently being lems due to the reproduction of copyrighted material, often implemented (see question 7.1 above). The neighbouring right subject to licensing, is now to be facilitated by two exception protects press publications, which includes literary works, but regulations. Articles 3 and 4 of the Directive regulate mining also other types of works and subject matter, in particular for both scientific and non-scientific purposes, the latter being photographs and videos. subject to more stringent conditions. According to Article 4 (2), reproductions may only to be retained as long as necessary for the purpose of mining. Also, according to Article 4 (3), data may not be mined if the use of the works has been explicitly reserved by its rights holder.

Silke Freund is a partner at BOEHMERT & BOEHMERT in Munich. She focuses on the contentious – sometimes cross-border – enforcement of soft IP rights (trade marks, copyright, design and unfair competition) and the defence against asserted infringement claims, having almost 20 years of experience before German Courts and in all forms of IP litigation. Beyond IP litigation she supports her clients in all aspects of IP law, with a particular focus on handling worldwide trade mark portfolios and respective strategic advice. Silke advises German and international clients ranging in size from individual start-ups and small to medium-sized companies right up to large multinational enterprises. Her advice is directed to all different sectors and industries, from consumer, energy, financial services, health, technology and media to digital businesses.

BOEHMERT & BOEHMERT Tel: +49 89 559680 Pettenkoferstr. 22 Email: [email protected] 80336 München URL: www.boehmert.de Germany

Dr. Sebastian Engels is a partner at BOEHMERT & BOEHMERT in Berlin. He advises clients in all aspects of IP law and is specifically working with German and international clients to develop IP strategies both in Germany and abroad. One of his special focuses is copyright law. His doctoral thesis focused on the admissibility of territorial film licensing within the European Single Market. He is co-author of the Fromm/ Nordemann commentary on Copyright Law and lecturer for IP licensing at the University of Potsdam (MBA BioMed). Sebastian represents clients in all types of intellectual property disputes, including trade mark, trade dress, copyright, and unfair competition matters and has a focus on digital business and effective online rights enforcement. His clients range from start-up companies to multinational companies.

BOEHMERT & BOEHMERT Tel: +49 30 23 60 76 70 Kurfuerstendamm 185 Email: [email protected] 10707 Berlin URL: www.boehmert.de Germany

As one of the largest and best-known law firms for Intellectual Property (IP) in Europe, BOEHMERT & BOEHMERT has been representing the interests of its clients for more than 80 years both with regard to the registration of property rights and in legal disputes. The special strength of BOEHMERT & BOEHMERT lies in the close cooperation of interdisciplinary teams of attorneys and patent attorneys enabling the development of customised, creative, and practical solutions that meet our clients’ requirements. Our attorneys offer support in all fields of applied and engineering sciences and have proven expertise in traditional as well as young industries in all business sectors, and across borders. In addition to our six offices in Germany, our law firm maintains international offices in Alicante, Paris, and Shanghai. The global network of our offices and the close collaboration with selected partner firms throughout the world guarantees unrivalled quality and efficiency. www.boehmert.de

Aprajita Nigam

LexOrbis Dheeraj Kapoor

12 Copyright Subsistence 1.3 In what works can copyright subsist?

1.1 What are the requirements for copyright to subsist Copyright subsists in the following categories of works: in a work? ■ Original literary, dramatic, musical and artistic works. ■ Cinematograph films. The first and foremost requirement is “originality”. The word ■ Sound recordings. “original” has not been defined in the Copyright Act, 1957 (the It is important to highlight that the word “original” is prefixed Act), but has derived its connotation through case laws. It is to literary, dramatic, musical and artistic works and not to cine- largely understood as a work that “owes its origin to the author”; matograph films and sound recordings, as the latter are works the work must originate from the skill and labour of the author made by using the former categories of works. For example, a and must not be a copy of any other work. Another prerequi- cinematograph film is made by making use of a script which is a site of copyright protection is the fixation of work in a tangible dramatic work. Though there is no express stipulation regarding form. The Indian regime follows the fundamental rule of copy- “originality” in respect of cinematograph films and sound right law laid down in Article 9(2) of Trade Related Intellectual recordings, copyright does not subsist in a cinematograph film Property Rights (TRIPs) and Article 2 of WCT, 1996, that copy- if a substantial part of that film is an infringement of the copyright does not subsist in ideas and only protects original expres- right in any other work. Likewise, copyright does not subsist sion of the ideas. in a sound recording made in respect of a literary, dramatic or musical work if in making the sound recording, copyright in such work has been infringed. 1.2 Does your jurisdiction operate an open or closed list of works that can qualify for copyright protection? 1.4 Are there any works which are excluded from copyright protection? The category of works which can qualify for copyright protection is a closed and exhaustive list. However, the definition of some of these categories is open and inclusive in nature. In Copyright does not protect ideas but only their expression. It India, copyright can subsist in original literary, dramatic, musical does not subsist in a cinematograph film if a substantial part of and artistic works; cinematograph films and sound recordings. that film is an infringement of the copyright in any other work. No straight jacket definition is given for literary works under the Likewise, copyright does not subsist in a sound recording made Act and it merely states that the literary work includes computer in respect of a literary, dramatic or musical work if in making programs, tables and compilations including computer data- the sound recording, copyright in such work has been infringed. bases. The definitions of dramatic work and artistic work are In case of a work of architecture, copyright subsists only in the also inclusive in nature. Dramatic work has been defined as artistic character and design, and does not extend to processes including any piece of recitation, choreographic work or enter- or methods of construction. tainment in dumb show, the scenic arrangement or acting form of which is fixed in writing or otherwise. Similarly, artistic 1.5 Is there a system for registration of copyright and, work is also defined in inclusive terms and states that it means if so, what is the effect of registration? a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, a work of architec- System: ture and any other work of artistic craftsmanship. Acquisition of copyright is automatic and the right comes into The word “cinematograph” in cinematograph films has also existence as soon as the work is created. However, securing a been defined to include any works produced with a process formal registration is highly advisable for enforcement purposes analogous to cinematography. Musical works include graphical because the registration certificate acts as prima facie evidence notations of music and sound recordings means a recording of of ownership of copyright. The author/publisher/owner, or sounds from which such sound may be produced regardless of any other person interested in the copyright in any work, may the medium on which such recording is made or the method by make an application to the Registrar of Copyrights for entering which such sounds are produced. particulars of that work in the Register of Copyrights. In case of

an artistic work, which is used or is capable of being used in rela- or originality in the selection or arrangement of the contents of tion to any goods or services, the application must also include a the work. If the labour and skill required to make the selection statement that no trade mark that is identical/deceptively similar and to compile the work which forms its items is negligible then to the said artistic work has been applied for registration or is no copyright can subsist in it. registered under the Trade Marks Act in the name of any person other than the Applicant. This statement must also be corrobo- 1.8 Are there any restrictions on the protection rated by a certificate from the Registrar of Trade Marks. for copyright works which are made by an industrial After filing the application, a waiting period of 30 days is process? observed for any third party objections that may come up against the copyright application. In case of no third party objection, the application goes ahead for scrutinisation by the Examiner. Copyright in any unregistered design which is capable of being In case of any discrepancy, a letter is sent to the Applicant for registered as an industrial design will cease to exist if the article compliance and must be returned within 30 days. Based on the to which the design has been applied is reproduced more than reply of the Applicant, the Registrar may allow the application 50 times by an industrial process by the owner of the copyright to proceed to registration, or may conduct a hearing if they are or, under his licence, by any other person. not satisfied with the response. In case no discrepancy letter is issued, the application straight away proceeds to registration. 22 Ownership

Effect: 2.1 Who is the first owner of copyright in each of the The Register of Copyrights is prima facie evidence of the particu- works protected (other than where questions 2.2 or 2.3 lars entered therein. The documents purporting to be copies apply)? of any entries therein, or extracts therefrom certified by the Registrar of Copyrights and sealed with the seal of the Copyright There is a distinction between the author of a work and the Office, are admissible as evidence in all courts without further owner of copyright therein, especially in those cases where proof or production of the original. the author has created the work in the course of employment, or at the instance of another person, and/or under a contract 1.6 What is the duration of copyright protection? Does governing the ownership of copyright. Nevertheless, the first this vary depending on the type of work? owner, generally (as per the Act), is the author of the work and since the term “author” has been defined in the Act for several The duration of copyright protection varies depending on the categories of works, the first owner for each category of work type of work. The term of protection for different kinds of will be as follows: works is as follows: ■ the author/creator in respect of a literary or dramatic work; ■ Literary, dramatic, musical and artistic works – Life of ■ the composer in respect of a musical work; author plus 60 years from the beginning of the calendar ■ the artist in respect of an artistic work (“artistic work” year which follows the year in which the author dies. includes a painting, sculpture, drawing, engraving, photo- ■ Cinematograph films – 60 years from the beginning of the graph, work of architecture and any other work of artistic calendar year which follows the year in which the cine- craftsmanship) other than a photograph; matograph film was published. ■ the person taking the photograph in respect of a ■ Sound recording – 60 years from the beginning of the photograph; calendar year which follows the year in which the sound ■ the producer, in relation to a cinematograph film or sound recording was published. recording; and ■ the person who causes the creation of the work in the case of any literary, dramatic, musical or artistic work which is 1.7 Is there any overlap between copyright and other computer-generated. intellectual property rights such as design rights and Where the work is a public speech or address, the person who database rights? delivers such work in public shall be the first owner of the copyright therein. However, if such work is made/delivered by a India does not allow parallel protection and statutorily clarifies person on behalf of another person, such other person on whose that copyright does not subsist in any design which has been behalf the work is so made or delivered will be the first owner. registered under the Designs Act, 2000. Furthermore, though unregistered designs are protected under the realm of copyright law, copyright in any unregistered design, which is capable of 2.2 Where a work is commissioned, how is ownership being registered under the Designs Act, will cease to exist if the of the copyright determined between the author and the commissioner? article to which the design has been applied is reproduced more than 50 times by an industrial process by the owner of the copyright or, under his licence, by any other person. When a work is commissioned, generally the copyright in the There is also an overlap with respect to the protection of work remains vested with the author/creator of the work, unless artistic works between copyright law and trade mark law. The the rights are assigned in favour of the commissioner in the form artistic work which is used or capable of being used in relation of a written and duly executed document/assignment agreement. to any goods or services can be protected both under trade mark Where the assignee/commissioner becomes entitled only to a and copyright laws. particular set of rights out of those comprised in the copyright The definition of “literary work” includes computer programs, through the assignment, he/she shall be treated as the owner of tables and compilations including computer databases. Thus, those rights, and as regards the rest of the rights comprised in databases are protected under the copyright law as literary work. the copyright which have not been so assigned, the author shall However, to obtain copyright protection for tables, compilations be treated as the owner. and computer databases, the work must exhibit some creativity

However, specifically in the case of a photograph, painting, ■ Must identify the work, and shall specify the rights portrait, engraving or a cinematograph film made or created for assigned, their duration, territorial extent and the amount valuable consideration, the person who has commissioned such of royalty and any other consideration payable. work shall be the first owner of the copyright therein (in the absence of any agreement to the contrary). 3.2 Are there any formalities required for a copyright If the work in question is a public speech or address which licence? is made on behalf of another person/commissioner, then the commissioner shall be the first owner of the copyright therein. A copyright licence must conform to the following formalities: ■ Must be in writing and should be signed by the licensor or 2.3 Where a work is created by an employee, how is his duly authorised agent. ownership of the copyright determined between the ■ Must identify the work, and specify the rights licensed, employee and the employer? their duration, territorial extent and the amount of royalty and any other consideration payable. The general rule is that the employer shall have copyright in the work created/authored by an employee in the course of employ- 3.3 Are there any laws which limit the licence terms ment unless there happens to be an agreement to the contrary. parties may agree to (other than as addressed in Where any literary, dramatic or artistic work is made by questions 3.4 to 3.6)? the author in the course of employment by the proprietor of a newspaper, periodical, etc. for the purpose of publication in such media, the proprietor shall be the owner of the copyright If the author is a member of a Copyright Society, a copyright in the work (in the absence of any agreement to the contrary). licence in any work contrary to the terms and conditions of However, such ownership of the proprietor/employer shall be the rights already licensed to Copyright Societies shall be void. limited to the publication/reproduction of the work in such or Further, no copyright licence in any work to make a cine- other similar media, while in all other respects, the author would matograph film can affect the right of the author to claim an still remain the first owner of the copyright of the work. equal share of royalties and consideration payable in case of utili- In the case of a public speech/address, the person making or sation of the work in any form, other than for the communica- delivering such work or the person on whose behalf such work tion to the public of the work along with the cinematograph film is so made or delivered shall be the first owner of the copyright in a cinema hall. Likewise, no copyright licence in any work to therein, even if either of them is employed by another person make a sound recording which does not form part of any cine- who arranges such speech or public address, or on whose behalf matograph film can affect the right of the author to claim an or premises such address or speech is delivered. equal share of royalties and consideration payable for any utilisation of such work in any form.

2.4 Is there a concept of joint ownership and, if so, what rules apply to dealings with a jointly owned work? 3.4 Which types of copyright work have collective licensing bodies (please name the relevant bodies)?

In India, the Act recognises the concept of “work of joint authorship”, which means a work produced by the collaboration The 1994 amendment in the copyright statute extended the of two or more authors in which the contribution of one author operation of legal provisions relating to collective licensing is not distinct from the contribution of the other author(s). The bodies called the Copyright Societies to all rights relating to all courts in India have not yet fully defined and determined as to domains of works. what amounts to an active and close intellectual collaboration, Presently, the following four Copyright Societies are regis- which is essential in the case of claiming joint authorship. In the tered in India: case of Angath Arts Private Limited v. Century Communications Ltd. ■ Indian Reprographic Rights Organization (IRRO) for and Anr. 2008(3) ARBLR 197(Bom), the High Court of Bombay authors and publishers. held that the “joint owner of a copyright cannot, without the ■ Indian Singers Rights Association (ISRA) registered for consent of the other joint owner, grant a licence or interest in performers’ (Singers’) Rights. the copyright to a third party”. Further, in the case of a work of ■ Indian Performing Rights Society Limited (IPRS) for joint authorship, all the authors (two or more) have to individu- musical works. ally satisfy the conditions essential for subsistence of copyright ■ Phonographic Performance Limited (PPL) for sound in the work. Joint authors enjoy all the rights granted by the recordings. (Re-registration is pending.) Act as mentioned above, including bringing a suit for infringe- Further, the following applications for registration as a ment and being entitled to reliefs such as injunction, damages, Copyright Society are pending: account of profits, etc. The term of copyright of a work of joint ■ The Recorded Music Performance (RMPL) for sound authorship is calculated with respect to the author who dies last. recordings. ■ The Cinefil Producers Performance Limited (CINEFIL) 32 Exploitation for cinematograph films. ■ Screenwriters Association of India (SRAI) for literary works. 3.1 Are there any formalities which apply to the transfer/assignment of ownership? 3.5 Where there are collective licensing bodies, how are they regulated? An assignment of copyright must conform to the following formalities: ■ Must be in writing and should be signed by the assignor or The collective licensing bodies called the Copyright Societies his duly authorised agent. are regulated by the following:

1. Authors and owners – the authors and owners, whose if not already in circulation, performing or otherwise communi- rights are administered, have collective control over these cating the work to the public, making a cinematograph film out Copyright Societies. These societies, in such manner as of the work, making any adaptation or effectuating any of the prescribed, have to: above in respect of an adaption of the work, can be restricted. ■ obtain approval of authors/owners of rights for their For a cinematograph film, making a copy of the film including procedure of collection and distribution of fees; a photograph of any image forming a part thereof and/or storing ■ obtain approval for utilisation of any amounts collected of such copy in any medium by electronic or other means, the as fees for any purpose other than distribution to the sale or commercial rental of, or offering for sale or for rental authors/owners of rights; and any copy of the film, and screening the film to the public, can ■ provide such owners regular, full and detailed infor- be restricted. mation concerning all its activities in relation to the For a sound recording, making any other sound recording administration of their rights. containing the recording in question, or storing it in any medium 2. Registrar of Copyrights – Copyright Societies shall by electronic or other means, offering for sale or commercial submit to the Registrar of Copyrights such returns as rental any copy of the sound recording, and communicating it to may be prescribed. Any officer authorised by the Central the public, can be restricted. Government may call for any report/record of any In India, the most common types of violation of the above Copyright Society to check whether the fees collected by rights as regards infringement actions are with respect to artistic the society in respect of rights administered by it are being works overlapping with trade mark law, and piracy in the media utilised or distributed in accordance with the provisions of and entertainment space pertaining to musical works, sound the Act. recordings and cinematograph films. 3. Central Government – the Registrar of Copyrights submits the applications received for registration of 4.2 Are there any ancillary rights related to copyright, Copyright Societies to the Central Government. The such as moral rights, and, if so, what do they protect, Government may then register such association of persons and can they be waived or assigned? as a Copyright Society. In case the Copyright Society is being managed in a manner detrimental to the interests of Yes, the moral rights of an author are duly recognised and the owners of rights concerned, the Central Government protected under law, whereby the author can claim authorship may cancel the registration of such society, after an inquiry of the work irrespective of any subsequent assignment of copy- has been conducted. right therein. Moreover, these rights serve to protect against any distortion, mutilation, modification or degradation of the work 3.6 On what grounds can licence terms offered by a affecting the author’s honour or reputation, even after the expi- collective licensing body be challenged? ration of the term of copyright and can thus be exercised also by the author’s legal heirs/representatives. Moral rights, which are Any person aggrieved by the tariff scheme published by the independent of the author’s copyright, can be understood as the Copyright Societies may appeal to the Intellectual Property author’s right to paternity and integrity with respect to the work. Appellate Board (IPAB) and the Board may, after holding any These special rights of an author cannot be assigned; however, necessary inquiry, make orders necessary to remove any element, as to whether the author may waive or relinquish them remains anomaly or inconsistency therein. debatable as the Act does not specifically cover such a scenario. However, in the case of Sartaj Singh Pannu v. Gurbani Media Pvt. 42 Owners’ Rights Ltd. and Ors., 2015, the court observed that if a waiver of moral rights with regard to credit/paternity/authorship is voluntary, the same would not be contrary to public policy and would thus 4.1 What acts involving a copyright work are capable of being restricted by the rights holder? be permissible. As such, waiving a moral right may be permissible on a case-by-case basis, especially if it is not opposed to public policy. In respect of all categories of works, the Act clearly sets out those acts which are capable of being restricted by the rights holder. Such acts are as follows: 4.3 Are there circumstances in which a copyright For a literary, dramatic or musical work (other than a computer owner is unable to restrain subsequent dealings in works which have been put on the market with his consent? program which also falls into the category of literary works), acts of reproducing in any material form, including storing electronically, issuing copies to the public if not already in circu- Yes, such circumstances do exist and are recognised where lation, performing or otherwise communicating to the public, subsequent dealings in works cannot be restrained by the copy- making a cinematograph film or sound recording of the work, right owner. More particularly, in the case of literary (not being making any translation or adaptation or effectuating any of the a computer program), dramatic, artistic or musical works, a above in respect of a translation or adaption of the work, can be copy of the work which has been sold even once, or is other- restricted. wise already in circulation, cannot be restrained by the copy- For a computer program, in addition to all the above acts, right owner from being issued to the public. This concept is also selling and giving via commercial rental or offering for sale or referred to as the principle of exhaustion. rental any copy of the computer program can be restricted by As far as parallel importation is concerned, it has been the the rights holder provided the rental is directly related to the subject of much debate and deliberation as to whether India computer program in question. should follow the doctrine of national exhaustion or interna- For an artistic work, acts of reproducing in any material form tional exhaustion. However, at the time of writing this chapter, including storing electronically, depicting a two-dimensional India follows the national exhaustion principle owing to a catena work in three dimensions or vice versa, issuing copies to the public of judgments in this regard. As such, the online availability with

regard to any subsequent dealings in copyrighted content would Further, even intermediaries or internet service providers also be subject to and similarly attract the principle of national (ISPs) can be made liable for secondary infringement regarding exhaustion. However, the courts are yet to fully address how hosting digital content protected by copyright, if it is shown this principle applies to digital content protected by copyright. that they have contributed or possess actual knowledge of such infringement. 52 Copyright Enforcement 5.4 Are there any general or specific exceptions 5.1 Are there any statutory enforcement agencies and, which can be relied upon as a defence to a claim of if so, are they used by rights holders as an alternative to infringement? civil actions? Any activity that falls under the scope of fair use or similar provi- Apart from the right to a civil action by way of filing a suit for sions such as fair dealing in any work for private or personal infringement, remedies under criminal law are also provided to use, including research/criticism or review/reporting of current the rights holders. The rights holders or the authorised represent- events or current affairs, reproduction of work by a teacher or atives can file an official complaint to the local police authorities pupil in the course of instructions, reproduction of any work for informing them of the infringement of their rights, or directly the purpose of judicial proceedings or its reporting, the reading approach the Magistrate and file a criminal complaint so that and recitation in public of reasonable extracts from a published the competent court can direct the police authorities to inves- literary or dramatic work, storing of work in any medium by tigate the matter further. The police machinery has a pertinent electronic means by a non-commercial public library, for preser- role in combatting copyright infringement. Special state-spe- vation if the library already possesses a non-digital copy of the cific cells/units such as the Anti-Piracy Cell – Kerala Police, work, etc., does not constitute infringement. Telangana Intellectual Property Crime Unit (TIPCU), etc. have Apart from the above, the following is a non-exhaustive been created and rights holders may approach such cells/units list of defences that can be used while defending a claim of for the protection and enforcement of their rights. Additionally, infringement: the owner of copyright or his duly authorised agent may give a ■ Challenging the subsistence of copyright – disputing the notice to the Customs authorities to suspend the clearance of originality of the work. imported infringing copies of work. ■ Claiming multiple originality by proving that the defendant In view of the above, criminal remedies can be considered an had no access to the work created by the plaintiff. alternative to civil actions. ■ Challenging the right of the plaintiff to sue – preliminary objection on maintenance of the suit. 5.2 Other than the copyright owner, can anyone else ■ Suit/complaint barred by limitation – preliminary objec- bring a claim for infringement of the copyright in a work? tion on maintenance of the suit. ■ No knowledge of infringement – in case of a civil action, if the defendant proves that at the date of the infringe- Apart from the owner of copyright, an exclusive licensee can ment he was not aware and had no reasonable ground for also bring a claim for infringement. believing that copyright subsisted in the work, the plaintiff shall not be entitled to any remedy other than an injunc- 5.3 Can an action be brought against ‘secondary’ tion in respect of the infringement, and a decree for the infringers as well as primary infringers and, if so, whole or part of the profits made by the defendant by on what basis can someone be liable for secondary the sale of the infringing copies as the court may, in the infringement? circumstances, deem reasonable. Furthermore, in case of criminal complaints, if the offence is An action can be brought against secondary infringers in addi- not committed for commercial gain, the degree of fine/impris- tion to primary infringers, and both can be impleaded as co-de- onment may be reduced. fendants in an infringement lawsuit or as co-accused in a criminal complaint for infringement. Secondary infringers can be 5.5 Are interim or permanent injunctions available? made liable for copyright infringement if they have been indirectly involved in, have contributed to or abetted an act of infringement. Although secondary infringement has not been Yes, both interim and permanent injunctions are available as so defined under the Act, one such instance wherein secondary civil remedies in cases of copyright infringement. The courts liability can arise is when a person, without a licence from the in India are also ready to award ex parte ad interim injunctions copyright owner, permits for profit any place to be used for in cases where there is an urgent need made out for restraining communicating the work to the public and where such commu- the act of infringement in question. In cases where temporary nication constitutes infringement of the copyright in the work. injunctions are granted, the trinity of a prima facie case, irrepa- The defence to this is when the person involved was not aware rable injury and balance of convenience is always assessed by the and had no reasonable grounds to believe that such communi- courts in India. cation to the public would constitute infringement of copyright. Thus, for a case of secondary infringement to be made out, 5.6 On what basis are damages or an account of profits the intent and/or knowledge on the part of the secondary calculated? infringer as to the occurrence of infringement is material, and any indirect involvement or contribution in violating any of the The grant of damages is generally meant to restore the plain- bundle of rights of the owner of copyright in a work with such tiff to the position in which he/she would have been had the knowledge or intent, either express or implied, would constitute infringement in question not taken place. Calculating damages secondary infringement. involves the determination of loss caused to the plaintiff by the infringement. Punitive damages can be awarded in addition to

basic amounts, especially if the act of infringement has been for infringement of copyright is a recurring one or continuing grave or flagrant in nature. Damages can also be exemplary in in nature, the limitation period of three years would commence nature so as to set a deterrent for others. In Time Incorporated v. on the date of such last infringement. Further, if sufficient and Lokesh Srivastava (2005)30 PTC3(Del), it was observed that “… reasonable cause is shown for condonation of delay in instituting the time has come when the Courts dealing with actions for a lawsuit for infringement, the period of limitation of three years infringement of trade marks, copyrights, patents, etc. should not can be extended in accordance with judicial discretion and case only grant compensatory damages but award punitive damages law. also with a view to discourage and dishearten law breakers who indulge in violations with impunity out of lust for money so that 62 Criminal Offences they realize that in case they are caught, they would be liable not only to reimburse the aggrieved party but would be liable 6.1 Are there any criminal offences relating to to pay punitive damages also, which may spell financial disaster copyright infringement? for them”. However, in cases where a defendant proves that he was not Yes; the following are the offences relating to copyright aware and had no reasonable grounds for believing that copy- infringement: right subsisted in the work at the date of infringement, the plain- ■ Knowingly infringing or abetting the infringement of tiff will be entitled only to an injunction against the infringe- copyright. ment and a decree for the whole or part of the profits made by ■ Knowingly making use on a computer of an infringing the defendant by the sale of the infringing copies, as the court copy of a computer program. may, in the circumstances, deem reasonable. ■ Knowingly making, or possessing, any plate for the purpose of making infringing copies of any work in which 5.7 What are the typical costs of infringement copyright subsists. proceedings and how long do they take? ■ Circumvention of effective technological measures with the intention of committing copyright infringement. ■ Knowingly removing or altering any rights management The usual cost of an infringement proceeding before a High information without authority. Court in India (such as the Delhi High Court), from institution ■ Knowingly distributing, importing for distribution, broad- of the suit up to obtaining an order of preliminary injunction casting or communicating to the public, without authority, may be in the range of USD 11,500 to USD 15,000; whereas the copies of any work or performance, and knowing that elec- all-inclusive cost of filing a law suit and obtaining an order of tronics rights management information has been removed permanent injunction from the court against the infringement or altered without authority. may be in the range of USD 26,500 to USD 35,000 as reaching ■ Making or causing to be made a false entry or a writing this stage involves a full trial. Infringement proceedings that falsely purporting to be a copy of any entry in the are taken to full trial can take two to three years to conclude, Register of Copyrights. Producing/tendering or causing whereas ex parte orders can be passed in just a few days from to be produced or tendered as evidence any such entry or initiation of the suit. writing, knowing the same to be false. ■ Knowingly making false statements or representation for 5.8 Is there a right of appeal from a first instance the purpose of deceiving or influencing any authority or judgment and, if so, what are the grounds on which an officer. appeal may be brought? ■ Publishing a sound recording or a video film in contraven- tion of the provisions that lay down the particulars to be ■ Yes; in the case where the first instance judgment is passed included in such works. by the District Court, an appeal may be instituted in the High Court. Further, in cases where the first instance 6.2 What is the threshold for criminal liability and what judgment is passed by a Single Judge of the High Court, the are the potential sanctions? appeal may be brought before the Division Bench. Also, in some cases, a special leave to appeal may be granted by the Conviction for any offence mentioned in question 6.1 shall Supreme Court against first instance judgment passed by entail criminal liability. Different sanctions including a fine any court under Article 136 of the Constitution of India. and/or imprisonment, seizure of infringing copies and delivery ■ In cases of seizure and disposal of infringing copies, an or disposal thereof are codified for different offences and their aggrieved person may, within 30 days of the date of order varying degrees. The fine may go up to a maximum of approx- of Magistrate, file an appeal in the Court of Session. imately USD 2,700, and the maximum prescribed imprison- ■ Certain substantive grounds, amongst others, on which ment can extend up to three years. Each and every subsequent an appeal may be brought include where there is a ques- conviction for such offence of copyright infringement shall also tion of fact involved or there has been misappreciation or entail the same maximum limits in terms of monetary fines and non-appreciation of facts or evidence in relation to the law imprisonment. in force, where there is concealment of facts or evidence which requires consideration afresh, or where a question of 72 Current Developments law needs to be addressed, etc. 7.1 Have there been, or are there anticipated,any 5.9 What is the period in which an action must be significant legislative changes or case law commenced? developments?

The period of limitation for filing the suit is three years from the Legislative and procedural changes date of infringement. Where the cause of action for filing a suit The most significant legislative development has been the

proposal of the Draft Copyright (Amendment) Rules, 2019 by is important to keep this decision in mind while drafting agree- the Government of India to amend the existing Copyright Rules, ments, assignments and licences to provide specifically for the 2013. In addition to adhering to the idea of “Digital India”, the transfer, assignment or creation of any rights relating to sequels. Draft Rules also seek to replace the use of the term “Copyright Clarification regarding copyright protection on facts and Board” with “Intellectual Property Appellate Board”, as the two incidents in the public domain was given in the case of Giant have now merged by virtue of the Finance Act, 2017. Earlier, Rocket Media And Entertainment Pvt. Ltd. v. Ms. Priyanka Ghatak the IPAB was exercising original and appellate jurisdiction in And Ors. wherein the Delhi High Court held that the true story respect of patents, trade marks and geographical indications of the murder of Syed Modi, who was an eight-time national (GIs) but not copyright. Another objective of the Draft Rules badminton champion, is already in the public domain and there- is to bring more transparency and accountability in the func- fore there cannot be any copyright on the story per se. The Delhi tioning of Copyright Societies and distribution of royalties to High Court held that, since the story is not a fictional story, authors/owners of works. Therefore, a new requirement has and is merely the narration of the crime and its prosecution, the been introduced whereby the Copyright Societies must submit Plaintiff did not have sufficient grounds to claim exclusive rights and make available on its website, for at least three years, a over the contents. Each party can create a separate script and transparency report for every financial year. Also, as per the narration of the same story. In this case, the Plaintiff had failed Draft Rules, every application for registration of copyright in a to showcase the comparison of the two sets of scripts to show computer program may now be accompanied by only the first 10 similarities in the script/narration. and last 10 pages of the source code (instead of the entire source Last year, the Delhi High Court in MRF Ltd v. Metro Tyres Ltd code and object code) where the source code is longer than 20 held that the scope of protection of a cinematograph film is on pages, or the entire source code if less than 20 pages. However, par with other original works and, therefore, the test of substan- there should be no blocked-out or redacted portions. The Draft tial similarity laid down in R.G. Anand v. M/s Deluxe Films and Rules have not yet been brought into effect. Ors. (1978) 4 SCC 118 will apply. The Hon’ble High Court The Copyright Office has also undertaken measures to observed that making a copy of a cinematograph film does not enhance efficiency and facilitate a seamless registration of copy- just mean making a physical copy of the film by a process of right applications. Prosecution of applications for literary, duplication, but it also refers to another film which substantially, dramatic and artistic works can be completely carried out online fundamentally, essentially and materially resembles/reproduces without the requirement for physical copies if the size of the the original film. Consequently, copying of fundamental/essen- subject work is 5MB or below. The requirement of manual signa- tial/distinctive features of a film would constitute infringement. tures on applications has been discarded and a scanned image of The Hon’ble High Court disagreed with the judgment passed by signatures can be uploaded online for signing the application. the Bombay High Court in Star India v. Leo Burnett (which held Even replies to discrepancy letters can be filed online [upload that “to make a copy” means to make a physical copy by process limit 500KB]. of duplication) on the grounds that: (i) the finding that a cinematograph film does not require originality is not in consonance Clarification issued by the Copyright Office with the Berne Convention; and (ii) it was not brought to the Upon examination of representations received from various stake- attention of the Bombay High Court that the 1998 Norowzian v. holders, the Copyright Office issued clarification on the question Arks judgment (UK) (heavily relied upon by the Bombay High as to whether it is essential to obtain a licence for using sound Court to reach its conclusion) has been overruled in relation to recordings in furtherance of any marriage-related function or not. the issue of law and the Appeal Court has held that a film is enti- While providing clarification in respect of the aforesaid question, tled to protection as an original work. the Copyright Office has reiterated that marriage processions and other social festivities associated thereto are included within the 7.2 Are there any particularly noteworthy issues around purview of the term religious ceremony under the said Section 52 (1) the application and enforcement of copyright in relation (za) of the Act. Section 52 of the Act enlists certain acts that do to digital content (for example, when a work is deemed not constitute an infringement of copyright. Specifically, Section to be made available to the public online, hyperlinking, 52 (1) (za) of the Act states as follows: etc.)? “the performance of a literary, dramatic or musical work or the communication to the public of such work or of a sound recording in In addition to the merger of the Copyright Board with the IPAB, the course of any bona fide religious ceremony or an official ceremony another significant change brought by the Draft Copyright held by the Central Government or the State Government or any local (Amendment) Rules, 2019 relates to statutory licences for broad- authority. casting of literary and musical works and sound recordings. The Explanation - For the purpose of this clause, religious ceremony words “radio and television broadcast” have been replaced with including a marriage procession and other social festivities associated the words “each mode of broadcast”. The proposed words with a marriage.” “each mode of broadcast” are broad in nature and can possibly The Copyright Office clarified that in view of the above- be interpreted to include internet-based services as well. stated provision and the explanation thereto, any sound Last year, the Delhi High Court, through its judgment in recording being used in the course of a religious ceremony, UTV Software Communication Ltd. and Ors. v. 1337X.TO and Ors., including a marriage procession and other social festivities asso- had introduced the remedy of “dynamic injunctions” under ciated thereto, shall not amount to infringement of copyright which the rights holders do not need to go through the time-con- and hence no licence is required. suming process of a judicial order in order to get blocking orders issued to ISPs. By virtue of this judgment, the plaintiffs have Case law developments been allowed to approach the Joint Registrar of the Delhi High Recently, in Zee Entertainment Enterprises Ltd v. Ameya Vinod Court (an administrative position), to extend an injunction order Khopkar & Ors, the Bombay High Court decided that assign- already granted against a website to another similar “mirror/ ment of copyright in respect of the original film will not imply redirect/alphanumeric” website which contains the same an automatic assignment of copyright in the sequel of that film if content as that of the already blocked/injuncted website. The nothing related to sequel is mentioned in the assignment deed. It

Court also directed the Ministry of Electronics and Information 7.3 Have there been any decisions or changes of law Technology of the Government of India to explore the possi- regarding the role of copyright in relation to artificial bility of a technologically feasible method to caution the viewers intelligence systems, including the use of copyright of infringing content to refrain from viewing/downloading in those systems and/or any work generated by those such infringing material or otherwise be liable to penalties in systems? the form of fines. Recently, in Jagran Prakashan Limited v. Telegram FZ LLC & There has not been any specific legislative or case law devel- Ors., an ad interim injunction was granted against Telegram FZ opment with respect to copyright and artificial intelligence. LLC (Defendant No. 1), the owner of the instant messaging However, it will be interesting for the readers to know that application “Telegram”, and allowed users to create channels the Indian Government has recently launched the National on the said application without disclosing their identity. The Artificial Intelligence (AI) Portal (https://indiaai.in/), a joint Plaintiff publishes the leading newspaper Dainik Jagran. The initiative of the National Association of Software and Service users of “Telegram” app had created fake Dainik Jagran chan- Companies (Nasscom) and the National e-Governance Division nels and were circulating digital copies of Dainik Jagran news- of the Ministry of Electronics and Information Technology paper. As the identity of users was not disclosed, the Plaintiff (MeitY). This portal is a one-stop platform and a reservoir of prayed for a John Doe Order. The Court observed that resources for information on AI-related advancements in India. Defendant No. 1 cannot escape from intermediary liability and an ad interim injunction was granted against Defendant No. 1 and unknown defendants. Defendant No. 1 was also directed to disclose the identities of the users operating the infringing channels and block/take down the channels within 48 hours of receipt of the Order.

Aprajita Nigam is working as a Managing Associate with LexOrbis and commands an in-depth understanding of all domains of intellectual property laws. From her previous experience in General Litigation, she has enriched the firm by providing her keen insight into contentious issues. At LexOrbis, her work includes handling trade mark, copyright and design matters (contentious/non-contentious) risk assessment, oppositions, cancellation, review and appeals, suits for copyright/trademark infringement, domain name complaints, etc. She is a valued member of the legal research team of LexOrbis, and has received much appreciation for her articles published in leading IP publications. Aprajita has a diverse client portfolio, encompassing Fortune 500 companies, multi-national corporations, small- and medium-sized enterprises, and technology start-ups. Education NALSAR University of Law (LL.M. (IPR) 2016). G.G.S.I.P. University (B.A. LL.B. (H) 2013).

LexOrbis Tel: +91 11 2371 6565 709–710 Tolstoy House Email: [email protected] 15–17 Tolstoy Marg URL: www.lexorbis.com New Delhi-110001 India

Dheeraj Kapoor, working as a Managing Associate with LexOrbis, has knowledge and expertise in intellectual property laws, and specialises in handling diverse matters before the High Courts, Intellectual Property Appellate Board, Trade Marks Office and the Copyright Office, as well as advising on various related laws. He also specialises in contentious issues pertaining to copyright law, border protection and control measures, as well as enforcement. He is intricately associated with the legal research and publication team of LexOrbis, and has authored many articles and papers in leading IP publications. Dheeraj advises many Fortune 500 companies, multi-national corporations, small- and medium-sized enterprises, and technology start-ups. Education University of Delhi (LL.B. 2013). University of Delhi (B.Sc. (H) Zoology 2010).

LexOrbis Tel: +91 11 2371 6565 709–710 Tolstoy House Email: [email protected] 15–17 Tolstoy Marg URL: www.lexorbis.com New Delhi-110001 India

LexOrbis, established in 1997, is one of India’s most recommended and & electronics, information & communication technology, software, media highly rated full-service IP firms. Operating from three offices in New & entertainment, oil & gas, pharmaceuticals, seeds & agro-chemical prod- Delhi, Bangalore and Mumbai, we are strategically positioned to offer a ucts, food & beverages, fashion, sports and publishing. Our professionals far-reaching service to both domestic and international companies. With work in the best interests of clients and we are known for our clear commu- a team of over 90 attorneys, we provide end-to-end services and practical nication, responsiveness, quick turnaround time and outside-the-box solutions in all aspect of patents, designs, trade marks, copyright, compe- thinking and solutions. tition, sports, media & entertainment, unfair competition, e-commerce and www.lexorbis.com other related laws. The firm has a diverse client base that includes many Fortune 500 companies, other multi-national corporations, leading Indian companies, public sector organisations, research institutes, universities, small- and medium-sized enterprises, and technology start-ups. The firm offers full legal and technical expertise to a wide range of industries, including automo- tive, biotechnology, biosimilars, chemical, consumer products, electrical

Japan Japan

Nagashima Ohno & Tsunematsu Kenji Tosaki

12 Copyright Subsistence have the date of first publication or the date first made public registered for that work. If the date of first publication of a work or the date it was first made public is registered, it is presumed 1.1 What are the requirements for copyright to subsist that the work was first published or first made public on the in a work? registered date; (iii) The author of a work of computer programming may have the date of creation of the work registered. If There is no requirement for copyright to subsist in a work. the date of creation of a work of computer programming has been registered, it is presumed that the work was created on the 1.2 Does your jurisdiction operate an open or closed registered date. list of works that can qualify for copyright protection? 1.6 What is the duration of copyright protection? Does Our jurisdiction operates an open list. Any work can qualify for this vary depending on the type of work? copyright protection. The copyright subsists for a period of 70 years after the death of 1.3 In what works can copyright subsist? the author (or, as for a joint work, the death of the last surviving co-author), except for the following: (i) the copyright of an anonymous or pseudonymous work subsists for a period of 70 Copyright can subsist in any kind of work. A “work” is defined years after the work is made public (there are some exceptions as a creatively produced expression of thoughts or sentiments for this); (ii) the copyright to a work the authorship of which is that falls within the literary, academic, artistic, or musical attributed to a juridical person or other organisation subsists for domain. a period of 70 years after the work is made public (there are some exceptions to this); and (iii) the copyright to a cinematographic 1.4 Are there any works which are excluded from work subsists for a period of 70 years after the work is made copyright protection? public. It should be noted that, for the purpose of calculation of the end of the period of copyright protection, the starting point The following works can qualify for copyright protection: (i) a for the calculation should be the year after the year in which the work by a Japanese national; (ii) a work that is first published author dies or the work is made public or created (depending on in Japan; and (iii) a work which Japan is under the obligation the relevant circumstances). to protect pursuant to an international treaty. On December 8, 2011, in a case where the plaintiffs alleged that the films 1.7 Is there any overlap between copyright and other produced in North Korea fell under (iii) above, the Supreme intellectual property rights such as design rights and Court of Japan held that Japan was not obligated to protect database rights? works of nationals of North Korea, which Japan did not recognise as a State under the Berne Convention, and therefore that There could be an overlap because the protection of copy- the said films could not qualify for copyright protection. right and that of other intellectual property rights are based on different concepts. Therefore, a design can be protected both by 1.5 Is there a system for registration of copyright and, copyright and a design right. if so, what is the effect of registration? 1.8 Are there any restrictions on the protection There is no general system for registration of copyright. There for copyright works which are made by an industrial are several specific rules for registration in relation to copyright. process? As a general rule, the transfer of a copyright cannot be asserted against a third party unless it is registered. Other than this: (i) There is no statutory restriction. However, it is generally under- the author of the work that has been made public anonymously stood that an “applied art”, which means a work of art for prac- or pseudonymously may have the author’s true name registered tical or industrial use, can be protected only when such work to that work. The person whose true name has been registered is involves high aesthetic creativity, although there is a court deci- presumed to be the author of the work; (ii) The copyright owner sion that did not require such high standard. or the publisher of an anonymous or pseudonymous work may

22 Ownership unless the transfer/assignment is registered. In addition, when a transfer agreement does not specify the right set forth in Article 27 of the Copyright Act (the right of translation, adaptation, et 2.1 Who is the first owner of copyright in each of the al.) and the right set forth in Article 28 of the Copyright Act works protected (other than where questions 2.2 or 2.3 (the right of the original author in connection with the exploita- apply)? tion of a derivative work) as the subject matter of the transfer, it is presumed that such rights are retained by the transferor. The author of the work would be the first owner of copyright, Thus, if the parties intend to transfer the copyright of a work as except in the case of a cinematographic work. If the author a whole, they should specify in the transfer agreement that the of a cinematographic work (there are some exceptions) has rights set forth in Articles 27 and 28 of the Copyright Act are promised the producer of the cinematographic work that the included in the rights to be transferred. author will participate in its production, the copyright to that cinematographic work belongs to the producer of the cinematographic work. 3.2 Are there any formalities required for a copyright licence?

2.2 Where a work is commissioned, how is ownership No, there is no formality requirement. of the copyright determined between the author and the commissioner? 3.3 Are there any laws which limit the licence terms See the answer to question 2.3. Generally speaking, where a work parties may agree to (other than as addressed in questions 3.4 to 3.6)? is commissioned, the person who makes the work under commission would be the author and the owner of the associated copyright. No, there are no applicable laws.

2.3 Where a work is created by an employee, how is ownership of the copyright determined between the 3.4 Which types of copyright work have collective employee and the employer? licensing bodies (please name the relevant bodies)?

For a work (except a work of computer programming) that a As of July 1, 2019, there are 28 organisations that are regis- person who engages in the business of a juridical person or other tered as Copyright Management Business Operators. The types employer makes in the course of duty at the initiative of the of copyright works managed by the Copyright Management said juridical person or other employer, and that the said jurid- Business Operators are, among others, literary works, musical ical person or other employer makes public as a work of its own works, phonograms, works of fine art, diagrammatic works, authorship, the author is deemed to be the said juridical person photographic works, and cinematographic works. For example, or other employer, unless otherwise stipulated in a contract, in the Japanese Society for Rights of Authors, Composers and employment rules, or elsewhere at the time the work is made. For Publishers (JASRAC) handles copyright management of musical a work of computer programming that a person who engages in works. the business of a juridical person or other employer makes in the course of duty at the initiative of the said juridical person or other 3.5 Where there are collective licensing bodies, how employer, the author is deemed to be the said juridical person are they regulated? or other employer, unless otherwise stipulated in a contract, in employment rules, or elsewhere at the time the work is made. Thus, in most cases, where a work is created by an employee in the Collective licensing bodies are regulated by the Act on Copyright course of the business of the employer, the employer would be the Management Business. In summary, “Copyright Management author and the owner of the copyright. This rule is not limited to Business” is defined as an act of business to authorise the cases where an employment agreement has been concluded, but it exploitation of works or otherwise manage copyright under a is generally understood that it only applies to cases where a person management consignment contract. A person who intends to provides labour under the direction and supervision of a company operate a Copyright Management Business shall be registered or other organisation and receives compensation for such labour. by the Commissioner of the Agency for Cultural Affairs. A Copyright Management Business Operator must prepare the standardised terms and conditions of management consignment 2.4 Is there a concept of joint ownership and, if so, contract and report it to the Commissioner of the Agency for what rules apply to dealings with a jointly owned work? Cultural Affairs in advance. A Copyright Management Business Operator must make a public notice of such standardised terms Yes, there is a concept of joint ownership. A jointly owned copy- and conditions of a management consignment contract. right cannot be exercised without the unanimous consent of the co-owners. 3.6 On what grounds can licence terms offered by a collective licensing body be challenged? 32 Exploitation A Copyright Management Business Operator must prepare 3.1 Are there any formalities which apply to the royalty rules and report the rules to the Commissioner of transfer/assignment of ownership? the Agency for Cultural Affairs in advance. A Copyright Management Business Operator must, when intending to No, there is no formality requirement. However, the transfer/ prescribe royalty rules, endeavour to hear opinions from users assignment of ownership cannot be asserted against a third party or groups thereof in advance. Further, the Commissioner of

the Agency for Cultural Affairs may designate the Copyright 52 Copyright Enforcement Management Business Operator that collects a considerable share of royalty compared with the total amount of royalty collected by all the Copyright Management Business Operators 5.1 Are there any statutory enforcement agencies and, with respect to any of the Exploitation Categories, i.e. catego- if so, are they used by rights holders as an alternative to civil actions? ries by classification of works and by distinction of exploitation means, as a Designated Copyright Management Business Operators. When a representative of users requests a Designated No, there are no applicable statutory enforcement agencies. Copyright Management Business Operator to discuss the relevant royalty rules, the Designated Copyright Management 5.2 Other than the copyright owner, can anyone else Business Operator must discuss the relevant royalty rules with bring a claim for infringement of the copyright in a work? the said representative. An exclusive licensee may be able to bring a claim for infringe- 42 Owners’ Rights ment of the copyright in certain situations.

4.1 What acts involving a copyright work are capable of being restricted by the rights holder? 5.3 Can an action be brought against ‘secondary’ infringers as well as primary infringers and, if so, on what basis can someone be liable for secondary A copyright includes a right of reproduction, a right of stage infringement? performance, a right of musical performance, a right of on-screen presentation, a right of transmitting to the public, a A person who abetted or aided the infringer is deemed to be right of recitation, a right of exhibition, a right of distribution, a joint tortfeasor and should be liable to the compensation of a right of transfer, a right to rent out, and a right of adaptation. damages incurred by the infringement jointly with the infringer. The Copyright Act provides that some specific acts fall under a 4.2 Are there any ancillary rights related to copyright, deemed infringement, but other than such specific acts, an act such as moral rights, and, if so, what do they protect, that aids the infringement, such as sale of equipment that makes and can they be waived or assigned? the purchaser easily infringe the copyright, does not constitute copyright infringement and is not subject to injunction. While copyright is classified as a property right, moral rights are classified as personal rights. Moral rights consist of: (i) the right 5.4 Are there any general or specific exceptions to make a work public; (ii) the right of attribution; and (iii) the which can be relied upon as a defence to a claim of right to integrity. The right to make a work public is the right infringement? to make a work not yet made public available or present to the public. The right of attribution is the right to decide whether to There are general exceptions and specific exceptions which can use the author’s true name or pseudonym to indicate the name of be relied upon as a defence. General exceptions are as follows: the author on the original work or in connection with the work in summary, (i) a work can be exploited in such a manner that at the time it is made available or presented to the public, or to humans cannot perceive the content of the work, (ii) a work can be decide that the author’s name will not be indicated in connec- exploited as an ancillary or supplementary exploitation to exploitation with that work. The right to integrity is the right to preserve tion of the work on a computer, and (iii) a work can be exploited to the integrity of the work and its title. Moral rights cannot be a minor extent incidentally to services that contribute to facilitating assigned. Instead of a waiver of moral rights, ancillary agree- the exploitation of a work through computerised data processing. ments not to exercise moral rights are commonly used and it is Examples of specific exceptions are as follows: (i) a work can be generally understood that such agreements are valid. Other than reproduced for personal use; (ii) a work can be exploited by way such moral rights, performers, producers of phonograms, broad- of quotation in accordance with fair practices and to the justifi- casters and cablecasters have specific rights which are called able extent for the purpose of the quotation; and (iii) a work can be neighbouring rights. The neighbouring rights of a performer printed in an authorised textbook for public education. include, among others, the exclusive right to record the sound and visuals of the performer’s performance and the exclusive right to make the performer’s performance available for trans- 5.5 Are interim or permanent injunctions available? mission. Neighbouring rights can be waived or assigned. In regular litigation proceedings, when the court finds that the 4.3 Are there circumstances in which a copyright copyright is infringed, the court will grant a permanent injunc- owner is unable to restrain subsequent dealings in works tion. A copyright owner may file a request for a preliminary which have been put on the market with his consent? injunction as a separate proceeding from a regular litigation.

The right of transfer cannot be exercised against the original 5.6 On what basis are damages or an account of profits work or copies that have been transferred to the public by the calculated? person that owns the right of transfer or a person authorised thereby. A copyright owner can get compensation of damages at the amount of (i) the profit per product that the copyright owner could have earned from the sale of the copyright owner’s products multiplied by the number of the products sold by the infringer, (ii) the profit gained by the infringer from the activity

of infringement, or (iii) reasonable royalty. A copyright owner 1, 2020 or on January 1, 2021. The first key portion relates to can choose a calculation method that he/she likes, or can claim the provisions to deal with so-called “leech websites”, which the greatest amount among the amounts obtained from multiple provide users with hyperlinks to a large amount of pirated mate- calculation methods. rials, especially comics. Such acts do not constitute copyright infringement under the pre-amendment Copyright Act and are not subject to injunction or criminal penalty. The amended 5.7 What are the typical costs of infringement proceedings and how long do they take? Copyright Act provides that an act of providing a hyper- link by such “leech websites” constitutes copyright infringement so long as such “leech websites” particularly induce the It largely depends on the volume of infringed work and the public to pirated materials or are primarily used for the purpose number of the disputed legal issues, but the typical attorneys’ of exploiting pirated materials by the public. Thus, such act fees for infringement proceeding would be around JPY 6–12 is subject to injunction and criminal penalty. In addition, an million. The filing fee to be paid to the court depends on the act of operation of such “leech websites” and an act of provi- amount or the value of the claim. When the amount of the claim sion of computer programs having a similar function to that of is JPY 100 million, the filing fee to be paid to the court for the such “leech websites” constitute a criminal offence under the first instance is JPY 320,000. It will take 12–20 months from amended Copyright Act. This amendment comes into force the date of filing until the judgment at first instance is rendered. on October 1, 2020. The second key portion is the provisions to prohibit downloading a work that was illegally uploaded 5.8 Is there a right of appeal from a first instance knowing that such work was illegally uploaded. Before the judgment and, if so, what are the grounds on which an amendment, only the act of downloading an audio-recording or appeal may be brought? video-recording was subject to the provision. The amendment broadens the subject matter of the work to be protected. Such Yes, any party who loses in the first instance has a right of appeal. act is subject to injunction and liability to compensate damages. An appeal may be brought on the grounds that, for the plaintiff, Such act is also subject to criminal penalty if a person continu- some of the claims are dismissed, and for the defendant, some ously or repeatedly conducts such act. This amendment comes of the claims are granted. into force on January 1, 2021. The third key portion is the provisions to deal with the protection of licence in the case where copyright is transferred. Before the amendment, the licence is 5.9 What is the period in which an action must be just a contractual relationship between the copyright owner and commenced? the licensee, the licence is not effective against the transferee of the copyright. The amendment enables the licensee to exploit When there is copyright infringement, the copyright owner can the work even when a copyright is transferred. This amendment commence an action to seek injunction. A right to compensation comes into force on October 1, 2020. Further, on July 21, 2020, in damages is extinguished three years from the time the copy- in a case where a photographer sought disclosure of the informa- right owner becomes aware of the damage and the infringer. tion of a Twitter user who retweeted a tweet of another Twitter Thus, a copyright owner cannot get compensation for damages user who used the photograph of the said photographer as the that occurred before three years prior to the commencement of profile image without authorisation on the grounds that the user the litigation. who retweeted the photograph infringed the right of attribution because the photograph originally indicated the name of 62 Criminal Offences the photographer but it was trimmed by retweeting so that the name of the photographer was cut off, the Supreme Court of 6.1 Are there any criminal offences relating to Japan held that the right of attribution was infringed by the act copyright infringement? of the retweet.

Yes, intentional copyright infringement constitutes a criminal 7.2 Are there any particularly noteworthy issues around offence. the application and enforcement of copyright in relation to digital content (for example, when a work is deemed to be made available to the public online, hyperlinking, 6.2 What is the threshold for criminal liability and what etc.)? are the potential sanctions? See the answer to question 7.1. Any copyright infringement is subject to a criminal penalty. Prosecutors have discretion to decide whether to bring a case to the criminal courts. A person who infringes a copyright is 7.3 Have there been any decisions or changes of law regarding the role of copyright in relation to artificial subject to imprisonment for a term of up to ten years, a fine of intelligence systems, including the use of copyright up to JPY 10,000,000, or both. in those systems and/or any work generated by those systems? 72 Current Developments The 2018 amendment of the Copyright Act dealt with the use 7.1 Have there been, or are there anticipated, of artificial intelligence. As explained in the answer to ques- any significant legislative changes or case law tion 5.4, a work can be exploited in such a manner that humans developments? cannot perceive the content of the work. By using this exception, reproduction of works for the purpose of deep learning On June 12, 2020, the Copyright Act was amended and the key through artificial intelligence does not constitute copyright portions of the amendment will come into force on October infringement.

Kenji Tosaki is a partner at Nagashima Ohno & Tsunematsu. His practice focuses on dispute resolution. He specialises in intellectual property litigation and complex commercial litigation, and he also covers the area of TMT including data protection matters. In the area of intellectual property litigation, he handles both IP infringement litigations and IP invalidation litigations before the IP High Court, the Supreme Court, District Courts and the Japan Patent Office. His IP expertise includes a wide variety of IP matters (patents, copyrights, trademarks, design rights, unfair competition and trade secrets) in many areas, such as telecommunications, electronics, social games and pharmaceuticals. He also provides pre-litigation counseling, including infringement/invalidity analysis. In the area of complex commercial litigation, he gives advice on matters such as securities law and cross-border contract.

Nagashima Ohno & Tsunematsu Tel: +81 3 6889 7206 JP Tower Email: [email protected] 2-7-2 Marunouchi URL: www.noandt.com/en Chiyoda-ku Tokyo 100-7036 Japan

Nagashima Ohno & Tsunematsu is the first integrated full-service law firm management/corporate governance cases and large-scale corporate reor- in Japan and one of the foremost providers of international and commer- ganisations. The approximately 500 lawyers of the firm work together in cial legal services based in Tokyo. The firm’s overseas network includes customised teams to provide clients with the expertise and experience offices in New York, Singapore, Bangkok, Ho Chi Minh City, Hanoi and specifically required for each client matter. Shanghai, associated local law firms in Jakarta and Beijing where our www.noandt.com/en lawyers are on-site, and collaborative relationships with prominent local law firms. In representing our leading domestic and international clients, we have successfully structured and negotiated many of the largest and most significant corporate, finance and real estate transactions related to Japan. In addition to our capabilities spanning key commercial areas, the firm is known for path-breaking domestic and cross-border risk

Jessie Tan Shin Ee

Shin Associates Joel Prashant

12 Copyright Subsistence published in Malaysia within 30 days of that first publication. By virtue of the Berne Convention, a Berne Union country is obliged to grant the same copyright protection to the nationals or resi- 1.1 What are the requirements for copyright to subsist dents of other Berne Union countries that it accords to its own citi- in a work? zens. A Malaysian author’s work, whether published or not, is thus protected in other Berne Union countries. All literary, musical or In Malaysia, copyright subsists by virtue of the Copyright Act artistic works and films first published in any of the Berne Union 1987 (“Act”) and copyright protection is accorded without any countries are also entitled to copyright protection in Malaysia, irre- requirement of registration, deposit or otherwise. Under the spective of whether they are published in Malaysia itself. Similarly, Act, copyright will subsist in a work if it: (a) is original; (b) is such works first published elsewhere in non-Berne Union coun- reduced to material form; (c) belongs to one of the categories tries but subsequently published in any of the Berne Union coun- of protected works; and (d) complies with the qualifications for tries within 30 days of their first publication would be entitled to copyright. If these requirements are met, a work is protected copyright in other Berne Union countries, including Malaysia. regardless of the quality and purpose for which it was created. Hence, copyright may subsist in a work by reference to: (i) the 1.2 Does your jurisdiction operate an open or closed status of the author; (ii) the publication of the work; or (iii) list of works that can qualify for copyright protection? the making of the work. Copyright may also subsist in works made by or under the direction or control of the Malaysian Copyright in Malaysia subsists in the closed list of works set out Government and prescribed international organisations. in question 1.3 below. Originality in copyright means that the work must have orig- inated from the author and some effort must have gone into the creation of the work. A literary, musical or artistic work requires 1.3 In what works can copyright subsist? originality and reduction of the work into material form for it to be eligible for copyright. However, such requirements do not apply Pursuant to the Act, copyright subsists in the following catego- to published editions, sound recordings, films or broadcasts. ries of works: Special rules apply to works of architecture and broadcasts. (a) literary works; Copyright shall subsist in a work of architecture when it is erected (b) musical works; in Malaysia, or any other artistic work incorporated in a building (c) artistic works; located in Malaysia, or a broadcast transmitted from Malaysia. (d) films; (e) sound recordings; Qualified person (f) broadcasts; Copyright will vest in a work if the author, or in the case of joint (g) derivative works: authorship, one of the authors, is a qualified person at the time of (i) translations, adaptations, arrangements and other the making of the work. The Act defines a “qualified person”, in transformations of works eligible for copyright; and relation to an individual, as a person who is a citizen or perma- (ii) collections of works eligible for copyright, or compila- nent resident of Malaysia, and in relation to a body corporate, a tion of mere data whether in machine readable or other body established in Malaysia and constituted or vested with a legal form, which constitute intellectual creation by reason personality under the laws of Malaysia. By virtue of Malaysia’s of the selection and arrangement of their contents; accession to the Berne Convention in 1990, a qualified person in (h) published editions of any one or more literary, artistic or relation to a literary, musical or artistic work or a film also includes musical work in the case of which either: (a) the first publi- a citizen or a body corporate of a country which is a member of the cation of the edition took place in Malaysia; or (b) the Berne Convention. publisher of the edition was a qualified person at the date of the first publication thereof; and Publication of the work (i) performers’ right in every live performance of which the Copyright shall also subsist in every work which is eligible for performer is: (a) a citizen or permanent resident of Malaysia; copyright and, being a literary, musical or artistic work or film or (b) not a citizen or permanent resident of Malaysia but or sound recording, is first published in Malaysia, i.e. made avail- whose performance: (i) takes place in Malaysia; (ii) is incorpo- able to the public. A work is also deemed to be first published rated in sound recordings that are protected under the Act; or in Malaysia if it was first published elsewhere but subsequently (iii) has not been fixed in a sound recording but is included in a broadcast qualifying for protection under the Act.

1.4 Are there any works which are excluded from Category of Work Duration of Copyright copyright protection? Unpublished Where such work had not been The Act specifically states that copyright protection shall not literary, musical or published before the death of the extend to any idea, procedure, method of operation or mathe- artistic works where author, the copyright which subsists matical concept. the author is known in such work shall continue to subsist It should also be noted that a literary, musical or artistic work until the expiry of a period of 50 years shall not be eligible for copyright under the Act unless: (a) suffi- computed from the beginning of the cient effort has been expended to make the work original in calendar year next following the year in character; and (b) the work has been written down, recorded or which the work was first published. otherwise reduced to material form. Literary, musical or Where the work is published anony- Further, copyright under the Act does not subsist in any artistic works where mously or under a pseudonym, the copy- design which is registered under any written law relating to the author is not right which subsists in such work shall industrial design. known continue to subsist until the expiry of a period of 50 years computed from 1.5 Is there a system for registration of copyright and, the beginning of the calendar year next if so, what is the effect of registration? following the year in which the work was first published or first made available to the public or made, whichever is There is no system for registration of copyright in Malaysia. The the latest. Copyright (Amendment) Act 2012 introduced Sections 26A, 26B and 26C into the Act and these provisions (together with Published editions 50 years from the beginning of the the Copyright (Voluntary Notification) Regulations 2012) estab- calendar year following the year that lished a new framework for the voluntary notification of copy- the edition was first published. right into Malaysian copyright law (“Voluntary Notification”). Sound recordings 50 years computed from the beginning Voluntary Notification is made by filing: (i) the prescribed of the calendar year next following the forms; (ii) a statutory declaration; and (iii) a copy of the work, year in which the recording was first with the Controller of Copyright (the Intellectual Property published or, if the sound recording has Office of Malaysia) (“Controller”). The Voluntary Notification not been published, from the beginning must be accompanied by payment of the prescribed fees and may of the calendar year following the year of be undertaken by: (i) the author of the work; (ii) the owner of the fixation. copyright; (iii) an assignee of the copyright; (iv) a licensee of an Broadcasts 50 years computed from the beginning interest in the copyright; or (v) a person acting on behalf of any of the calendar year next following the of the persons referred to in items (i) to (iv). year in which the broadcast was first While the Voluntary Notification regime does not derogate made. from the requirement of non-formality for the enjoyment and exercise of copyright protection under the Berne Convention, Films 50 years computed from the beginning copyright owners can use Voluntary Notification as prima facie of the calendar year next following proof of ownership over their creative works. However, such the year in which the film was first prima facie proof of ownership can be challenged in court as published. decided in Syarikat Faiza Sdn Bhd & Anor v Faiz Rice Sdn Bhd & Works of 50 years computed from the beginning Anor and another suit [2017] MLJU 1595. Government, of the calendar year next following Government organ- the year in which the work was first 1.6 What is the duration of copyright protection? Does isations and interna- published. this vary depending on the type of work? tional bodies Performers’ rights 50 years computed from the beginning The term of copyright protection varies, depending on factors of the calendar year next following such as the precise nature of the material in which copyright the year in which the performance subsists, the owner’s identity, i.e. Governmental or international was given or was fixed in a sound organisations, whether jointly authored, and whether the work recording. was anonymous or pseudonymous. The following table sets out the category of work and the duration of copyright: 1.7 Is there any overlap between copyright and other intellectual property rights such as design rights and database rights? Category of Work Duration of Copyright

Published literary, Copyright shall subsist during the life In Malaysia, the protection of industrial designs is governed musical or artistic of the author and shall continue to by the Industrial Designs Act 1996 and the Industrial Designs works where the subsist until the expiry of a period of Regulations 1999 (“ID Act”). When the ID Act came into force author is known 50 years after his death. Where the in 1999, amendments were made to the Act which substan- work is undertaken by joint authors, tially reduced the application of copyright law to designs and, in a reference to “author” shall, in such particular, the making of three-dimensional articles. case, be construed as a reference to the The Act specifically provides that copyright shall not subsist author who dies last. in any design which is registered under any written law relating to industrial design.

Under Malaysian legislation and case law, there is no defini- of Integrated Circuits Act 2000 by virtue of the Copyright tion as to what a “database” or “database right” constitutes, nor is (Amendment) Act 1996 and the Copyright (Amendment) Act there any specific case law which addresses the extent of protec- 2000. A three-dimensional work is no longer deemed to be an tion afforded to databases. A database may, however, fall under “artistic work”, although it remains an infringement of copy- the definition of “literary work” under Section 3 of the Act, right to make a three-dimensional object from a two-dimen- which includes in particular “tables or compilations, whether or sional artistic work and vice versa. not expressed in words, figures or symbols and whether or not in a visible form”. Additionally, databases also appear to fall 22 Ownership under the banner of “derivative works” under Section 8 of the Act. In respect of databases, derivative works include “collec- 2.1 Who is the first owner of copyright in each of the tions of works eligible for copyright, or compilation of mere data works protected (other than where questions 2.2 or 2.3 whether in machine readable or other form, which constitute apply)? intellectual creation by reason of the selection and arrangement of their contents”. Furthermore, derivative works enjoy copy- Copyright shall vest initially with the author. right protection as original works under Section 8 of the Act. However, the protection of such derivative works is without prejudice to any protection of any existing work used. 2.2 Where a work is commissioned, how is ownership The protection under Section 8 of the Act arises from the of the copyright determined between the author and the selection or arrangement of the contents that would constitute commissioner? an intellectual creation, instead of the expenditure of investment towards obtaining, verifying and presenting the contents Where a work is commissioned by a person who is not the of the database. While there is no express protection against author’s employer under a contract of service or apprenticeship, the “extraction” or “re-utilization” of a substantial part of the the copyright shall be deemed to be transferred to the person contents of a database as defined above, Section 13(1) of the Act who commissioned the work or the author’s employer, subject protects databases and their owners in respect of providing the to any agreement between the parties excluding or limiting such owners with the exclusive right to control: transfer. The term “commission” has been defined in Motordata (a) the reproduction in any material form; Research Consortium Sdn Bhd v Ahmad Shahril bin Abdullah & Ors (aa) the communication to the public; [2017] MLJU 1187 to mean “an order or agreement by one person to (b) the performance, showing or playing to the public; another person to create the work in question”. (e) the distribution of copies to the public by sale or other transfer of ownership; and 2.3 Where a work is created by an employee, how is (f) the commercial rental to the public, ownership of the copyright determined between the of the whole database or a substantial part thereof, either in its employee and the employer? original or derivative form. Where a work is made in the course of the author’s employment, 1.8 Are there any restrictions on the protection the copyright shall be deemed to be transferred to the person for copyright works which are made by an industrial who commissioned the work or the author’s employer, subject process? to any agreement between the parties excluding or limiting such transfer. Whether or not a person is deemed to be an employee Section 13A(1) of the Act provides that it shall not be an infringe- depends on whether the individual was employed under a ment of any copyright in a design document or model recording contract of service and if the work was part of the regular or or embodying a design for anything other than an artistic work special duties of the employee. It would be sufficient to show or a typeface to make an article to the design, or to copy or that a substantial part of the work was made whilst the author to reproduce an article made to the design. “Design” means was still in employment. the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article, other than 2.4 Is there a concept of joint ownership and, if so, surface decoration; and “design document” means any record of what rules apply to dealings with a jointly owned work? a design, whether in the form of a drawing, a written description, a photograph, data stored in a computer or otherwise. For Section 13A to apply, the design must be “for” something, A work of joint ownership under the Act means “a work meaning that the design as embodied in the design document produced by the collaboration of two or more authors in which or model must have been created as a step towards or a part the contribution of each author is not separable from the contri- of the process for the subsequent production of another article. bution of the other author(s)”. Whether a person is deemed to Section 13A is restricted to the three-dimensional reproduc- be a joint owner is a question of fact to be satisfied based on tion of a design, and thus any copying of the two-dimensional the facts and circumstances of the case, and it is imperative to design document itself may still be considered an infringement consider the degree of skill and labour each person claiming of copyright. authorship plays in relation to the final work. Pursuant to Section 13B, once the copyright owner has made, Joint authors are tenants in common rather than joint tenants, by an industrial process or means, articles that are copies of the and each joint author shares the copyright equally in the absence work, and marketed such articles in Malaysia or elsewhere, the of any agreement to the contrary. Section 27(4) of the Act copyright owner is entitled to copyright protection of 25 years further provides that “an assignment or licence granted by one from the end of the calendar year in which such articles are first copyright owner shall have effect as if the assignment or licence marketed. is also granted by his co-owner or co-owners, and subject to It should also be noted that “artistic work” no longer includes any agreement between the co-owners, fees received by any of a layout-design within the meaning of the Layout-Designs the owners shall be divided equally between all the co-owners”.

As such, the terms of the assignment will determine whether These licensing bodies include: assignees hold as joint tenants or tenants in common, and also 1. Music Authors’ Copyright Protection Berhad (“MACP”): their respective proportions where the latter applies. MACP represents composers, lyricists and publishers Although the reproduction of work requires consent from all where their works are broadcast and publicly performed co-owners, a co-owner may sue for infringement without the and issues blanket licences to those who wish to use works other co-owners, but such co-owner may only recover his share administered by the MACP; of the damages. 2. Public Performance Malaysia Sdn. Bhd. (“PPM”): PPM represents all eligible Malaysian recording companies and 32 Exploitation international recording companies who have exclusively licensed PPM members to control their rights in Malaysia. 3.1 Are there any formalities which apply to the PPM issues licences for the usage of copyrighted works in the transfer/assignment of ownership? form of sound, music video and/or karaoke recordings; and 3. Recording Performers Malaysia Berhad (“RPM”): RPM represents recording artists and musicians and issues Copyright is transferable by assignment, testamentary disposi- licences for users who wish to use sound recordings either tion, or by operation of law, as movable property. An assign- by publicly performing the sound recording, broadcasting ment or testamentary disposition of copyright may be limited and/or communicating it to the public. so as to apply only to some of the acts which the owner of the On 1 January 2019, MPLC (Malaysia) Sdn Bhd was appointed copyright has the exclusive right to control, or to only part of as a licensing body designated by the Controller and the the period of the copyright, or to a specified country or other MDTCA to carry out film licence issuance and film royalty fee geographical area. For an assignment or licence to have effect, collection activities in Malaysia on behalf of copyright owners it must be in writing. An assignment or licence granted by one for film works. copyright owner shall have effect as if the assignment or licence is also granted by his co-owner(s) (if they share a joint interest in the copyright or any part thereof), and subject to any agreement 3.5 Where there are collective licensing bodies, how between the co-owner(s), fees received by any of the owners are they regulated? shall be divided equally between all the co-owner(s). An assignment, licence or testamentary disposition may be effectively Collective licensing bodies are regulated by the Act and the granted or made in respect of a future work, or an existing work Copyright (Licensing Body) Regulations 2012. A society or an in which copyright does not yet subsist, and the future copy- organisation intending to operate as a licensing body for copyright in any such work shall be transferable by operation of law right owners or for a specified class of copyright owners shall as movable property. apply to the Controller to be declared as a licensing body. Where under a testamentary disposition, whether specific or general, a person is entitled beneficially or otherwise to the 3.6 On what grounds can licence terms offered by a manuscript of a literary, musical, or artistic work, and if the work collective licensing body be challenged? has not been published before the death of the testator, the testamentary disposition shall, unless a contrary intention is indicated in the testator’s will or a codicil thereto, be construed as Pursuant to Section 27AA(1) of the Act, “licensing scheme” including the copyright in the work in so far as the testator was means licensing schemes operated by licensing bodies in relation the owner of the copyright immediately before his death. to the copyright in any work, so far as they relate to licences for: (a) reproducing the work; (b) performing, showing or playing the work in public; 3.2 Are there any formalities required for a copyright (c) communicating the work to the public; licence? (d) rebroadcasting the work; (e) the commercial rental of the work to the public; or The copyright licence must be in writing. (f) making adaptations of the work. The terms of a licensing scheme proposed to be operated 3.3 Are there any laws which limit the licence terms by a licensing body may be referred to the Copyright Tribunal parties may agree to (other than as addressed in (“Tribunal”) by any organisation claiming to be a representa- questions 3.4 to 3.6)? tive of persons claiming that they require licences in cases of a description to which the licensing scheme would apply, either generally or in relation to any description of the case. If the No such laws have been enacted in Malaysia. Tribunal decides to entertain the reference, it shall consider the matter referred and make such order, either confirming or 3.4 Which types of copyright work have collective varying the proposed licensing scheme, either generally or so licensing bodies (please name the relevant bodies)? far as it relates to cases of the description to which the reference relates, as it may determine to be reasonable in the circum- Prior to 27 July 2020, Music Rights Malaysia Berhad (“MRM”) stances. Similarly, if a dispute arises between the operator of the was the sole licensing body designated by the Controller and the licensing scheme and: Ministry of Domestic Trade and Consumer Affairs (“MDTCA”) (a) a person claiming that he requires a licence in a case of a to carry out music licence issuance and fee collection activities description to which the licensing scheme applies; in Malaysia on behalf of the music licensing bodies listed below. (b) an organisation claiming to be representative of such MRM has since been dissolved and its licensing powers have persons; or been returned to the respective licensing bodies. (c) a person who has been granted a licence to which the licensing scheme applies,

that operator, person or organisation may refer the licensing 4.3 Are there circumstances in which a copyright scheme to the Tribunal in so far as it relates to cases of that owner is unable to restrain subsequent dealings in works description. The Tribunal shall consider the matter in dispute which have been put on the market with his consent? and make such order, either confirming or varying the licensing scheme so far as it relates to cases of the description to which The exclusive right to control the distribution of copies refers the reference relates, as it may determine to be reasonable in the only to the act of putting into circulation copies not previously circumstances. put into circulation in Malaysia and not to any subsequent distri- Further, the Malaysian Copyright (Amendment) Act 2020, bution of those copies or any subsequent importation of those which came into force on 1 July 2020, introduced a new Section copies into Malaysia. Furthermore, the exclusive right to control 59C into the Act which provides additional powers to the commercial rental in relation to films shall only apply when such Tribunal to hear any dispute relating to royalties arising between commercial rental has led to widespread copying of such work a licensing body and any of its members, subject to the agree- materially impairing the exclusive right of reproduction. ment of such licensing body and such member, as an option for alternative dispute resolution. 52 Copyright Enforcement This will provide members of licensing bodies with an additional avenue of resolving disputes relating to royalties as prior to the introduction of this amendment, disputes had to be resolved 5.1 Are there any statutory enforcement agencies and, either among the parties, by MRM (which has been dissolved, as if so, are they used by rights holders as an alternative to civil actions? further explained in question 3.4 above) or by the courts.

42 Owners’ Rights Section 5 of the Act empowers the Minister of MDTCA to appoint a Controller, Deputy Controllers and Assistant Controllers and such other officers as may be necessary for the 4.1 What acts involving a copyright work are capable of administration of the Act. The Assistant Controllers are vested being restricted by the rights holder? with the powers of investigation and these powers are shared equally between the police and the Enforcement Division of According to the Act, copyright owners have the exclusive right MTDCA. The investigatory powers of the enforcement unit to control in Malaysia: are limited to cases involving criminal offences under the (a) the reproduction in any material form; Act. In terms of criminal prosecution, it is conducted by the (aa) the communication to the public; Enforcement Division of MTDCA or the Royal Malaysian (b) the performance, showing or playing to the public; Police. (e) the distribution of copies to the public by sale or other The Act also establishes the Tribunal, which has the power transfer of ownership; and to: approve or vary the licensing scheme; determine whether (f) the commercial rental to the public, particular applicants should be granted licences under such of the whole work or a substantial part thereof, either in its orig- schemes; approve or vary the terms of particular licences; inal or derivative form. hear disputes over which applicants for a licence fall within the scheme on the refusals to grant licences; hear disputes 4.2 Are there any ancillary rights related to copyright, over royalties arising between a licensing body and any of its such as moral rights, and, if so, what do they protect, members; and make orders declaring that the complainant is and can they be waived or assigned? entitled to a licence. The Tribunal may, of its own motion, or at the request of a party, refer a question of law arising in proceed- There are two types of moral rights that are protected under ings concluded before it for determination by the High Court. A the Act. decision of the High Court shall be final and conclusive and no such decision shall be challenged by any other authority, judicial Authors’ moral rights or otherwise, whatsoever. Section 25(2) provides that no person may, without the consent of the author, do or authorise: (a) the presentation of the work, 5.2 Other than the copyright owner, can anyone else by any means whatsoever, without identifying the author or bring a claim for infringement of the copyright in a work? under a name other than that of the author; and (b) the distortion, mutilation or other modification of the work if the distor- The Act provides that the exclusive licensee shall (except against tion, mutilation or modification (i) significantly alters the work, the owner of the copyright) have the same rights of action and and (ii) is such that it might reasonably be regarded as adversely be entitled to the same remedies, as if the licence had been an affecting the author’s honour or reputation. assignment, and those rights and remedies shall be concurrent As no case laws have addressed waiver of moral rights by an with the rights and remedies of the owner of the copyright under author, whether Section 25 permits an author to waive his moral that section. Where an action is brought either by the exclusive rights remains a grey area under Malaysian copyright law. licensee and the action relates (wholly or partly) to an infringement in respect of which the owner and licensee have concur- Performers’ moral rights rent rights of action, the licensee, as the case may be, shall not The moral rights of a performer are the same as those granted be entitled, except with the leave of the court, to proceed with to authors of copyright works save that they are granted only to the action, in so far as it is brought under that section and relates a live performance or a live performance fixed in a phonogram. to that infringement, unless the other party is either joined as a “Phonogram” has been defined under the Act to mean the fixa- plaintiff in the action or added as a defendant. tion of the sounds of a performance or of other sounds, or of a representation of the sounds, other than in the form of a fixation incorporated in a film or other audio-visual work.

5.3 Can an action be brought against ‘secondary’ broadcast, insofar as it consists of visual images if such infringers as well as primary infringers and, if so, making of a film of the broadcast is for the private and on what basis can someone be liable for secondary domestic use of the person by whom the film is made; infringement? (k) making and issuing of copies of any work into a format to cater for the special needs of people who are visually Actions can be brought against a “secondary” infringer who, or hearing impaired and the issuing of such copies to the without the consent or licence of the copyright owner, and public by non-profit making bodies or institutions and on where he knows or ought reasonably to know that the making such terms as the Minister may determine; of the article was carried out without the consent or licence of (l) reading or recitation in public or in a broadcast by one the copyright owner, imports an article into Malaysia for the person of any reasonable extract from a published literary purpose of: work if accompanied by sufficient acknowledgment; (a) selling, letting for hire, or by way of trade offering or (m) any use made of a work by or under the direction or control exposing for sale or hire, the article; of the Government, by the National Archives or any State (b) distributing the article for the purpose of trade or any Archives, by the National Library, or any State library, or by purpose to an extent that it will prejudicially affect the such public libraries and educational, scientific or profes- owner of the copyright; or sional institutions as the Minister may by order prescribe, (c) by way of trade, exhibiting the article in public. where such use is in the public interest and is compatible with fair practice and the provisions of any regulations, and no profit is derived therefrom, and no admission fee is 5.4 Are there any general or specific exceptions charged for the performance, showing or playing, if any, to which can be relied upon as a defence to a claim of the public of the work thus used; infringement? (n) reproduction of any work by or under the direction or control of a broadcasting service where such reproduction Section 13(2) of the Act provides defences to infringement or any copies thereof are intended exclusively for a lawful actions for the following: broadcasting and are destroyed before the end of the period (a) fair dealing for purposes of research, private study, criti- of six calendar months immediately following the making cism, review or the reporting of news or current events, of the reproduction or such longer period as may be agreed provided that it is accompanied by an acknowledgment between the broadcasting service and the owner of the rele- of the title of the work and its authorship, except that vant part of the copyright in the work, provided that any no acknowledgment is required in connection with the reproduction of a work may, if it is of exceptional documen- reporting of news or current events by means of a sound tary character, be preserved in the archives of the broad- recording, film or broadcast; casting service which are hereby designated official archives (b) doing of any act by way of parody, pastiche or caricature; for the purpose, but subject to this Act, shall not be used for (c) incidental inclusion in a film or broadcast of any artistic broadcasting or for any other purpose without the consent of work situated in a place where it can be viewed by the the owner of the relevant part of the copyright in the work; public; (o) performance, showing or playing of a work by a non-profit- (d) reproduction and distribution of copies of any artistic work making club or institution where such performance, showing permanently situated in a place where it can be viewed by or playing is for a charitable or educational purpose and is in the public; a place where no admission fee is charged in respect of such (e) incidental inclusion of a work in an artistic work, sound performance, showing or playing; recording, film or broadcast; (p) any use of a work for the purposes of any judicial proceed- (f) inclusion of a work in a broadcast, performance, showing ings, the proceedings of a royal commission, a legisla- or playing to the public, collection of literary or musical tive body, a statutory or Governmental inquiry, or of any works, sound recording or film, if such inclusion is made report of any such proceedings, or for the purpose of the by way of illustration for teaching purposes and is compat- giving of professional advice by a legal practitioner; ible with fair practice, provided that mention is made of (q) the making of quotations from a published work if they the source and of the name of the author which appears on are compatible with fair practice and their extent does the work used; not exceed that justified by the purpose, including quota- (g) any use of a work for the purpose of an examination by tions from newspaper articles and periodicals in the form way of setting the questions, communicating the questions of press summaries, provided that mention is made of the to the candidates or answering the questions, provided source and of the name of the author which appears on the that a reprographic copy of a musical work shall not be work thus used; made for use by an examination candidate in performing (r) reproduction by the press, the broadcasting or the showing the work; to the public of articles published in newspapers or period- (h) reproduction made in schools, universities or educational icals on current topics, if such reproduction, broadcasting institutions of a work included in a broadcast intended for or showing has not been expressly reserved, provided that such schools, universities or educational institutions; the source is clearly indicated; (i) making of a sound recording of a broadcast, or a literary, (s) reproduction by the press, the broadcasting or the perfor- dramatic or musical work, sound recording or a film included mance, showing or playing to the public of lectures, in the broadcast insofar as it consists of sounds if such sound addresses and other works of the same nature which are recording of a broadcast is for the private and domestic use delivered in public if such use is for informatory purposes of the person by whom the sound recording is made; and has not been expressly reserved; (j) making of a film of a broadcast, or a literary, artistic, (t) commercial rental of computer programs, where the dramatic or musical work or a film included in the program is not the essential object of the rental; and

(u) making of a transient and incidental electronic copy of a (a) making of any infringing copy for sale or hire; work made available on a network if the making of such (b) selling, letting for hire or, by way of trade, exposing or copy is required for the viewing, listening or utilisation of offering for sale or hire any infringing copy; the work. (c) distribution of infringing copies; Other non-statutory defences include: (d) the possession, otherwise than for private and domestic (i) where the nature of the work itself is such that it should not use, of any infringing copy; be protected on the grounds of public policy; and (e) by way of trade, exhibition in public of any infringing (ii) where the unauthorised public disclosure of the copy- copy; righted material is in the public interest. (f) importation into Malaysia of any infringing copy, other than for private and domestic use; (g) making or the possession of any contrivance used or 5.5 Are interim or permanent injunctions available? intended to be used for the purposes of making infringing copies; Both preliminary and final injunctions are available, as Malaysia (h) circumvention or authorisation of the circumvention of adopts a common law system. Other interlocutory reliefs any effective technological measures; available include Anton Piller orders and Mareva injunctions. (ha) manufacture, importation or sale of any technology or Interlocutory relief is available where appropriate. device for the purpose of the circumvention of a technological protection measure; 5.6 On what basis are damages or an account of profits (i) unauthorised removal or alteration of any electronic rights calculated? management information; and (j) unauthorised distribution, importation for distribution or communication to the public of works or copies of works As damages and account of profits are alternatives, they cannot in respect of which electronic rights management informa- be claimed simultaneously. An account of profits requires the tion has been removed or altered without authority. infringer to calculate the revenue gained from his infringement Upon conviction for an offence under paragraphs (a) to (f) to the party whose rights he has infringed, whereas damages above, the offender is liable to a fine of a sum not less than requires the infringer to compensate the party wronged for the RM2,000 and not more than RM20,000 for each infringing loss he has suffered. This is further reiterated in the case of copy, or to imprisonment for a term not exceeding five years, Motordata Research Consortium Sdn Bhd v Ahmad Shahril bin Abdullah or to both, and for any subsequent offence, to a fine of not less & Ors [2017] MLJU 1187. than RM4,000 and not more than RM40,000 for each infringing copy, or to imprisonment for a term not exceeding 10 years, or 5.7 What are the typical costs of infringement to both. proceedings and how long do they take? Upon conviction for an offence under paragraphs (g) and (ha) above, the offender is liable to a fine of a sum not less than Infringement proceedings typically cost between USD50,000 RM4,000 and not more than RM40,000 for each contrivance and USD100,000 depending on the time, cost and complexity of in respect of which the offence was committed, or to imprison- the matter. On average, it takes approximately 12 to 18 months ment for a term not exceeding 10 years, or to both, and for any from filing to trial. subsequent offence, to a fine of not less than RM8,000 and not more than RM80,000 for each contrivance in respect of which the offence was committed, or to imprisonment for a term not 5.8 Is there a right of appeal from a first instance exceeding 20 years, or to both. judgment and, if so, what are the grounds on which an appeal may be brought? Upon conviction for an offence under paragraphs (h), (i), and (j) above, the offender is liable to a fine not exceeding RM250,000 or to imprisonment for a term not exceeding five The right of appeal from a first instance judgment from the years, or to both, and for any subsequent offence, to a fine High Court is to the Court of Appeal in respect of the whole or not exceeding RM500,000 or to imprisonment for a term not any part of the judgment based on a point of fact or law, or both. exceeding 10 years, or to both. However, an appeal from the Court of Appeal to the Federal It is also an offence to cause a literary or musical work, sound Court can only be based on a point of law, provided that leave is recording or film to be performed in public. granted by the Federal Court. Section 41 further provides that any person committing any of the above offences is guilty of an offence, unless the accused 5.9 What is the period in which an action must be is able to prove that he acted in good faith and had no reasonable commenced? grounds for supposing that copyright or performers’ right would or might be infringed. Six years from the act of infringement before the action is time- barred. The date of infringement will apply with respect to 6.2 What is the threshold for criminal liability and what cases of continuing infringement. are the potential sanctions?

62 Criminal Offences In Malaysia, the prosecution is required to prove beyond reasonable doubt. Upon conviction for an offence under Section 41, 6.1 Are there any criminal offences relating to the offender is liable to a fine, imprisonment and/or both. copyright infringement?

Section 41 of the Act penalises the following activities relating to copyright infringement:

72 Current Developments (a) the licensee joined the owner of the copyrighted material as a co-plaintiff in the suit; or (b) the court had granted leave for the licensee to 7.1 Have there been, or are there anticipated, commence the suit without the joinder of the owner of any significant legislative changes or case law the copyrighted material. developments? 5. Hakubaku Co Ltd v Asiamega Food Manufacturers Sdn Bhd [2018] MLJU 1820 The Act was recently amended in July 2020 which has been The High Court in this matter held that: explained in question 3.6 above. (a) in a case of trade mark infringement, the unauthorised We set out below the current developments in copyright based use of a registered trade mark may also lead to a copy- on the following case laws: right infringement claim; 1. Flexsoft Technolog y Sdn Bhd v First E-Formatics Sdn Bhd & Ors (b) copyright ownership in a trade mark can be a basis to [2020] 5 CLJ 650 expunge a registered trade mark; and The High Court in this matter held, amongst others, that (c) once a plaintiff has established a ground for the although a computer program is a literary work and eligible removal of a registered trade mark from the Trade for copyright protection, there is no copyright claim to any Marks Register (“Register”), even if it is based on a function of a computer program. This is because a func- copyright infringement claim instead of a trade mark tion of a computer program constitutes an “idea” under infringement claim, the court has no discretion but to Section 7(2A) of the Act and is therefore, not entitled to remove the registered trade mark from the Register. copyright protection thereunder. 6. Jyothy Laboratories Ltd v Puaneswaran a/l Renganathan & Ors 2. Alustil Sdn Bhd v Vitally Sdn Bhd [2020] 10 MLJ 487 and another suit [2019] MLJU 208 The High Court in this matter held, amongst others, that: The High Court in this matter held that if a copyrightable (a) Section 7(5) of the Act is very clear and states that material is not designed fully in Malaysia, (such as if it was copyright shall not subsist under the Act in any design designed partly in another country and partly in Malaysia to which is registered under any written law relating to suit the copyrightable material to the Malaysian consumer industrial design. Therefore, there is no dual protec- market), and if the precise identity of the foreign designer tion in copyright and design law. cannot be identified, this may be sufficient indication that (b) An action premised upon a claim for copyright the copyrightable material is not afforded copyright protec- infringement in respect of an alleged work which is tion under the Act, as it has failed to comply with the the subject matter of an industrial design registered in Copyright (Application to Other Countries) Regulations the name of the plaintiff cannot be maintained. 1990, where it is provided that the regulation will apply to 3. Siti Khadijah Apparel Sdn Bhd v Ariani Textiles & Manufacturing “persons who, at the material time, are citizens of, residents in, the (M) Sdn Bhd [2019] 7 MLJ 478 respective specified countries [countries which are members of the Berne The High Court in this matter held, amongst others, that: Convention] as they apply in relation to persons who, at such a time, (a) Clothing, such as a “telekung” (clothing worn by Muslim are citizens of, or permanent residents in, Malaysia”. women during their daily prayer), may be considered “graphic work” as provided in Section 3(a) of the Act. (b) In a copyright infringement claim, the courts may draw 7.2 Are there any particularly noteworthy issues around the application and enforcement of copyright in relation adverse inference against the party who suppresses to digital content (for example, when a work is deemed material evidence regarding the creation and/or design to be made available to the public online, hyperlinking, of a creation eligible for copyright. In this case, the etc.)? defendant failed to adduce evidence that the clothing was designed by the defendant’s designer. Hence, the Section 36A of the Act provides that if a technological protec- courts drew an adverse inference against the defendant tion measure is applied to a copy of a work, no person shall under Section 114 of the Evidence Act 1950. circumvent such measure. “Technological protection measure” (c) A defendant to a copyright infringement claim cannot is defined to mean any technology which prevents or limits the rely on the defence that they are not aware of a plain- doing of any act that results in an infringement of copyright. tiff’s copyright. Once a plaintiff has proven that their Section 36B of the Act prohibits any person from removing work is eligible for copyright protection, there is cause or altering any electronic rights management information or of action for copyright infringement. distributing any works or copies of works knowing that elec- (d) However, a defendant’s lack of knowledge of a plain- tronic rights management information has been removed or tiff’s copyright is a relevant factor for the courts to altered. “Rights management information” means information decide whether to award the following damages, and which identifies the work, the author, the owner of any right of the quantum of such damages: the work, the performer, or the terms and conditions of use of i. statutory damages; the work, numbers/codes that represent such information, when ii. additional damages; any of these items is attached to a copy of a work or appears to iii. exemplary damages; and be in connection with the communication of the work to the iv. aggravated damages. public. 4. Mohamad bin S Ahmad & Ors v Lembaga Pengelola Dewan The Act exempts a service provider from liability for copy- Bahasa dan Pustaka [2019] 9 MLJ 315 right infringement in the following situations: The High Court in this matter opined that even if a 1. if the infringement occurs from: (a) a transmission, routing licensee of a copyrighted material had signed an exclusive or provisions of connections by the service provider of an licence with the owner of the copyrighted material for the electronic copy of the work through its primary network; or benefit of the licensee, the licensee is not entitled to insti- (b) any transient storage by the service provider of an elec- tute a copyright infringement suit, unless: tronic copy of the work in the course of such transmission,

routing or provision of connection, provided that: (i) the 7.3 Have there been any decisions or changes of law service provider did not initiate or direct the transmis- regarding the role of copyright in relation to artificial sion of the electronic copy of the work; (ii) the transmis- intelligence systems, including the use of copyright sion, routing, provision of connections or storage is carried in those systems and/or any work generated by those out through an automatic technical process without any systems? selection of the electronic copy of the work by the service provider; (iii) the service provider does not select the recip- There are currently no judicial decisions nor changes to legisla- ient of the electronic copy of the work except as an auto- ture in Malaysia addressing copyright from AI-generated works, matic response to the request of another person; or (iv) the nor use of copyright in AI systems. service provider does not make any modification, other However, AI systems may fall under the definition of than a modification made as part of a technical process, to “computer programs” under the Act, which in turn are “literary the content of the electronic copy of the work during its works” thereunder. If an AI system is developed as a deriv- transmission through the primary network; ative work which incorporates copyrighted works therein, the 2. in the making of any electronic copy of the work on its AI system would enjoy copyright protection (without prejudice to primary network, if it is: (a) from an electronic copy of the the copyright of the original work used therein) as explained in ques- work made available on an originating network; (b) through tion 1.5 above. Copyright in such systems will vest in the author an automatic process; (c) in response to an action by a user of the system, or their employers (where such system is made in of its primary network; or (d) in order to facilitate efficient the course of the author’s employment) or the persons commis- access to the work by a user; and sioning the creation of the AI system under a contract of service 3. where infringement arises from: (a) the electronic copy of or apprenticeship. the work being stored at the direction of a user of its primary As for whether work generated by AI-systems will be accorded network; or (b) the service provider referring or linking a copyright protection, this is dependent on whether the AI is user to an online location on an originating network where used merely as a tool, or if the AI “author” creates a work itself. an electronic copy of the work is available, provided that the On one hand, AI can be used as a tool to produce a specific service provider does not have knowledge of the infringing outcome whereby users may direct the AI to carry out a specific activity, does not receive any financial benefit directly task to achieve the intended outcome. In such case, as the user attributable to the infringement, and responds within the has made a contribution to such work, it may be argued that the time specified to remove access to the infringing copy. user can claim ownership of copyright in the outcome of the Section 43H of the Act provides that if an electronic copy AI-generated work as opposed to the AI itself. of any work accessible in a network infringes the copyright of On the other hand, in respect of an AI being considered the a work, the copyright owner (“First Issuer”) may notify the “author” of a work itself, as explained in question 1.1 above, service provider to remove any access to the electronic copy copyright arises in a work if the author is a qualified person at on the service provider’s network provided that the First Issuer the time of the making of the work. On this basis, it seems shall undertake to compensate the service provider against that AI-created works may not be eligible for copyright protec- damages arising from complying with such notification. tion as an AI would not fall within the definition of a “qualified person” under the Act, which is presently limited to individuals and body corporates. It remains to be seen whether changes to copyright laws in Malaysia will be introduced to address the foregoing in the near future, as the use of copyright in AI systems and AI-generated works are at a nascent stage in the country.

Jessie Tan Shin Ee graduated from the University of Sheffield (UK), with a Bachelor of Law degree. Jessie’s expertise lies in the field of commercial and corporate law, employment and intellectual property laws. She has advised clients from various industries, particularly the technology, media and telecommunications (“TMT”) sector. In relation to matters relating to TMT, The Legal 500 has stated that “Jessie Tan is the name to note” and Chambers has listed Jessie as a “recognised practitioner”. Jessie was nominated as the Woman Lawyer of the Year for the Asian Legal Business Malaysia Law Awards 2020. Known for her industry knowledge, Jessie has advised domestic and international film production companies making their films in Malaysia and some of the well-known productions that she has advised and worked on include “Crazy Rich Asians”, “Strike Back” and “Skyfire”. She also has experience in film regulatory and investment matters. In addition to handling trade mark and copyright registration matters, Jessie has also advised clients on their intellectual property rights and arrangements and strategies for licensing, branding and global protection.

Shin Associates Tel: +603 2201 5584 Suite B-11-6, Level 11 Email: [email protected] Wisma Pantai, Plaza Pantai URL: www.shinassociates.com.my No. 5, Jalan 4/83A, Off Jalan Pantai Baru 59200, Kuala Lumpur Malaysia

Joel Prashant graduated with a Bachelor of Law (Hons) degree from the University of Wales, Aberystwyth and obtained his Certificate in Legal Practice prior to commencing practice as an advocate and solicitor of the High Court of Malaya. He has significant experience in civil litigation, intellectual property, corporate, commercial, employment, franchise, and data protection law, amongst others. Joel’s expertise lies in the field of intellectual property laws where, throughout his practice, he has advised clients on intellectual property-related matters, including copyright clearance and chain-of-title reviews, exploitation and licensing of intellectual property, and preparation of a wide variety of documentation for multifarious clients in various sectors, including licensing agreements, artiste agreements, and film production-related agreements. Joel has also been involved in various corporate exercises for both foreign and local companies and advised on a myriad of legal issues for clients from various industries.

Shin Associates is passionately driven to provide comprehensive legal and TMT Law Firm of the year for the ALB Malaysia Law Awards 2020. advisory services across national boundaries and on international plat- The firm has also been ranked by Chambers & Partners as a recognised forms. The firm takes fierce pride in its lawyers’ abilities to recognise the practitioner, and ranked by Asialaw as a notable firm in the Technology and unique traits of each client and to create bespoke solutions for each client. Telecommunications, and Intellectual Property practice areas. The firm has been ranked as a leading law firm for technology, media, and www.shinassociates.com.my telecommunications (“TMT”) matters in Malaysia by The Legal 500 and awarded the Media & Entertainment Law Firm of the Year in Malaysia for 2017 by Global Law Experts and is also ranked on Media Law International’s publication. Since 2016, it has been consistently nominated for various categories for the Asian Legal Business (“ALB”) Malaysia Law Awards and ALB South East Asia Law Awards, including Best Boutique Firm of the year, TMT Law Firm of the year, and Transactional Boutique Law Firm of the year. In 2020, the firm was recognised as the Transactional Boutique Law Firm of the year, and nominated as the West Malaysia Law Firm of the year

Luis C. Schmidt

Guillermo Treviño

OLIVARES Manuel Santin

12 Copyright Subsistence related to works like traditional culture, expressions or national symbols. Nonetheless, concepts, ideas, isolated letters or digits, among 1.1 What are the requirements for copyright to subsist others, are excluded from recognition and protection of the in a work? State as they are not considered art works. For example: I. ideas, formulae, solutions, concepts, and in general inven- In terms of the Mexican Copyright Law (MCL), the sole require- tions of any kind; ment for a work to subsist is that it is fixed in a tangible medium II. the industrial or commercial exploitation of the ideas of expression. embodied in works; III. schemes, plans or rules for performing mental acts, playing 1.2 Does your jurisdiction operate an open or closed games or doing business; list of works that can qualify for copyright protection? IV. letters, digits or colours individually, except where they are stylised to such an extent that they become original designs; In Mexican legislation, article 13 of the MCL establishes a closed V. names and titles or phrases individually; list of works. VI. mere layouts or blank forms for completion with any kind of information, and related instructions; 1.3 In what works can copyright subsist? VII. unauthorised reproductions or imitations of coats of arms, flags or emblems of any country, State, municipality According to the aforementioned section 13 of the MCL, the or equivalent political division, or the names, abbrevi- works may be: ated names, symbols or emblems of intergovernmental or I. literary; non-governmental international organisations; II. musical works with or without lyrics; VIII. legislative, regulatory, administrative or judicial texts, and III. dramatic; official translations thereof; nevertheless, protection shall IV. dance; be available for parallel texts, interpretations, compara- V. pictorial or drawing; tive studies, annotations, commentaries and other similar VI. sculptural and plastic; works that involve the creation of an original work; VII. cartoon and comic books; IX. the content of news or journalistic information, whereas VIII. architectural; the form of expression thereof is protected; and IX. film and other audiovisual works; X. information or phrases from everyday use, such as prov- X. radio and television programs; erbs, legends, facts, calendars or scales of measurement. XI. computer programs; XII. photographic; 1.5 Is there a system for registration of copyright and, XIII. works of applied art that include graphic or textile design; or if so, what is the effect of registration? XIV. compilation, consisting of collections of works, such as encyclopaedias, anthologies and databases. Yes, registration must be carried out before the Mexican Copyright Office (MCO). The registration of the work is merely 1.4 Are there any works which are excluded from a declaration and does not in itself constitute a right. copyright protection? Therefore, the effect of copyright registration is merely to serve as a presumption of property over the work. In Mexican legislation, all works fall within the provisions of copyright; however, the scope of protection may vary when

1.6 What is the duration of copyright protection? Does in writing, it shall be presumed that the economic rights are this vary depending on the type of work? divided equally between employer and employee. The employer may disclose the work without the employee’s authorisation, but not otherwise. In the absence of a The term of protection of economic rights in Mexico is: written employment agreement, the rights shall be vested in the a. For the author’s life and 100 years post mortem. In case of employee. joint authorship, the term will be counted from the death of the last surviving author. b. 100 years from its divulgation. 2.4 Is there a concept of joint ownership and, if so, The type of protection will not vary depending on the work; what rules apply to dealings with a jointly owned work? however, there are differences in neighbouring rights, for example for book publishers, there is a protection of 50 years In terms of the MCL, for works of joint authorship, the rights from the first edition of the book, and interpreters or execu- granted by this shall accrue to all the authors in equal shares, tants have a term of 75 years to exercise their opposition rights. unless otherwise agreed or unless the authorship of each one is specified. 1.7 Is there any overlap between copyright and other In order to exercise these rights, the consent of the majority intellectual property rights such as design rights and of the authors shall be required. The minority, if any, shall not database rights? be obliged to contribute to any costs that might arise, subject to their deduction from any benefits that might be obtained. There is a unique right in Mexican Copyright called Reserva When the aforementioned majority exploit the work, they Rights. Reserva is an exclusive patrimonial right to authorise shall deduct the amount of the expenses incurred from the total the use of titles of publications or broadcasts, names of artists proceeds and hand over to the minority the share to which the or artistic groups, characters of fictitious or human nature, or latter is entitled. so-called publicity promotions. As such, Reserva Rights some- When the contribution made by each of the authors is clearly times overlap with trademarks and with other types of works identifiable, those authors may freely exercise their economic protected by copyright. rights. Likewise, a similar figure in both trademarks and copyright is Finally, each of the co-authors of a work may seek the regis- sound. According to the Industrial Property Law (IPL) sound tration of the whole work. If any of the co-authors or owners of may be registered as a trademark and in copyright the protection economic rights dies and does not have any heirs, his rights shall would be of the phonogram or sound recording. be assigned to the other co-authors. 32 Exploitation 1.8 Are there any restrictions on the protection for copyright works which are made by an industrial process? 3.1 Are there any formalities which apply to the transfer/assignment of ownership? There are restrictions on the industrial or commercial exploitation of the ideas embodied in works. There are certain formalities including that agreements and contracts by which economic rights are transferred must be 22 Ownership registered before the Mexican Public Copyright Register in order to be enforceable against third parties.

2.1 Who is the first owner of copyright in each of the works protected (other than where questions 2.2 or 2.3 3.2 Are there any formalities required for a copyright apply)? licence?

The first owner of copyright is the author or authors of the There are some formalities established in the MCL and as such work. The author is the natural person who creates any literary, any licence granted must be onerous and temporal, and almost artistic or scientific work. always in written form.

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

In case of a commissioned work or a work-made-for-hire, all In the absence of any express provision, any transfer of economic economic rights and divulgation rights correspond to the entity rights shall be deemed to be for a term of five years. or person who commissioned the work, however the remaining Exceptionally, a term of more than 15 years may be agreed moral rights remain with the author. upon but only in exceptional cases where the nature of the work or the scale of the required investment justifies a longer term.

In the case of work carried out as a result of an employment rela- All copyright and related rights works have collective licensing tionship established through an individual employment contract bodies or collective management societies. As such, they are

not restricted only to certain works. The most relevant socie- VI. The disclosure of derived works, in any of the forms that ties in Mexico are: such works may take, including translations, adaptations, ■ Society of Authors and Composers of Mexico (SACM is its paraphrased versions, arrangements and transformations. Spanish acronym). In this regard it is important to note that the law does not ■ General Society of Writers of Mexico (SOGEM is its protect against the creation of derived works, only from Spanish acronym). their disclosure. ■ National Association of Interpreters (ANDI is its Spanish acronym). 4.2 Are there any ancillary rights related to copyright, ■ Mexican Society of Music Performers (SOMEN is its such as moral rights, and, if so, what do they protect, Spanish acronym). and can they be waived or assigned? ■ Mexican Society of Plastic Arts (SOMART is its Spanish acronym). In Mexican legislation, and in accordance with “droit d’auteur”, there is a recognition of certain moral rights inherent to authors. 3.5 Where there are collective licensing bodies, how As such, the sole, original and perpetual owner of the moral are they regulated? rights is the author, and said rights are inalienable, non-waivable, imprescriptible, and unseizable. Collective licensing bodies or collective management societies These moral rights grant the author the power to: are regulated by sections 192 to 207 of the Mexican Copyright I. Decide the moment and manner of disclosure of the work. Law, and sections 115 to 136 of the Regulations of the Mexican II. Demand recognition of authorship in relation to the work Copyright Law. or decide that it is to be disclosed as an anonymous or pseudonymous work, colloquially known as a “paternity right”. 3.6 On what grounds can licence terms offered by a III. Prohibit any distortion, mutilation or other modification collective licensing body be challenged? thereof, or any act or action in relation to the work that might detract from its merit or prejudice its author’s repu- In general, the most relevant argument that may be used to chal- tation, colloquially known as an “integrity” right. lenge licence terms offered by collective management societies IV. Amend the work. (CMS) is the correct representation of the author. It is quite V. Withdraw the work from the market. common for the same work or author to be represented by a VI. Object to the attribution to the author of a work not different CMS. created by him. Likewise, the Mexican Copyright Law established the concur- rence of collective management societies by branch, category works or related rights, which may mean that royalties from one 4.3 Are there circumstances in which a copyright owner is unable to restrain subsequent dealings in works work are paid to two different societies. which have been put on the market with his consent? 42 Owners’ Rights The owners of economic rights may authorise or prohibit the distribution of the work, however the right of opposition will be 4.1 What acts involving a copyright work are capable of considered exhausted on the first sale, meaning they are not able being restricted by the rights holder? to restrain subsequent dealings of the work. There is, however, an exception to the exhaustion of said According to Mexican legislation, the title holders of the opposition rights which deals with computer works or data- economic rights may authorise or prohibit: bases. In accordance with article 107 of the MCL, the owner of I. Reproduction, publication, editing or material fixation of the copyright of computer program or database shall retain the their work, in any medium, whether existing or devised in right to authorise or prohibit the rental of such copies even after the future. the sale of the copies. II. The public communication of the work in any of the following manners: 52 Copyright Enforcement a. public communication, recitation and public performance of the work; 5.1 Are there any statutory enforcement agencies and, b. public exhibit by any means; or if so, are they used by rights holders as an alternative to c. public access by telecommunication. civil actions? III. Transmission or broadcasting of their works by any process, including the transmission or retransmission of the works by: There is primarily a statutory trade-related enforcement agency a. cable; provided for in the MCL – the Mexican Patent and Trademark b. optic fibre; Office (IMPI, by its Spanish acronym). c. microwaves; Usually right holders will use IMPI as a first instance for d. satellite; or settling disputes and enforcing copyright infringement, before e. any other known or emerging means. presenting a civil claims suit before the competent Civil Courts. IV. Distribution of the work, meaning the physical units or Also, the MCL provides for a settlement procedure (proced- copies of the material medium containing the work. imiento de aveniencia) carried out in the MCO. V. The importation into the Mexican territory of copies of the Finally, civil law and the commercial code also provide alter- work made without authorisation. native methods of dispute resolution through arbitration.

5.2 Other than the copyright owner, can anyone else the original product or of the original rendering of any type of bring a claim for infringement of the copyright in a work? service which involves infringement.

Any person who has a legal interest in relation to the infringe- 5.7 What are the typical costs of infringement ment of copyright may bring forward a claim before the compe- proceedings and how long do they take? tent authorities. As such, licensees that have an exclusive or non-exclusive licence may sue third parties for copyright The costs and time frame of infringement proceedings will vary infringement and the author’s heirs or successors may claim on a case-by-case basis. Usually, for the first instance of the copyright violation. procedure, the costs will be from USD 6,000 to USD 15,000 Finally, the holders of the so-called neighbouring rights, for depending on the complexity of the case. example performers, book publishers, producers of phono- As for the time frame, civil proceedings vary from 16 to grams and videograms, and broadcasters may claim copyright 36 months. Administrative proceedings usually take longer, infringement. varying from 24 to 72 months.

5.3 Can an action be brought against ‘secondary’ 5.8 Is there a right of appeal from a first instance infringers as well as primary infringers and, if so, judgment and, if so, what are the grounds on which an on what basis can someone be liable for secondary appeal may be brought? infringement?

Yes, there are several rights to appeal a first instance judgment. Mexican law does not differentiate expressly between primary There are, in general, three methods to appeal the decision. and secondary infringers; however, the law provides for These are as follows: secondary infringements in different sections of the MCL, and 1. The option to review the decision before the same enforce- may be brought forward before the statuary enforcement agen- ment agency within 15 business days of the judgment. cies or before the competent court. Usually the grounds brought forward are related to omis- sions of the arguments filed before the authority in the 5.4 Are there any general or specific exceptions case. which can be relied upon as a defence to a claim of 2. A Nullity Trial before the Specialized Intellectual Property infringement? Court which must be within 30 business days of the judgment. This trial is brought forth on the grounds of certain There are several limitations or exceptions provided for in deficiencies of the authority concerning the administrative Mexican Law. These limitations derive from the so-called elements of the case. “three-step test” enshrined first in the Berne Convention for 3. An Amparo Trial (constitutional appeal), this appeal would the Protection of Literary and Artistic Works and later in Trade- be carried out against the sentence by the Specialized Related Aspects of Intellectual Property Rights and the World Intellectual Property Law for violations against the rights Intellectual Property Organization Copyright Treaty. enshrined in the Constitution. This appeal is resolved by Some of these limitations are: Federal Courts and must be filed within 15 business days ■ Citation of texts. of the judgment by the Specialized Intellectual Property ■ Reproduction of works, photographs and illustrations of Law. current events. ■ Private copies for personal use. 5.9 What is the period in which an action must be ■ Reproduction of a single copy for the purpose of preserving commenced? it. ■ Reproduction for judicial or administrative means. Although there are no exact or specific provisions in which, ■ Reproduction of works visible from public spaces. regarding copyright infringement, a claim must be commenced, ■ Publication of non-profit artistic and literary work for there is the general rule in the Federal Civil Code that it must be people with disabilities. brought within two years from the time the plaintiff is aware of the infringement. 5.5 Are interim or permanent injunctions available? 62 Criminal Offences Yes, there are certain injunctions available to any party claiming copyright infringement. 6.1 Are there any criminal offences relating to Among said injunctions are: copyright infringement? a. The withdrawal of infringing goods from circulation. b. A prohibition on selling and marketing infringing goods. Yes, the Federal Penal Code establishes the Copyright offences c. Securing and seizing of alleged infringing products. applicable. These offences are generally punishable by impris- d. A prohibition on continuing to market or exploit adver- onment, as well as financial fines. tisements, signs or anything similar.

6.2 What is the threshold for criminal liability and what 5.6 On what basis are damages or an account of profits are the potential sanctions? calculated?

Criminal behaviour in relation to copyright is linked to copy- In accordance with section 216 bis of MCL, compensation shall right privacy and bad faith infringements. not be, on any account, less than 40% of the public sale price of

According to the Federal Criminal Code, articles 424 to 429, 6. Imprisonment shall be imposed from six months to six the sanctions will vary depending on the specific illegal activity, years and a fine equal to 300 to 3,000 days of minimum as follows: wage for those who knowingly publish a work substituting 1. A prison sentence of six months to six years and a fine the author’s name for another name. equal to 300 to 3,000 days of minimum wage will be The pecuniary sanctions provided for in this title shall be imposed on: applied without prejudice to the damage repair, which, as stated I. anyone who speculates in any way with the free text- in question 5.6 above, shall not be less than 40% of public sale books distributed by the Ministry of Public Education; price of the original product. II. publishers who knowingly produce more copies than is authorised of a work protected by the MCL; and 72 Current Developments III. whoever intentionally uses, for profit and without the corresponding authorisation, works protected by the 7.1 Have there been, or are there anticipated, MCL. any significant legislative changes or case law 2. A prison sentence of between three and 10 years will developments? be imposed and a fine equal to 2,000 to 20,000 days of minimum wage for anyone: Currently, there are several bills that propose amendments to I. who produces, reproduces, stores, transports, distrib- both the Mexican Copyright law and the Industrial Property utes, sells or leases copies of works, phonograms, vide- Law being discussed in the Congress. The aim of the amend- ograms or books, protected by MCL, for the purpose ments is to bring the laws in line with Chapter 20 of the United of commercial speculation, and without the relevant States-Mexico-Canada Agreement. authorisation. The same sanction shall be imposed on anyone who knowingly contributes or provides in any way raw materials or supplies intended for the produc- 7.2 Are there any particularly noteworthy issues around tion or reproduction of the works; or the application and enforcement of copyright in relation II. who makes for profit a device or system the purpose of to digital content (for example, when a work is deemed which is to deactivate the electronic protection devices to be made available to the public online, hyperlinking, etc.)? of a computer program. 3. Imprisonment will be imposed for a period of between six months and six years and a fine equal to 5,000 to 30,000 Although not strictly a copyright enforcement issue as it is more days of minimum wage, to those who sell to any final closely related to telecommunications, there is a noteworthy consumer on the road or in public places, for the purposes issue concerning over the top service providers. of commercial speculation, reproductions of works, A recent bill proposed before Congress seeks to impose phonograms, videograms or books. If the sale is made in Value-Added Tax on OTT providers and a content quota to a commercial establishment, or in an organised or perma- ensure 30% is classed as a Mexican production. This would nent manner, the sanction established in the previous have a direct effect on the enforcement and the use of metadata paragraph shall apply. to differentiate audiovisual works. 4. A prison sentence of between six months and two years or This bill is being lobbied by big companies in Mexico, and a fine equal to 300 to 3,000 days of minimum wage will it only serves said big companies’ interests as the law currently be imposed on anyone who knowingly and without right has strict restrictions on what is to be considered a Mexican exploits an interpretation or execution for profit. Production. 5. Imprisonment will be imposed for a period of between six months and four years and a fine of 300 to 3,000 days of 7.3 Have there been any decisions or changes of law minimum wage, in the following cases: regarding the role of copyright in relation to artificial I. whoever manufactures, imports, sells or leases a device intelligence systems, including the use of copyright or system to decrypt an encrypted satellite signal, in those systems and/or any work generated by those without authorisation of the legitimate distributor of systems? said signal; and II. whoever performs for profit any act with the purpose In Mexico, there are not yet any judicial decisions nor proposed of deciphering an encrypted satellite signal or carrier bills to reform the law related to Artificial Intelligence or the use of programs without authorisation from the legitimate of copyright generated by such systems. distributor of said signal.

Luis C. Schmidt is head of the firm’s entertainment group, which handles matters pertaining to copyright law and related IP rights, as well as the full range of transactional, litigation and consulting matters. The group Mr. Schmidt heads is experienced in designing and negotiating production or distribution of audiovisual or music projects, by including the drafting of IP, finance, insurance and all sort of transactional deals. The group is strong for litigating cases across the spectrum of IP and related areas, including civil, criminal and administrative actions for validity or ownership of IP rights, IP infringement, defamation and freedom of expression, and of anti-counterfeiting and piracy, particularly take downs and website blocking. They also conduct alternative dispute resolution (ADR), with emphasis on WIPO or IFTA. The group handles regulatory work before the Copyright Office and other agencies of the federal and local governments that specialise in film or cultural affairs.

OLIVARES Tel: +52 55 5322 3000 Pedro Luis Ogazón 17 Email: [email protected] Col. San Ángel URL: www.olivares.mx Ciudad de México 01000 Mexico

Guillermo Treviño graduated from the Universidad del Valle de México and has been an Intellectual Property and Entertainment Lawyer for 22 years at OLIVARES. He is in charge of the area of copyright, has participated in various relevant legal issues related, among others with alleged guilty and Roma cinematographic works. He also performs the legal practice of government relations before different federal and local authorities and lobbying activities before the two cameras of the congress.

OLIVARES Tel: +52 55 5322 3000 Pedro Luis Ogazón 17 Email: [email protected] Col. San Ángel URL: www.olivares.mx Ciudad de México 01000 Mexico

Manuel Santin’s work in OLIVARES focuses on Entertainment and Copyright, especially in the drafting of agreements, project finance for the audiovisual industry and clearance procedure of rights. He joined OLIVARES in 2018 after obtaining his JD in the National Autonomous University of Mexico (UNAM, by its Spanish acronym). Additionally, he has collaborated as the production in-office lawyer of several audio- visual works in television series format. Manuel Santin has advised several production companies on the development and copyright viability of projects. As part of the Entertainment and Copyright team led by Luis C. Schmidt, he has participated in the development of several high- profile audiovisual works.

OLIVARES Tel: +52 55 5322 3000 Pedro Luis Ogazón 17 Email: [email protected] Col. San Ángel URL: www.olivares.mx Ciudad de México 01000 Mexico

OLIVARES is a world-class IP law firm which represents some of the world’s biggest brands. We receive numerous awards and accolades every year from industry magazines and peer reviews due to a combination of long-established trust, the highly-personalised service we provide for our clients, and a history of precedent-setting success in patent, trademark, copyright, regulatory, administrative and constitutional law. We leverage our 50 years of experience to offer a full range of IP, regulatory, administrative and corporate and commercial law services, across all industries. www.olivares.mx

Advokatfirmaet GjessingReimers AS Øystein Flagstad

12 Copyright Subsistence decisions, as well as proposals, reports, statements and similar which concern public authority and which have been written or published by public authority or a publicly appointed body. Also, 1.1 What are the requirements for copyright to subsist official translations of such documents are excluded from copy- in a work? right protection. The exemption does not apply for pre-existing works not prepared especially for inclusion in public documents, Under Norwegian law, three conditions must be fulfilled: (1) the which are quoted in or attached to public documents. work must be created; (2) the work must be within the literary or artistic area; and (3) the work must be an expression of an 1.5 Is there a system for registration of copyright and, original and individual creative effort by the creator. The basic if so, what is the effect of registration? requirements appear in § 2 of the Norwegian Copyright Act (15 June 2018 No. 40). There is no copyright registration in Norway.

1.2 Does your jurisdiction operate an open or closed list of works that can qualify for copyright protection? 1.6 What is the duration of copyright protection? Does this vary depending on the type of work? The Copyright Act § 2 contains a list of works that will typically be protected by copyright; however, the works listed will Copyright protection lasts for the author’s lifetime plus 70 years not automatically qualify for copyright protection and one must from the first year after the author’s year of death. For works always consider whether the basic requirements for copyright with more than one author, the 70 years are calculated based on (ref. question 1.1) are present in the work. Works of categories the year of death of the longest surviving author. For anony- that are not listed may also qualify. mous works, the 70 years are calculated from the first year after the year of first publication. Non-published works for which copyright protection has lapsed and which are later published 1.3 In what works can copyright subsist? are protected for 25 years following the year of publication. The term of copyright is the same for all types of copyright The types of works listed in § 2 are: written texts of all kinds, works, however creations protected by neighbouring rights have including fiction and non-fiction; oral lectures; stage works, different terms of protection. both dramatical, musical dramatical and works of choreography; pantomime and radio drama; musical works with or without 1.7 Is there any overlap between copyright and other text; film works; works of photography; paintings; drawings; art intellectual property rights such as design rights and prints and similar works of visual arts; sculptures; building art; database rights? both drawings and models and the building itself; tapestries and handicrafts, both the model and the work itself; maps; drawings Under Norwegian law, a design registration does not preclude and graphic and plastic depictions of a scientific or technical copyright protection in the same work. The same applies for nature; computer programs; and translations or other adapta- databases, which may be protected simultaneously by copyright tions of previously mentioned works. Photographs which are and by database rights. not works of photography are protected by a separate provision in the Copyright Act § 23. 1.8 Are there any restrictions on the protection for copyright works which are made by an industrial 1.4 Are there any works which are excluded from process? copyright protection?

Handicrafts and products of industrial design may be protected Under § 14 of the Copyright Act, certain documents from public by copyright under Norwegian law. The requirements for authorities (Norwegian as well as foreign) are excluded from protection are the same as those that apply for other types of copyright protection, namely primary and secondary legisla- copyright works; however, because features that are solely tion, judgments from a court of law and other administrative

functional do not warrant copyright protection, works of indus- (Copyright Act § 8). In addition, joint ownership can be estab- trial design are in practice less likely to be protected by copyright lished through an agreement which transfers copyright from the than pure works of art such as paintings or sculptures. original author(s). Exercise of ownership shares in a jointly owned work is 22 Ownership subject to the general provisions in Norwegian law on joint ownership. In addition, the Copyright Act sets out certain additional provisions. For jointly created works, for example, the 2.1 Who is the first owner of copyright in each of the works protected (other than where questions 2.2 or 2.3 Copyright Act stipulates that the first publication of the work apply)? must be carried out with the consent of all authors, and the same applies for a later publication of the work in another manner or another form. However, each author can request or permit new The author/creator of the work is the first owner of copyright publication in the same manner and form as the previous publi- in all types of copyright works. A legal entity may be the first cation. Each author is entitled to file legal action in relation to owner of certain creations protected by neighbouring rights copyright infringement, and each author shall be considered as a (such as data bases, films or sound recordings). suffering party in relation to such infringement.

2.2 Where a work is commissioned, how is ownership 32 Exploitation of the copyright determined between the author and the commissioner? 3.1 Are there any formalities which apply to the transfer/assignment of ownership? In the preparatory works for the new Copyright Act, the Ministry proposed a provision entailing that the rights to There are no particular formalities, i.e. transfer/assignment commissioned works to a certain extent would be automatically does not require a written agreement and can also be carried transferred from the author to the commissioner, provided that out through an oral agreement or through an understanding the author is without economic risk for the result. This proposal between the parties (as in employer-employee relationships as was met with outrage from authors, artists and creators, and was described above); however, it is always advisable to enter into a therefore not included in the 2018 Copyright Act. The issue of written agreement. transfer of copyright to the commissioner is therefore subject to The Copyright Act Chapter 4 regulates how an agreement on the terms of the agreement between the author and the commis- transfer of copyright shall be construed. The interpretation of sioner, however, so that the circumstances surrounding the such agreements shall be based on a principle where the rights creation of the work can still be relevant for the interpretation transferred shall not be more extensive than what is clearly set of the commissioning agreement. out in the agreement. A right to modify the work or to onwards transfer must be explicitly agreed, however, so that rights that 2.3 Where a work is created by an employee, how is are a part of a business enterprise or department of a business ownership of the copyright determined between the enterprise may be transferred together with the business itself. employee and the employer?

3.2 Are there any formalities required for a copyright The preparatory works for the draft Copyright Act also licence? contained a provision regarding transfer from an employee to the employer; however, this provision was also omitted in the final Act. Under Norwegian legal theory, however, dating back There are no particular formalities, although a written agree- to the 1936 standard work on intellectual property by Professor ment is always preferable. Copyright licence agreements are Ragnar Knoph, the common understanding is that the copy- subject to the same interpretation rules as agreements for right in works created by an employee during the employee’s transfer of ownership, see the Copyright Act Chapter 4. execution of his or her tasks related to the employment, unless otherwise agreed, is transferred to the employer to the extent 3.3 Are there any laws which limit the licence terms such transfer is necessary for the employment contract to reach parties may agree to (other than as addressed in its purpose. It is generally recognised that such a rule exists in questions 3.4 to 3.6)? Norwegian substantive copyright law. For computer programs created by an employee during the execution of tasks comprised Under the Copyright Act § 69, the author is always entitled to by the employment relationship and in accordance with the receive equitable remuneration, however, so that the assessment employer’s directions, the copyright is automatically transferred of whether the remuneration is equitable shall be based on the to the employer under a separate provision in the Copyright Act. circumstances on the date when the licence was granted. Also, where the remuneration is dependent on income, sales or the like, 2.4 Is there a concept of joint ownership and, if so, the author also has a non-waivable right to carry out audits of the what rules apply to dealings with a jointly owned work? basis for the calculation of the remuneration, Copyright Act § 70.

Joint ownership in a work can be established in several manners, 3.4 Which types of copyright work have collective i.e. by a new author’s translation or adaptation of a pre-existing licensing bodies (please name the relevant bodies)? work (Copyright Act § 6), by an author collecting or compiling pre-existing works in a manner which expresses an original The bodies are: and creative effort (Copyright Act § 7) or by joint creation of ■ For copyright including publishing rights in musical works by more than one author where the contributions of each works/lyrics: TONO (public performance or communica- author cannot be separated from those of the other authors tion to the public of recorded music and “live” music); and NCB (mechanical rights).

■ For reprographic rights in written works, illustrations etc.: available on the Internet in a manner which is not in compliance Kopinor. with the Copyright Act, is illegal where such streaming is likely ■ For public performance or communication to the public to inflict substantial damage to the economic interests or the of recorded music in relation to neighbouring rights rights holders. This provision does not have a counterpart in belonging to record producers and artists: Gramo. EU law and was included as a result of a debate as to whether ■ For retransmission of TV broadcasts and a number of it should be illegal to use illegal streaming services in a private other uses: NORWACO. setting. The provision may be superfluous after the CJEU judg- ■ For secondary use of copyright in visual art works (paint- ment in the Filmspeler case (C-527/15). ings, sculptures etc.): BONO. 4.2 Are there any ancillary rights related to copyright, 3.5 Where there are collective licensing bodies, how such as moral rights, and, if so, what do they protect, are they regulated? and can they be waived or assigned?

If a collective licensing body is to be able to enter into agree- Moral rights under § 5 of the Norwegian Copyright Act include ments with extended collective licensing effects (i.e. where the the right for the author to be named where the work is made agreement will also cover similar works of authors who have not available to the public, to the extent this is required under authorised the licensing body to manage their rights), the body customary practice and where naming is possible. Moral rights must be approved by the Ministry of Culture based on a finding also include a provision which prohibits modifying the works by the Ministry that the body represents a significant number of or making it available to the public in a manner or in a context authors of works in use in Norway, and that the body is suited which is defamatory for the esteem or character of the author to manage the rights. Otherwise, the collective licensing bodies or the work. The author can permit individual uses which in Norway are in the process of adapting to the requirements would otherwise have breached moral rights, provided that the of Directive 2014/26/EU (the CRM Directive); however, the permitted use is limited in nature and scope; however, general implementation of the Directive into Norwegian national law waivers or assignments of moral rights are invalid. has not yet been completed. 4.3 Are there circumstances in which a copyright owner is unable to restrain subsequent dealings in works 3.6 On what grounds can licence terms offered by a which have been put on the market with his consent? collective licensing body be challenged?

If the parties do not agree on the remuneration for use of copy- The rights are limited in a number of cases described in Section right works under certain compulsory statutory licences, each 3 of the copyright act, including copying for private use, resale and display of copies originally sold with the consent of the party can request that the remuneration is determined by rights holder (consumption), quotations, depiction of publicly “Vederlagsnemnda” (The Remuneration Board), and this will then displayed works, mandatory statutory licences and extended become binding upon the parties. If the parties cannot agree collective licences in connection with teaching or exams, use in on the terms of use or the remuneration under extended collec- libraries, archives etc., use for access by the disabled, etc. tive licence provisions, each party may request mediation by the National Mediator of Norway, and, if the parties so agree or where the desired licence is a reprographic licence for educa- 52 Copyright Enforcement tional use, that the licence terms and the remuneration are decided by “Vederlagsnemnda”. 5.1 Are there any statutory enforcement agencies and, if so, are they used by rights holders as an alternative to 42 Owners’ Rights civil actions?

4.1 What acts involving a copyright work are capable of Not at present, however, in the proceedings leading up to the being restricted by the rights holder? Copyright Act 2018, the Parliament made a request that the Ministry of Culture should consider whether such an agency can be established for the use by artists, in particular in relation to The rights holder has exclusive rights to (1) make permanent or artists’ exercise of their equitable remuneration right. temporary copies of the work, and (2) to make the work available to the public. The right to make the work available to the public is divided into four different rights: (a) the right to offer copies 5.2 Other than the copyright owner, can anyone else of the work for sale, rental or loan or otherwise to distribute bring a claim for infringement of the copyright in a work? copies to the public; (b) public display of a copy of the work without the use of technical means; (c) public performance of the Claims for infringement of moral rights in a work by an author work; or (d) communication to the public, via cable or wireless, who is deceased may be brought by the author’s widow or widower including through broadcasting or in a manner where each user or by certain relatives, even if they are not copyright owners. can choose the time and place for access to the work. Category Also, the Ministry of Culture may bring claims for infringement (d) was added in the Copyright Act 2018, and it is stated in the of certain moral rights, namely against making a work available to preparatory works that the category shall have the same content the public in a manner or in a context which is defamatory for the as “communication to the public” under Article 3 of Directive esteem or character of the author or the work, or where the use 2001/29/EC (The Copyright Directive). may otherwise be considered to damage general cultural interests. Norwegian law also contains a separate provision in § 3 that The latter right by the Ministry applies after the original author is streaming or other use of works which have obviously been made deceased and also after the term of copyright has lapsed.

5.3 Can an action be brought against ‘secondary’ 5.7 What are the typical costs of infringement infringers as well as primary infringers and, if so, proceedings and how long do they take? on what basis can someone be liable for secondary infringement? This varies greatly, however, an estimate could be in the range of NOK 100,000–200,000 per day in court, excluding VAT. The The Norwegian Copyright Act stipulates that secondary or rule in the civil code is that the court date should be no more contributory infringers have a criminal liability and are liable than six months following the date of the writ of summons, for compensation in the same manner as the primary infringer. however, some additional delay may be expected as a result of The further conditions for liability are based on Norwegian the case backlog caused by the COVID-19 pandemic. legal theory, including a requirement that the contributing act must be “contrary to law”. 5.8 Is there a right of appeal from a first instance judgment and, if so, what are the grounds on which an 5.4 Are there any general or specific exceptions appeal may be brought? which can be relied upon as a defence to a claim of infringement? Judgments in the first instance may be appealed to the secondary level (“Lagmannsretten”) and then to the Supreme It is a condition for criminal liability that the infringer has acted Court in the final instance. Appeals to the secondary level can with criminal intent. For compensatory liability, the claimant must establish that the infringement has been committed be based on errors in factual judgment, application of law or due through negligence or wilful misconduct – except that an process. Appeals to the Supreme Court are more limited, and infringement in good faith shall give the owner the right to further appeals may also be denied by the Supreme Court at its receive compensation corresponding to a reasonable licence fee discretion. or the financial gains received through the infringement. 5.9 What is the period in which an action must be commenced? 5.5 Are interim or permanent injunctions available?

The general statute of limitations entails that action must be Yes – both interim and permanent injunctions can be granted by commenced within three years from the date when the suffering the ordinary courts of Norway. party gained or should have gained knowledge of the infringement and the responsible party. 5.6 On what basis are damages or an account of profits calculated? 62 Criminal Offences

A copyright infringer who causes the infringement through wilful 6.1 Are there any criminal offences relating to misconduct or negligence becomes liable for the greater of: copyright infringement? (a) reasonable remuneration for the use, plus economic damages caused by the infringement that would not have Infringement of copyright is a criminal offence under been caused where the use had been agreed with the rights Norwegian law. holder; (b) economic damages caused by the infringement; or 6.2 What is the threshold for criminal liability and what (c) compensation corresponding to the infringer’s financial are the potential sanctions? gains from the infringement. In case of wilful or grossly negligent infringement, the claimant can also be awarded an amount for non-economic Criminal liability requires that the copyright infringement is damages (“pain and suffering”); however, such amounts tend to caused by criminal intent. Intentional Copyright infringements be limited under Norwegian law. are subject to fines or jail time up to three years. Contributory Where the infringement has been caused by wilful miscon- acts are subject to criminal liability in the same manner as the primary act. duct or gross negligence, the suffering party may also claim compensation for an amount corresponding to two times the reasonable remuneration for the use. 72 Current Developments A contributory infringer may also be found liable in accordance with the above. 7.1 Have there been, or are there anticipated, An infringer who has acted in good faith may become liable any significant legislative changes or case law for compensation corresponding to reasonable remuneration or developments? financial gains. In case of breach of the illegal streaming provision, wilful A new Copyright Act entered into force on 1 July 2018. Norway misconduct is required for liability. has implemented or is expected to implement all legislation resulting from the Digital Single Market strategy from the EU.

7.2 Are there any particularly noteworthy issues around The Norwegian copyright act also contains separate provi- the application and enforcement of copyright in relation sions on blocking of infringing websites, which are also not to digital content (for example, when a work is deemed based on EU law. Such blocking can only concern “websites” to be made available to the public online, hyperlinking, and it is a condition that the website provides access to a large etc.)? quantity of material which obviously infringes rights under the Copyright Act. Blocking requests shall be made to Oslo District Norwegian law contains a separate provision that streaming or Court, which, in order for a request to be successful, must find other use of works which have obviously been made available that the interests in favour of blocking outweigh the inter- on the internet in a manner which is not in compliance with ests which will suffer from blocking, and also the right of free the Copyright Act is illegal where such streaming is suited to speech and freedom of information. inflict substantial damage to the economic interests or the rights holder. This provision does not have a counterpart in EU law 7.3 Have there been any decisions or changes of law and was included as a result of a debate as to whether it should be regarding the role of copyright in relation to artificial illegal to use illegal streaming services in a private setting. The intelligence systems, including the use of copyright provision may be superfluous after the CJEU judgment in the in those systems and/or any work generated by those Filmspeler case (C-527/15). systems?

No, there have not.

Øystein Flagstad is a partner at GjessingReimers. He focuses on copyright and technology law. He has extensive experience working for rights holders within the media and entertainment sector, R&D sector and technology sector, including issues relating to music rights, drafting and negotiation of licensing agreements, consultancy agreements and consortium agreements.

Advokatfirmaet GjessingReimers AS Tel: +47 913 48 501 Grev Wedels plass 7 Email: [email protected] P.O. Box 678 Sentrum URL: www.gjessingreimers.no 0106 Oslo Norway

GjessingReimers is a boutique IP and technology law firm, the first of its kind in Norway. GjessingReimers started to operate in April 2019. We are a new firm but have considerable experience within all areas of IP and technology law. We have all worked together for many years and have a truly collaborative culture. We are passionate about IP and technology, and about providing the best legal advice to our clients. www.gjessingreimers.no

Vida M. Panganiban-Alindogan

SyCip Salazar Hernandez & Gatmaitan Anna Loraine M. Mendoza

12 Copyright Subsistence and regulations, and speeches, lectures, sermons, addresses, and dissertations, pronounced, read or rendered in courts of justice, before administrative agencies, in deliberative assemblies and in 1.1 What are the requirements for copyright to subsist meetings of public character. in a work?

1.5 Is there a system for registration of copyright and, Original intellectual creations in the literary and artistic domain if so, what is the effect of registration? are protected under the provisions of the Intellectual Property Code of the Philippines (IP Code). The IP Code provides for the registration and deposit of copyrighted works with the National Library and the Supreme Court 1.2 Does your jurisdiction operate an open or closed Library. However, in a Memorandum of Agreement signed on list of works that can qualify for copyright protection? January 25, 2011, the National Library deputised the Intellectual Property Office of the Philippines (IPO) as a receiving office for Section 172.1 of the IP Code provides an illustrative, non-ex- the registration and deposit of copyrighted works. To implement haustive enumeration of literary and artistic works which may the said deputisation, the Guidelines for Copyright Registration qualify for copyright protection, including a catch-all provision and Deposit (Guidelines) were formulated, which include, for “other literary, scholarly, scientific, and artistic works”. among others, a procedure for the registration and deposit of copyrighted works with the Intellectual Property Satellite Offices 1.3 In what works can copyright subsist? (IPSOs) of the IPO. Recently, the IPO issued Memorandum Circular No. 2020-025 which provides for the Revised Rules on Copyright Registration (Revised Rules on Copyright Apart from literary, artistic and musical works, other works Registration), which take effect on September 5, 2020. The covered by copyright include: architecture; computer programs; Revised Rules on Copyright Registration provide for the proce- advertisements; and maps and technical drawings. The dure for copyright registration, remedies in case of denial of the following derivative works are also protected by copyright: (a) application, post-registration procedure, and, significantly, the dramatisations, translations, adaptations, abridgments, arrange- copyright online registration and deposit system, among others. ments, and other alterations of literary or artistic works; and (b) The Revised Rules on Copyright Registration did not affect collections of literary, scholarly or artistic works, and compila- the system of deposit of works in the field of law maintained by tions of data and other materials which are original by reason of the Supreme Court Library. the selection or coordination or arrangement or their contents. Copyright protection exists from the moment of creation. Works are protected by the sole fact of their creation, irrespective 1.4 Are there any works which are excluded from of their mode or form of expression, as well as of their content, copyright protection? quality and purpose. Accordingly, registration is not a mandatory requirement for the protection of a copyrighted work. However, The IP Code provides that no protection shall extend to: any registration establishes a public record of the copyright claim. idea, procedure, system method or operation, concept, principle, discovery or mere data as such, even if they are expressed, 1.6 What is the duration of copyright protection? Does explained, illustrated or embodied in a work; daily news and this vary depending on the type of work? other miscellaneous facts having the character of mere items of press information; or any official text of a legislative, adminis- Copyright in literary, artistic and derivative works under Sections trative or legal nature, as well as any official translation thereof. 172 and 173 of the IP Code shall be protected during the life of In addition, no copyright shall subsist in any work of the the author and for fifty (50) years after his death. This rule also Government of the Philippines. However, prior approval of applies to posthumous works. the Government agency or office wherein the work is created In the case of works of joint authorship, the economic rights shall be necessary for exploitation of such work for profit. Such shall be protected during the life of the last surviving author and agency or office may, among other things, impose as a condi- for fifty (50) years after his death. tion the payment of royalties. No prior approval or conditions In the case of anonymous or pseudonymous works, the shall be required for the use for any purpose of statutes, rules copyright shall be protected for fifty (50) years from the date

on which the work was first lawfully published, provided that In the case of works of joint authorship, the co-authors shall where, before the expiration of the said period, the author’s be the original owners of the copyright, and in the absence of identity is revealed or is no longer in doubt, the provisions of an agreement, their rights shall be governed by the rules on Subsections 213.1 and 213.2 of the IP Code shall apply, as the co-ownership. If, however, a work of joint authorship consists case may be, provided, further, that such works, if not published of parts that can be used separately and the author of each part before, shall be protected for fifty (50) years counted from the can be identified, the author of each part shall be the original making of the work. owner of the copyright in the part that he has created. In the case of works of applied art, the protection shall be for In the case of work created by an author during and in the a period of twenty-five (25) years from the date of making. course of his employment, the copyright shall belong to: In the case of photographic works, the protection shall be for (a) The employee, if the creation of the object of copyright is fifty (50) years from publication of the work and, if unpublished, not a part of his regular duties even if the employee uses fifty (50) years from the making. the time, facilities and materials of the employer. In the case of audio-visual works, including those produced by a (b) The employer, if the work is the result of the performance process analogous to photography or any process for making audio- of his regularly assigned duties, unless there is an agree- visual recordings, the term shall be fifty (50) years from the date of ment, express or implied, to the contrary. publication and, if unpublished, from the date of its creation. In the case of a work commissioned and paid for by a person The term of protection subsequent to the death of the author other than an employer and where such work is made in pursu- provided in the preceding section shall run from the date of his ance of the commission, the person who so commissioned death or of publication, but such terms shall always be deemed the work shall have ownership of the work, but the copyright to begin on the first day of January of the year following the thereto shall remain with the creator, unless there is a written event which gave rise to them. stipulation to the contrary. The rights granted to performers and producers of sound In the case of audio-visual work, the copyright shall belong recordings under the IP Code shall expire: to the producer, the author of the scenario, the composer of the (a) for performances not incorporated in recordings, fifty (50) music, the film director, and the author of the work so adapted. years from the end of the year in which the performance However, subject to contrary or other stipulations among the took place; and creators, the producers shall exercise the copyright to an extent (b) for sound or image and sound recordings and for perfor- required for the exhibition of the work in any manner, except mances incorporated therein, fifty (50) years from the end for the right to collect performing licence fees for the perfor- of the year in which the recording took place. mance of musical compositions, with or without words, which In the case of broadcasts, the term shall be twenty (20) years are incorporated into the work. from the date the broadcast took place. The extended term shall In respect of letters, the copyright shall belong to the writer, be applied only to old works with subsisting protection under subject to the provisions of Article 723 of the Civil Code of the the prior law. Philippines. The publishers shall be deemed to represent the authors of articles and other writings published without the names of the 1.7 Is there any overlap between copyright and other intellectual property rights such as design rights and authors or under pseudonyms, unless the contrary appears, database rights? or the pseudonym or adopted name leaves no doubt as to the author’s identity, or if the author of the anonymous works discloses his identity. Yes. The same industrial product can be protected by both a design right and a copyright. Under Section 172.1 (h) of the IP Code, original ornamental designs or models for articles of manufacture, 2.2 Where a work is commissioned, how is ownership whether or not registrable as an industrial design, and other works of the copyright determined between the author and the of applied art, are enumerated specifically as works protected by commissioner? copyright. On the other hand, for an industrial product to be protected by a design right, it must be a new and original creation, Please see the answer to question 2.1. pursuant to Rule 1502 and Rule 1505 of the Revised Implementing Rules for Patents, Utility Models and Industrial Designs ( ). RIRR 2.3 Where a work is created by an employee, how is ownership of the copyright determined between the 1.8 Are there any restrictions on the protection for employee and the employer? copyright works which are made by an industrial process? Please see the answer to question 2.1. The IP Code does not squarely address or define copyright works which are made by an industrial process. Therefore, this 2.4 Is there a concept of joint ownership and, if so, is not applicable. what rules apply to dealings with a jointly owned work?

22 Ownership Please see the answer to question 2.1.

2.1 Who is the first owner of copyright in each of the works 32 Exploitation protected (other than where questions 2.2 or 2.3 apply)?

3.1 Are there any formalities which apply to the Copyright ownership shall be governed by the following rules: transfer/assignment of ownership? Subject to the relevant provisions of the IP Code, in the case of original literary and artistic works, copyright shall belong to Under the relevant provisions of the Civil Code of the the author of the work.

Philippines, an assignment of a right or action shall produce is composed of the following member guilds and organisations: no effect as against a third person, unless it appears in a public (i) OPM − Organisasyon ng Pilipinong Mangaawit (Organisation instrument. of Filipino Singers); (ii) KAPPT − Katipunan ng mga Artista sa A copyright is not deemed assigned inter vivos in whole or in Pelikulang Pilipino at Telebisyon (Film and Television Actors’ Guild); part unless there is a written indication of such intention. (iii) AMP − Asosasyon ng Musikong Pilipino (Filipino Musicians’ Association); (iv) PHILSTAGE − Philippine Legitimate Stage Artists Group, Inc. (Theatre, Dance and Music Companies/ 3.2 Are there any formalities required for a copyright Organisations); and (v) – Film Academy of the Philippines. licence? FAP

In the Philippines, licensing of all forms of intellectual property 3.5 Where there are collective licensing bodies, how are they regulated? rights falls under the rubric of a “technology transfer arrangement” (TTA). Section 4.2 of the IP Code covers contracts involving the transfer of systematic knowledge for the manufac- For the societies/licensing bodies to enforce the rights of ture of a product, the application of a process, or the rendering their members, they shall first secure the necessary accredita- of a service, including management contracts, and the transfer, tion from the IPO. The IPO has recently issued Memorandum assignment or licensing of all forms of intellectual prop- Circular No. 2020-026, which provides for the Revised Rules erty rights, including licensing of computer software, except and Regulations on Accreditation of Collective Management computer software developed for the mass market. Organizations and Similar Entities. These Revised Rules take A TTA must meet the requirements under Chapter IX of effect beginning September 5, 2020. the IP Code on Voluntary Licensing, particularly Sections 87 and 88 on prohibited clauses and mandatory provisions. As a 3.6 On what grounds can licence terms offered by a general rule, the recordation of a TTA is not mandatory under collective licensing body be challenged? the IP Code. The non-recordation of a TTA does not affect the enforceability or validity of the agreement. However, parties The IP Code is silent on this matter. However, Article 1306 of to a TTA must ensure that their contract complies with the the Civil Code of the Philippines states that clauses, conditions, mandatory and prohibited clauses of the IP Code, otherwise the procedures, or formalities of contracts may not be “contrary contract will be deemed automatically unenforceable. to law, morals, good customs, public order, or public policy”. Likewise, Article 1159 of the Civil Code of the Philippines 3.3 Are there any laws which limit the licence terms imposes a duty of good faith between parties to a contract. parties may agree to (other than as addressed in Articles 19 to 21 of the Civil Code of the Philippines contain questions 3.4 to 3.6)? general good faith and abuse of right provisions that could potentially be invoked by an aggrieved party. Please see the answer to question 3.2. 42 Owners’ Rights

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

The Filipinas Copyright Licensing Society, Inc. (FILCOLS) Subject to the relevant provisions of Chapter VIII of the IP Code is the collective management organisation (CMO) officially (Limitations on Copyright), copyright or economic rights shall accredited by the Government through the IPO to collec- consist of the exclusive right to carry out, authorise or prevent the tively administer, license, and enforce the right of reproduc- following acts: tion of authors, publishers and other right-holders in the text (a) reproduction of the work or substantial portion of the work; and image sector. FILCOLS is a member of the Brussels-based (b) dramatisation, translation, adaptation, abridgment, arrange- International Federation of Reproduction Rights Organizations. ment or other transformation of the work; The Filipino Society of Composers, Authors and Publishers, (c) the first public distribution of the original and each copy Inc. (FILSCAP) undertakes collective rights management for of the work by sale or other forms of transfer of ownership; public performances and the use of songs in television and radio (d) rental of the original or a copy of an audio-visual or cine- broadcasts and movies. FILSCAP’s responsibility of royalty matographic work, a work embodied in a sound recording, collecting extends to members of foreign affiliates such as a computer program, a compilation of data and other the American Society of Composers, Authors, and Publishers materials or a musical work in graphic form, irrespective (ASCAP), Broadcast Music Inc. (BMI), Composers and Authors of the ownership of the original or the copy which is the Society of Hong Kong (CASH), and more than 50 other organ- subject of the rental; isations. FILSCAP is the holder of deeds of assignment to (e) public display of the original or a copy of the work; collect royalties from artists in the Philippines and abroad. (f) public performance of the work; and The Filipino Visual Arts and Design Rights Organization (g) other communication to the public of the work. (FILVADRO) is recognised as the CMO for Philippine visual Subject to the provisions of Section 212 of the IP Code, arts and design by the World Intellectual Property Organization performers shall enjoy the following exclusive rights: (WIPO), Intellectual Property Philippines (IPP), the National (a) As regards their performances, the right of authorising: Commission for Culture and the Arts (NCCA) and the Cultural (i) the broadcasting and other communication to the public Center of the Philippines (CCP). of their performance; and The Performing Rights Society of the Philippines (PRSP) (ii) the fixation of their unfixed performance. acts as the collecting society of performers (actors, musicians, (b) The right of authorising the direct or indirect reproduction dancers, etc.) whose works are used for commercial broadcast of their performances fixed in sound recordings or audio- and other ways of communication to the public to gain profit. It visual works or fixations in any manner or form.

(c) Subject to the provisions of Section 206 of the IP Code, the An author may waive his moral rights by a written instru- right of authorising the first public distribution of the orig- ment, but no such waiver shall be valid where its effect is to permit inal and copies of their performance fixed in sound record- another: ings or audio-visual works or fixations through sale or rental (a) to use the name of the author, or the title of his work, or or other forms of transfer of ownership. otherwise to make use of his reputation with respect to any (d) The right of authorising the commercial rental to the public version or adaptation of his work which, because of altera- of the original and copies of their performances fixed in tions therein, would substantially tend to injure the literary sound recordings or audio-visual works or fixations, even or artistic reputation of another author; or after distribution of them by, or pursuant to the authorisa- (b) to use the name of the author with respect to a work he did tion by, the performer. not create. (e) The right of authorising the making available to the public of When an author contributes to a collective work, his right to their performances fixed in sound recordings or audio-visual have his contribution attributed to him is deemed waived unless works or fixations, by wire or wireless means, in such a way he expressly reserves it. that members of the public may access them from a place and Independently of a performer’s economic rights, the performer time individually chosen by them. shall, as regards his live aural performances or performances Subject to the provisions of Section 212 of the IP Code, fixed in sound recordings or in audio-visual works or fixa- producers of sound recordings shall enjoy the following exclusive tions, have the right to claim to be identified as the performer rights: of his performances, except where the omission is dictated by (a) The right to authorise the direct or indirect reproduction of the manner of the use of the performance, and to object to any their sound recordings, in any manner or form; the placing distortion, mutilation or other modification of his performances of these reproductions in the market; and the right of rental that would be prejudicial to his reputation. or lending. (b) The right to authorise the first public distribution of the 4.3 Are there circumstances in which a copyright original and copies of their sound recordings through sale or owner is unable to restrain subsequent dealings in works rental or other forms of transferring ownership. which have been put on the market with his consent? (c) The right to authorise the commercial rental to the public of the original and copies of their sound recordings, even Section 177.3 of the IP Code gives a copyright owner the exclu- after distribution by them or pursuant to authorisation by the sive right to control the first public distribution of the original producer. and each copy of the work by sale or other forms of transfer (d) The right to authorise the making of their sound recordings of ownership. Accordingly, the copyright owner loses rights to available to the public in such a way that members of the his work, and cannot control disposition of such work, after the public may access the sound recording from a place and at a first authorised sale or transfer (e.g., the purchaser may resell, time individually chosen or selected by them, as well as other donate or give away the copyrighted work) akin to the first-sale transmissions of a sound recording with a similar effect. or exhaustion doctrine. It must be noted, however, that the Subject to the provisions of Section 212 of the IP Code, broad- first-sale or exhaustion doctrine pertains only to the right of a casting organisations shall enjoy the exclusive right to carry out, purchaser to transfer, and thus exhausts only the distribution authorise or prevent any of the following acts: right. The said doctrine does not affect or limit the moral rights (a) the rebroadcasting of their broadcasts; of the copyright owner, and applies only when the purchaser has (b) the recording in any manner, including the making of films lawfully acquired the copyrighted work. or the use of video tape, of their broadcasts for the purpose of communication to the public of television broadcasts of the same; and 52 Copyright Enforcement (c) the use of such recordings for fresh transmissions or for fresh recordings. 5.1 Are there any statutory enforcement agencies and, if so, are they used by rights holders as an alternative to civil actions? 4.2 Are there any ancillary rights related to copyright, such as moral rights, and, if so, what do they protect, and can they be waived or assigned? Yes. The IP Code grants visitorial powers to the IPO and allows it to undertake enforcement functions with the support of concerned agencies such as the Philippine National Police, National Bureau The author of a work shall, independently of the economic rights of Investigation, Bureau of Customs, Optical Media Board and in Section 177 of the IP Code or the grant of an assignment or Local Government Units. However, as IP rights remain private licence with respect to such right, have the right to: rights, there must be a complaint from the IP right owner. (a) require that the authorship of the works be attributed to him, in particular, the right that his name, as far as practi- cable, be indicated in a prominent way on the copies, and 5.2 Other than the copyright owner, can anyone else in connection with the public use of his work; bring a claim for infringement of the copyright in a work? (b) make any alterations to his work prior to publication, or to withhold it from publication; In general, only intellectual property rights owners have the (c) object to any distortion, mutilation or other modification right to bring actions for infringement. For copyright, the right of, or other derogatory action in relation to, his work which to bring an action for infringement belongs to the copyright would be prejudicial to his honour or reputation; and owner. However, since intellectual property rights are assign- (d) restrain the use of his name with respect to any work not able, it is possible that the right to bring an action for infringe- of his own creation or in a distorted version of his work. ment may likewise be assigned. The assignment of such right, however, must be expressly provided.

5.3 Can an action be brought against ‘secondary’ (g) The making of ephemeral recordings by a broad- infringers as well as primary infringers and, if so, casting organisation by means of its own facilities and on what basis can someone be liable for secondary for use in its own broadcasts. infringement? (h) The use made of a work by, or under the direction or control of the Government, by the National Library or Under the IP Code, an action for infringement may be brought by educational, scientific or professional institutions against a person who: where such use is in the public interest and is compat- (a) directly commits an infringement; ible with fair use. (b) benefits from the infringing activity of another person (i) The public performance or communication to the who commits an infringement if the person benefiting public of a work, in a place where no admission fee has been given notice of the infringing activity and has is charged in respect of such public performance or the right and ability to control the activities of the other communication, by a club or institution for charitable person; or or educational purposes only and whose aim is not (c) with knowledge of the infringing activity, induces, causes or profit making, subject to such other limitations as may materially contributes to the infringing conduct of another. be provided in the regulations. (j) Public display of the original or a copy of the work not made by means of a film, slide, television image 5.4 Are there any general or specific exceptions or otherwise on screen or by means of any other which can be relied upon as a defence to a claim of device or process, provided that either the work has infringement? been published or the original or the copy displayed has been sold, given away or otherwise transferred to The following may be raised as a defence to a claim of another person by the author or his successor in title. infringement: (k) Any use made of a work for the purpose of any judicial 1. The copyright owner cannot recover damages for acts of proceedings, or for the giving of professional advice infringement committed more than four years before the by a legal practitioner. institution of the action for infringement. (l) The reproduction or distribution of published articles 2. Non-liability under Section 184 of the IP Code, which or materials in a specialised format exclusively for the provides that the following acts shall not constitute copy- use of a blind, visually- or reading-impaired person, right infringement: provided that such copies and distribution shall be (a) The recitation or performance of a work, once it has made on a non-profit basis and shall indicate the copy- been lawfully made accessible to the public, if done right owner and the date of the original publication. privately and free of charge or if made strictly for a 3. The acts alleged to be copyright infringement consti- charitable or religious institution or society. tute fair use under Section 185 of the IP Code, which (b) The making of quotations from a published work if provides that the fair use of a copyrighted work for crit- they are compatible with fair use and only to the extent icism, comment, news reporting, teaching (including a justified for the purpose, including quotations from limited number of copies for classroom use), scholarship, newspaper articles and periodicals in the form of press research, and similar purposes is not an infringement of summaries: provided that the source and the name of copyright. Decompilation, which is understood to be the the author, if appearing on the work, are mentioned. reproduction of the code and translation of the forms of (c) The reproduction or communication to the public the computer program to achieve the inter-operability of by mass media of articles on current political, social, an independently created computer program with other economic, scientific or religious topics; lectures, programs, may also constitute fair use to the extent that addresses and other works of the same nature, which such decompilation is done for the purpose of obtaining are delivered in public, if such use is for informa- the information necessary to achieve such interoperability. tion purposes and has not been expressly reserved, 4. The acts alleged to constitute copyright infringement provided that the source is clearly indicated. constitute permissible copying or reprographic reproduc- (d) The reproduction and communication to the public of tion by exempt institutions under Section 184 and Section literary, scientific or artistic works as part of reports of 188 of the IP Code, which provide that any library or current events by means of photography, cinematog- archive whose activities are not for profit may, without raphy or broadcasting to the extent necessary for the the authorisation of the author or copyright owner, make purpose. a limited number of copies of the work, as may be neces- (e) The inclusion of a work in a publication, broadcast, or sary for such institutions to fulfil their mandate, by repro- other communication to the public; sound recording graphic reproduction in the following cases: or film, if such inclusion is made by way of illustration (a) Where the work by reason of its fragile character or for teaching purposes and is compatible with fair use, rarity cannot be lent to users in its original form. provided that the source and the name of the author, if (b) Where the works are isolated articles contained in appearing in the work, are mentioned. composite works or brief portions of other published (f) The recording made in schools, universities, or educa- works and the reproduction is necessary to supply them, tional institutions of a work included in a broadcast when this is considered expedient, to persons requesting for the use of such schools, universities or educational their loan for purposes of research or study instead of institutions, provided that such recording be deleted lending the volumes or booklets which contain them. within a reasonable period after it was first broadcast (c) Where the making of such limited copies is in order and, further, provided that such recording may not be to preserve and, if necessary, in the event that it is made from audio-visual works which are part of the lost, destroyed or rendered unusable, replace a copy, general cinema repertoire of feature films except for or to replace, in the permanent collection of another brief excerpts of the work.

similar library or archive, a copy which has been lost, stated in the BLA Order. The execution pending appeal destroyed or rendered unusable and copies are not may be stayed by the filing of an approved counterbond in available with the publisher. an amount to be fixed by the BLA Director. 5. In the case of computer programs, the reproduction is permissible under Section 189 of the IP Code, which 5.6 On what basis are damages or an account of profits provides that reproduction in one (1) back-up copy or calculated? adaptation of a computer program shall be permitted, without the authorisation of the author of, or other owner of copyright in, a computer program, by the lawful owner The liability of the defendant in a copyright infringement action of that computer program, provided that the copy or adap- for actual damages includes legal costs and other expenses of tation is necessary for: the plaintiff which he may have incurred due to the infringe- (a) the use of the computer program in conjunction with a ment, as well as the profits the defendant may have made due computer for the purpose and to the extent for which to such infringement. In proving profits, the plaintiff shall be the computer program has been obtained; and required to prove sales only and the defendant shall be required (b) archival purposes, and for the replacement of the to prove every element of cost which he claims or, in lieu of lawfully owned copy of the computer program in the actual damages and profits, such damages which to the court event that the lawfully obtained copy of the computer shall appear to be just and shall not be regarded as a penalty, program is lost, destroyed or rendered unusable. provided that the amount of damages to be awarded shall be doubled against any person who: (a) circumvents effective technological measures; or 5.5 Are interim or permanent injunctions available? (b) having reasonable grounds to know that it will induce, enable, facilitate or conceal the infringement, remove or Yes, an aggrieved IP owner may request for the issuance of alter any electronic rights management information from interim and permanent injunctions. a copy of a work, sound recording, or fixation of a perfor- (i) A preliminary injunction may be granted by the Trial mance, or distribute, import for distribution, broadcast, Court at any time after the commencement of the action or communicate to the public works or copies of works and before judgment, when it is established that: (a) the without authority, knowing that electronic rights manage- plaintiff is entitled to the relief demanded, and the whole ment information has been removed or altered without or part of such relief consists in restraining the commis- authority. sion or continuance of the acts complained of, or in the The copyright owner may elect, at any time before final judg- performance of an act or acts, either for a limited period ment is rendered, to recover instead of actual damages and or perpetually; (b) the commission or continuance of some profits, an award of statutory damages for all infringements act complained of during the litigation or the non-perfor- involved in an action, in a sum equivalent to the filing fee of mance thereof would probably work injustice to the plain- the infringement action but not less than 50,000 pesos (approx- tiff; or (c) the defendant is doing, threatens, or is about imately US$1,200). In awarding statutory damages, the court to do, or is procuring or suffering to be done, some act may consider the following factors: probably in violation of the plaintiff’s rights respecting the (a) the nature and purpose of the infringing act; subject of the action, and tending to render the judgment (b) the flagrancy of the infringement; ineffectual, and only when: (x) the complaint in the action (c) whether the defendant acted in bad faith; is verified, and shows facts entitling the plaintiff to the (d) the need for deterrence; relief demanded; and (y) the plaintiff files with the clerk or (e) any loss that the plaintiff has suffered or is likely to suffer judge of the court in which the action is pending a bond by reason of the infringement; and executed to the party enjoined, in an amount to be fixed (f) any benefit shown to have accrued to the defendant by by the court, to the effect that the plaintiff will pay to such reason of the infringement. party all damages which he may sustain by reason of the In the case that the infringer was not aware and had no reason injunction if the court should finally decide that the plain- to believe that his acts constitute an infringement of copyright, tiff was not entitled thereto. A preliminary injunction may the court at its discretion may reduce the award of statutory also be obtained from the Bureau of Legal Affairs (BLA) damages to a sum of no more than 10,000 pesos (approximately of the IPO based on substantially the same grounds and US$235), provided that the amount of damages to be awarded requirements as mentioned above. shall be doubled against any person who: (ii) A permanent (final) injunction would be granted if the (a) circumvents effective technological measures; or plaintiff prevails in the action before the Trial Court or the (b) having reasonable grounds to know that it will induce, BLA. Judgments by the Trial Court granting an injunction enable, facilitate or conceal the infringement, remove or are enforceable after their rendition and are not stayed by alter any electronic rights management information from an appeal unless otherwise ordered by the Trial Court. On a copy of a work, sound recording or fixation of a perfor- appeal from the judgment of the Trial Court, the appellate mance, or distribute, import for distribution, broadcast, or court at its discretion may order the suspension, modifica- communicate to the public works or copies of works without tion or restoration of the injunction. The stay of execution authority, knowing that electronic rights management infor- shall be upon such terms as to bond or otherwise as may mation has been removed or altered without authority. be considered proper for the security or protection of the rights of the adverse party. On the other hand, judgments 5.7 What are the typical costs of infringement by the BLA (including those granting a permanent injunc- proceedings and how long do they take? tion) may, upon motion of the prevailing party with notice to the adverse party or motu proprio, and upon filing of an Depending on varied factors, the costs of filing and prose- approved bond, be executed even before the expiration of cuting an infringement action before the Trial Court range the time to appeal has lapsed, upon good reasons to be

from US$100,000 to US$300,000, while it would cost anywhere (a) the circumvention of effective technological measures; between US$80,000 and US$100,000 if filed before the BLA. (b) the removal or alteration of any electronic rights manage- The length of the proceedings depends on a variety of ment information from a copy of a work, sound recording, factors, including the complexity of the legal and technical or fixation of a performance, by a person, knowingly and issues involved, the number of witnesses to be presented, the without authority; or number of postponements of trial sought by the parties, as well (c) the distribution, importation for distribution, broadcast, as the caseload of the Trial Court and/or BLA Adjudication or communication to the public of works or copies of Officer handling the case. It may take as long as three (3) to works, by a person without authority, knowing that elec- five (5) years (from the filing of the complaint) before a deci- tronic rights management information has been removed sion is issued by the Trial Court. Administrative proceedings in or altered without authority. the BLA usually take around one (1) to three (3) years from the Any person who at the time when copyright subsists in a work filing of the complaint for a case to be resolved on the merits. has in his possession an article which he knows, or ought to know, to be an infringing copy of the work for the purpose of: (a) selling, letting for hire, or by way of trade offering or 5.8 Is there a right of appeal from a first instance judgment and, if so, what are the grounds on which an exposing for sale or hire, the article; appeal may be brought? (b) distributing the article for the purpose of trade, or for any other purpose to an extent that will prejudice the rights of the copyright owner in the work; or The decision of the Trial Court may be appealed to the Court of (c) trade exhibit of the article in public, Appeals on questions of facts and law. shall be guilty of an offence and shall be liable on conviction to Final orders or decisions of the BLA Director may be appealed imprisonment and a fine, as mentioned above. to the Director General of the IPO within thirty (30) days after In an infringement action, the court shall also have the power the receipt of a copy thereof by the party affected. The decision to order the seizure and impounding of any article which may or order of the Director General of the IPO may be appealed to serve as evidence in the court proceedings, in accordance with the Court of Appeals. the rules on search and seizure involving violations of intellectual property rights issued by the Supreme Court. 5.9 What is the period in which an action must be commenced? 72 Current Developments

The copyright owner cannot recover damages for acts of 7.1 Have there been, or are there anticipated, infringement committed more than four (4) years before the any significant legislative changes or case law institution of the action for infringement. developments?

62 Criminal Offences The IPO has issued Memorandum Circulars to establish the rules for, or provide amendments and updates to, the following: 6.1 Are there any criminal offences relating to (a) Resolution of Public Performance Disputes; (b) Resale copyright infringement? Rights; (c) Copyright Rules for the Government; (d) Copyright Registration; and (e) Accreditation of Collective Management Yes, there are some criminal offences that relate to copyright Organizations. These take effect beginning September 5, 2020. infringement. These recent issuances do not affect the IP Code provisions concerning copyrights as discussed above.

6.2 What is the threshold for criminal liability and what are the potential sanctions? 7.2 Are there any particularly noteworthy issues around the application and enforcement of copyright in relation to digital content (for example, when a work is deemed to Any person infringing any of the relevant provisions of the IP be made available to the public online, hyperlinking, etc.)? Code on Copyright or aiding or abetting such infringement shall be guilty of a crime punishable by imprisonment plus a fine. In Currently, there are no significant developments concerning all cases, subsidiary imprisonment may be imposed in cases of these issues. insolvency. In determining the number of years of imprisonment and the amount of the fine imposable on the defendant, the court 7.3 Have there been any decisions or changes of law shall consider the value of the infringing materials that the regarding the role of copyright in relation to artificial defendant has produced or manufactured, and the damage that intelligence systems, including the use of copyright in those systems and/or any work generated by those systems? the copyright owner has suffered by reason of the infringement. The respective maximum penalty shall be imposed when the infringement is committed by: Currently, there are no significant developments concerning these issues.

Vida M. Panganiban-Alindogan is the head of the firm’s Intellectual Property Department. Her practice area includes, among others, the management, prosecution and enforcement of intellectual property rights. She has successfully represented intellectual property owners and stakeholders in various negotiations and proceedings, counsels clients regarding domain name issues, as well as copyright and trademark issues in social media, and heads enforcement campaigns for a diverse range of international clientele. She also provides regulatory advice on food, beverage and pharmaceutical products. She has been cited by Chambers Asia Pacific and recognised by the The Legal 500 Asia Pacific as a highly recommended and leading lawyer in intellectual property. She is a member of the Intellectual Property Association of the Philippines, Licensing Executives Society of the Philippines, the Asian Patent Attorneys Association, the Integrated Bar of the Philippines and the International Trademark Association.

SyCip Salazar Hernandez & Gatmaitan Tel: +63 2 982 3500 SyCipLaw Center Email: [email protected] 105 Paseo de Roxas URL: www.syciplaw.com Legaspi Village Makati City 1226 Philippines

Anna Loraine M. Mendoza is a senior associate and a member of the firm’s Intellectual Property Department. Her practice area includes, among others, counselling international clientele in diverse fields of business (e.g. luxury fashion and apparel brands, international restaurant chains, pharmaceutical companies, and established food and beverage companies) regarding intellectual property rights registration and enforcement, particularly as regards trademark issues. She has also successfully represented intellectual property owners and stakeholders in various enforcement campaigns, as well as in first-level and appellate litigation and settlement proceedings.

SyCip Salazar Hernandez & Gatmaitan Tel: +63 2 982 3500 SyCipLaw Center Email: [email protected] 105 Paseo de Roxas URL: www.syciplaw.com Legaspi Village Makati City 1226 Philippines

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

Roman Lukyanov

Ksenia Sysoeva

Semenov&Pevzner Irina Ostapchuk

12 Copyright Subsistence ■ computer programs (which are protected as works of literature); and ■ other works. 1.1 What are the requirements for copyright to subsist Copyright also subsists in derivative works (re-works of other in a work? works) and compilated works (the result of creative labour in respect of the selection and layout of materials). Copyright subsists in works of science, literature and art expressed in any objective form (including: written/oral form; 1.4 Are there any works which are excluded from image, sound or video recording; and three-dimensional form), copyright protection? irrespective of the works’ merits, purpose and mode of expression, and whether the works were released or not released to the public. Works must be created by (be the result of) the author’s Copyrights are not applied to ideas, concepts, principles, methods, creative labour. Copyright also subsists in a part of a work, its processes, systems, means, solutions of technical/organisational title and character, if they are independent results of the author’s or other problems, discoveries, facts, programming languages or creative labour and are expressed in any objective form. geological information about subsoils. The following are not objects of copyright: ■ official documents of state and local authorities, including 1.2 Does your jurisdiction operate an open or closed laws and other normative regulations, court decisions, list of works that can qualify for copyright protection? other materials of legislative, administrative and court nature, official documents of international organisations The Russian Civil Code operates an open list of works that can and their official translations; qualify for copyright protection. ■ national symbols and signs (flags, emblems, medals, currency in form of banknotes/coins and similar) and 1.3 In what works can copyright subsist? symbols and signs of municipal districts; ■ works of folk art (folklore), which do not have particular authors; and According to article 1259 of the Russian Civil Code, copyright ■ reports about events and facts of only an informative can subsist in works of science, literature and art such as: nature (news of the day, transport schedules or schedules ■ dramatical works and scenarios; of TV shows and similar). ■ choreographic works and pantomimes; ■ musical works (with or without text); ■ audiovisual works (hereinafter – “AVW”); 1.5 Is there a system for registration of copyright and, ■ paintings, sculptures, graphics, designs, graphic novels, if so, what is the effect of registration? comics and other works of fine arts; ■ works of decorative arts and works of applied arts and No registration or other formalities are necessary for copyright scenography; in a work to appear, to be exercised or to be protected. However, ■ works of architecture, urban development and gardens/ the author may deposit a work at his own discretion in non-com- parks design (including in the form of projects, drawings, mercial and commercial organisations which render depositing images and layouts); services (but depositing gives no essential benefits to the author). ■ photographs and works made by means similar to Computer programs and databases can be registered (not oblig- photography; atory) at the right holder’s sole discretion at the Federal Service ■ geographical and other maps, plans, sketches and works of of Intellectual Property (Rospatent). The state duty for registra- plastic arts relating to geography and other sciences; tion is 4,500 RUB for organisations and 3,000 RUB for physical

persons. The process of registration takes 62 business days. With regards to AVW (films and other such works), the After registration, Rospatent: adds the computer program/data- authors are the director, scriptwriter and composer of musical base into its Register of computer programs/Register of data- work created especially for the AVW. The exclusive right to bases; gives a certificate of registration to the right holder; and AVW as a whole belongs to its producer (a person who organ- publishes information about the computer program/database in ised the creation of the AVW), if not agreed otherwise in agree- its official bulletin. After that, the transfer/assignment of rights ments between the producer and authors. to a registered computer program/database (under agreement or The copyright to AVW created in Soviet times under former without agreement) must also be registered with Rospatent and, legislation belongs to the legal entities – the studios – which when applicable, information about the right holder is amended created (filmed) such AVW. in its Registers.

2.2 Where a work is commissioned, how is ownership 1.6 What is the duration of copyright protection? Does of the copyright determined between the author and the this vary depending on the type of work? commissioner?

Copyright of works (intellectual rights) includes an exclusive right The work may be commissioned from (i) an author (a phys- (which is a property right) and personal non-property rights. ical person) (under an agreement with the author), or (ii) from The exclusive right to a work is effective during the author’s a contractor, who may not be directly the author (for example, life plus 70 years counting from January 1 of the year following if you order an IT company to create a computer program). In the year of the author’s death. Dates for counting 70 years differ the first case (article 1288 of the Russian Civil Code), the author for: works created by co-authors; works published anonymously owns the copyright, and the agreement between the author and or under a pseudonym; works published after the author’s customer stipulates whether the exclusive right to a work is death; and authors rehabilitated after their death after having alienated or licensed to the customer (it is up to the parties to been under political repression (article 1281 of the Russian Civil choose). In the second case (article 1296 of the Russian Civil Code). The term is prolonged for four years for authors who Code), the customer owns the exclusive right to the commis- worked during the Great Patriotic War or took part in it. sioned work, unless stipulated otherwise in the agreement with Personal rights of the author such as the right of authorship, the contractor. the author’s name and the integrity of the work are protected perpetually. If the author creates a manuscript/painting/sculpture, etc. and alienates the original copy of a work to the customer, the exclusive right to the work remains with the author if not stip- 1.7 Is there any overlap between copyright and other ulated otherwise in the agreement between the parties. The intellectual property rights such as design rights and author also has the right to have access to such work and droit database rights? de suite.

Inventions, utility models and industrial designs are objects of 2.3 Where a work is created by an employee, how is patent rights, provided they comply with the requirements set ownership of the copyright determined between the in the Russian Civil Code for such objects and are registered employee and the employer? in Rospatent. Authors of industrial designs have the right of authorship. If the design does not comply with the requirements to be patented as “industrial design” (novelty and originality), If a work was created by an employee in the scope of his labour it can be protected as a copyrighted object (for example, as a duties, the employee owns the copyright to it. The employer three-dimensional image). owns the exclusive (property) right to such work, unless stipu- An author who compiles a database as a compilated work lated otherwise in its contract with the employee. If three years owns the copyright to his selection and layout of materials in the after the creation of the work the employer does not: (i) start database. At the same time, the producer (manufacturer) of the using the work; (ii) grant the exclusive right to it to a third party; database owns the neighbouring rights to the database. or (iii) inform the author that the employer has decided to keep The works of literature, science and art made public after the work in secret, then the exclusive right to such work returns they have fallen into the public domain are objects of the neigh- to the author. bouring rights of their publisher. 2.4 Is there a concept of joint ownership and, if so, 1.8 Are there any restrictions on the protection for what rules apply to dealings with a jointly owned work? copyright works which are made by an industrial process? If a work was created by the cooperative creative labour of two There are no such restrictions, however, according to the or more persons (co-authorship), they own the copyright jointly. Russian Civil Code, works must be created by (be the result of) If persons made no personal creative contribution in the crea- the author’s (human’s) creative labour. tion of a work (for example, if they provided the author with only consulting, technical, organisational or material assistance 22 Ownership or help or controlled fulfilment of works), they are not deemed to be authors. 2.1 Who is the first owner of copyright in each of the Сo-authors use a work jointly, unless stipulated otherwise in works protected (other than where questions 2.2 or 2.3 an agreement between them. If a work is inseparable, none of apply)? the co-authors may prohibit the use of such work without sufficient reasons. If a part of a work may be used independently from the other parts, it may be used by its author at his own The author of a work owns the copyright. The author is a phys- discretion, unless stipulated otherwise in an agreement between ical person who created the work with his own creative labour. the co-authors.

Income is divided equally, unless stipulated otherwise in an usage (according to the Russian Civil Code, these ways of usage agreement between the co-authors. are permitted for users without receiving the author’s/right Each co-author may, on their own, take measures to protect holder’s consent, but with payment of remuneration to them – their rights. so accredited collective societies collect such remuneration from Currently, legislation does not formally stipulate the option users for): to have shares in an exclusive right to a work. The Plenum of Supreme Court in Resolution No. 10 expressed the position that The Russian Union of Rights Free reproduction for private although copyright may belong to several persons jointly, this does Holders (“RSP”) purposes. Remuneration is not mean that these persons have the right to divide their exclu- due to authors of works fixed sive rights and to separate shares from it. However, it is common in phonograms and to au- practice in the music industry for co-authors to often agree that thors, producers and perform- each co-author owns a particular share (%) of an exclusive right ers of AVW). to a musical work/song and disposes of his share. In 2019 the The Russian Authors’ Society Public performance, broad- Ministry of Education proposed a draft of the law which recog- (“RAO”) casting and making public nises shares of an exclusive right to a work, but it is still pending. by cable of works (primarily, 32 Exploitation musical works with or without lyrics). Remuneration is due to authors of works. 3.1 Are there any formalities which apply to the transfer/assignment of ownership? Association of Right Holders Works of visual art (photos, for Protection of and Man- paintings and sculptures) and agement of Copyrights in the manuscripts. Remuneration is An assignment (alienation) agreement must be concluded in Field of Art (“Upravis”) due to authors for resale of written form, otherwise it is deemed to be void. If such agree- original of a work (droit de suite). ment is non-gratuitous, it must contain provisions about the amount of remuneration, otherwise it is deemed not to be The status of “state accreditation” means that the accredited concluded. Gratuitous assignment is not permitted between collective societies listed above may collect remuneration for the two commercial organisations. ways of usage described above from users without previously concluding agreements with authors/right holders (on a mandatory basis and as stipulated in the Russian Civil Code). 3.2 Are there any formalities required for a copyright In order to receive payments of collected remuneration from licence? accredited collective societies, authors/producers (or right holders/representatives duly authorised by authors/producers) A licence agreement must be concluded in written form, other- need to sign agreements with the accredited collective societies. wise it is deemed void. The agreement must contain the type, The procedure of concluding agreements is described on the territory and term of the licence, otherwise the territory is deemed official websites of the accredited collective societies. Russia, the type is deemed non-exclusive and the term is deemed There are also collective societies without state accredita- five years. It must also contain a description of the work which tion – they may collect remuneration only if an author/right is licensed and the licensed ways of usage. If such agreement is holder previously concluded an agreement with them regarding non-gratuitous, it must contain provisions about the amount of particular works and particular ways of usage (on a contractual remuneration, otherwise it is deemed not to be concluded. basis).

3.3 Are there any laws which limit the licence terms 3.5 Where there are collective licensing bodies, how parties may agree to (other than as addressed in are they regulated? questions 3.4 to 3.6)? Collective licensing bodies are regulated by the Regulations of The licence term must not exceed the term of validity of the the Russian Government and Part IV of the Russian Civil Code. exclusive right to a work (clause 4 of article 1235 of the Russian Collective societies with state accreditation work under the Civil Code). control of the Ministry of Culture of Russia. A gratuitous exclusive licence for the whole world and for all terms of validity of copyright is not permitted between two commercial organisations. 3.6 On what grounds can licence terms offered by a Both licence and assignment agreements cannot include collective licensing body be challenged? terms which limit a physical person’s right to create results of intellectual activity of a particular type or in a particular field of Financial terms offered by accredited collective societies cannot intellectual activity or to assign an exclusive right to such results be challenged. However, if the author has not concluded an to third parties (such terms are void). agreement with an accredited collective society, he can withdraw Licensees may sub-license works with the licensor’s written his works from their collective management by giving written consent only in the scope of rights/ways of usage/term received notice to them. from the licensor. There are some optional ways of use for which RAO is not accredited and authors/right holders are free to choose or not 3.4 Which types of copyright work have collective to choose them in an agreement with RAO (usage in digital licensing bodies (please name the relevant bodies)? networks, the Internet and synchronisation).

The collective societies in the table below have state accreditation for the collection of remuneration for the following ways of

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

4.1 What acts involving a copyright work are capable of being restricted by the rights holder? A claim can be brought by: ■ an exclusive licensee (in case of a breach of licensed rights); ■ a collective society (on behalf of its members and in respect Any form of usage of a work without the right holder’s consent of rights from their catalogue); may be restricted by the right holder, except for cases permitted ■ a public prosecutor (in case of a legal entity liquidation for by the Russian Civil Code (these are cases where: (i) the work copyright infringement); can be used in some ways without the right holder’s consent but ■ a successor (in respect of moral rights or administrative/ with payment of remuneration to the accredited collective soci- criminal offences); and eties as described above in the answer to question 3.4; (ii) the ■ an interested person (in respect of moral rights or admin- work is used for informational, cultural, educational or scien- istrative/criminal offences). tific purposes; and (iii) the work is used by libraries, archives and educational organisations and in some other cases). 5.3 Can an action be brought against ‘secondary’ infringers as well as primary infringers and, if so, 4.2 Are there any ancillary rights related to copyright, on what basis can someone be liable for secondary such as moral rights, and, if so, what do they protect, infringement? and can they be waived or assigned? A criminal action can be brought against a “secondary” infringer In addition to an exclusive (property) right, there are personal for: (non-property) rights of the author (right of authorship, right to ■ organising a crime; the author’s name, right to the integrity of the work and right ■ administrating a crime; or to the protection of the work from distortions). Personal rights ■ aiding and abetting a crime. are non-assignable and non-transferable. Any waiver of such A civil action can be brought against a “secondary” infringer if: rights does not have legal force. However, the author may grant ■ the “secondary” infringer can stop the infringement permissions to: use his work anonymously; make amendments (preclusive claim); and to his work; or make additions to his work and accompany his ■ the “secondary” infringer is the informational intermediary. work with comments/illustrations, etc. In general, the concept of “secondary” liability is not developed in Russia. 4.3 Are there circumstances in which a copyright owner is unable to restrain subsequent dealings in works 5.4 Are there any general or specific exceptions which have been put on the market with his consent? which can be relied upon as a defence to a claim of infringement? If the original or copies of a work were legally put into civil circulation in Russia by way of sale or other alienation, their further The general exceptions which can be relied upon as a defence to distribution is permitted without the right holder’s consent and a claim of infringement are the following: without paying remuneration to him (except for cases of droit de ■ copyright exhaustion in respect of copies of copyrighted suite in respect of works of visual art). However, this does not objects which were legally put into civil circulation in apply to digital copies (files). Russia (this does not apply to digital copies); ■ the creation of a copy of a copyrighted object for private 52 Copyright Enforcement purposes in case of necessity (except for architectural works, databases, software, the printing of books, the 5.1 Are there any statutory enforcement agencies and, recording of AVW in a cinema, and recording AVW with a if so, are they used by rights holders as an alternative to professional outfit); civil actions? ■ the usage of copyrighted objects for informational, scientific, cultural and educational purposes in a volume which is necessary for such purposes (such usage is limited); There are no special statutory enforcement agencies in Russia ■ citation (quotation) in a volume which is necessary for the specialised in copyright. However, some enforcement functions purpose of the citation; related to the copyright sphere are provided by: ■ a live non-commercial public performance of musical ■ The Federal Customs Service in respect of the import of compositions at a social institution; goods branded with copyrighted objects. ■ the creation of a digital copy of dissertations and disserta- ■ The Federal Antimonopoly Service in respect of antimo- tion abstracts; nopoly offences connected with the use of copyrighted ■ the non-commercial creation and distribution of copy- objects. righted objects for partially sighted or sightless persons; ■ The Ministry of Digital Development in respect of ■ the provision on a non-commercial basis of access to copy- blocking the “mirrors” of pirate websites. righted objects by libraries and archives (in the premises of ■ The Police and Public Prosecutors Office (in respect of the mentioned institutions only); administrative and criminal offences related to the copy- ■ the creation of a single copy of rare or old copyrighted right sphere, except those mentioned above which are in objects (available for libraries and archives only); the charge of other governmental authorities). ■ a non-commercial public performance of a musical compo- All the above-mentioned procedures are independent from sition at an official ceremony; civil actions, except for the blocking of “mirrors” of pirate ■ the creation of a copy of a copyrighted work for enforce- websites which is the alternative to the civil action procedure. ment purposes;

■ the creation of a temporary (up to six months) copy of the ■ costs for extracting information on legal entities from copyrighted object by a broadcaster for internal needs; and public Registers. ■ certain uses of software and databases – the actions Below are the usual terms for infringement proceedings: necessary for the software and databases to function on ■ three to six months for first instance court proceedings; the user’s technical devices (including the creation of an ■ four to 12 months for first instance court proceedings archived copy). if a foreign legal entity or person is a participant in the proceedings; and ■ one-and-a-half to three months for a blocking action at the 5.5 Are interim or permanent injunctions available? first instance court.

In general, interim and permanent injunctions are available in Russia. However, the court practice of their enforcement is 5.8 Is there a right of appeal from a first instance judgment and, if so, what are the grounds on which an undeveloped in Russia (except for website-blocking actions, appeal may be brought? where both interim and permanent injunctions are the obligatory part of the procedure). A first instance judgment can be appealed on the following grounds: 5.6 On what basis are damages or an account of profits ■ failure to identify all the circumstances (or incompleteness calculated? of identified circumstances) of the case; ■ lack of proof of the circumstances of the case that was Actual damages are not a very popular defence method for considered by the first instance court as identified; the copyright sphere in Russia. The most popular defence is ■ inconsistency of the judgment summary with the circum- compensation (statutory damages) for copyright infringement stances identified in the case; and which can be calculated as follows: ■ contempt or incorrect application of the rules of substan- ■ from 10,000 RUB to 5,000,000 RUB per copyrighted tive law and/or of procedural law. object (the sum is initially determined and claimed by the right owner, but can be decreased by the court depending 5.9 What is the period in which an action must be on the circumstances of the case); commenced? ■ double the price of the revealed counterfeit copies of the copyrighted object; and ■ double the price of the non-exclusive licence of using the A civil action should be initiated no later than three years after copyrighted object in the same way as the infringer used it. the fact of infringement or from the moment when the right The following factors may affect the final amount of owner discovered the infringement. compensation: An administrative action should, in general, be initiated no ■ form of guilt; later than two to three months after the fact of infringement. ■ infringement duration; A criminal action should, in general, be initiated no later than ■ infringement consequences; two to 10 years after the fact of infringement (depending on the ■ right owner losses; form of infringement). ■ popularity of the copyrighted work; and ■ other factors. 62 Criminal Offences The actual damage can be calculated with a reasonable degree of certainty based on the following information: 6.1 Are there any criminal offences relating to ■ licence price for the same copyrighted object; copyright infringement? ■ valuer’s report; ■ collective societies’ rates; Article 146 of the Criminal Code of Russia lists infringements ■ guide of licence rates; and of copyright (plagiarism, the illegal use of works as well as the ■ other information. acquisition, storage and transportation of counterfeit copies of Disgorgement of the infringer’s profit is formally possible works for sale, in large quantities, etc.). under Russian law, but it is an undeveloped defence method in Russian court practice. 6.2 What is the threshold for criminal liability and what are the potential sanctions? 5.7 What are the typical costs of infringement proceedings and how long do they take? Potential sanctions for copyright infringement under the Criminal Code of Russia include the following: The typical costs of copyright infringement proceedings include ■ a fine of up to 500,000 RUB or in the amount equal to the the following: salary or other income of the violator for a period of up to ■ state duty (which should be paid into the state budget); three years; ■ costs for purchasing samples (usually involved in cases ■ obligatory jobs for up to 480 hours; regarding the distribution of counterfeit copies); ■ corrective labour for up to two years; notary costs (usually involved in cases regarding digital ■ compulsory labour for up to five years; and infringements); ■ imprisonment for up to six years. ■ translation costs (if the documents provided to the court Criminal sanctions can be combined with civil sanctions. are drafted in a foreign language); and

72 Current Developments 7.3 Have there been any decisions or changes of law regarding the role of copyright in relation to artificial intelligence systems, including the use of copyright 7.1 Have there been, or are there anticipated, in those systems and/or any work generated by those any significant legislative changes or case law systems? developments? Currently, the law does not have specific regulations concerning A new law regarding pirated content in mobile applications was copyright in relation to artificial intelligence systems. Scientific passed by the Parliament and came into force on 1 October discussion as to whether objects generated by such systems 2020. should be protected by copyright is ongoing. In October 2019, A new law regarding links to pirated content being delisted the President of Russia approved the National Strategy for the from search engines that was proposed in 2019 was not adopted. Development of Artificial Intelligence for the period until 2030. It was sent for revision to return to consideration of the initia- The Strategy does not concern copyright issues, but perhaps tive in 2021. scientific progress in this area will lead to the creation of new A new law regarding reducing the standard statutory damages copyright standards. is pending in Parliament.

7.2 Are there any particularly noteworthy issues around the application and enforcement of copyright in relation to digital content (for example, when a work is deemed to be made available to the public online, hyperlinking, etc.)?

In respect of copyright in the digital sphere, the general discussion in 2020 focused on: ■ the responsibility of search engines; ■ the responsibility of VPNs; ■ uncommon digital piracy forms (making content available through telegram, stream-ripping resources, etc.); and ■ the identification of infringers in the digital sphere.

Roman Lukyanov, over the course of his career spanning over 15 years, has been the head of legal of Paradise Production Centre, Copyright.ru and Gala Records/Warner Music Russia. He was also the regional director of the Kiev office of Warner Music. Roman has over 500 court victories to his name. He has authored academic publications and co-authored the online course entitled “Copyright: from Theory to Practice”. Roman is a member of the Association of Lawyers of Russia and of SUDEX, the chamber of judicial experts named after Y. G. Korukhov. He is the official legal adviser at the National Federation of the Music Industry and the Children’s Goods Industry Association. Roman frequently participates in specialised conferences and roundtable discussions.

Semenov&Pevzner Tel: +7 916 194 1991 Office 2.1.2, Gate 22 Email: [email protected] 17C1 Nastavnicheskiy Pereulok URL: www.semenovpevzner.ru 105120, Moscow Russia

Ksenia Sysoeva, with over 10 years of professional experience, is an expert in intellectual property and contract law. Prior to joining Semenov&Pevzner, she worked in the music industry (Gala Records and Warner Music Russia). Ksenia specialises in supporting intellectual property deals in the fields of brands/music/movies licensing, advertising, digital content, video production, etc. Ksenia authored the Russia chapter of Cross-Border Copyright Licensing. Law and Practice for Edward Elgar Publishing. She is a member of the Association of Lawyers of Russia.

Semenov&Pevzner Tel: +7 495 789 2409 Office 2.1.2, Gate 22 Email: [email protected] 17C1 Nastavnicheskiy Pereulok URL: www.semenovpevzner.ru 105120, Moscow Russia

Irina Ostapchuk is an expert in intellectual property law, advertising law and contract law with seven years of professional experience. Prior to joining Semenov&Pevzner, she worked as an in-house lawyer in international advertising agency Havas Sports & Entertainment and mobile games developer and publisher Game Insight. Irina advises on legal issues in different creative and entertainment industries: film; music; video games; theatre; advertising; digital media; and more.

Semenov&Pevzner Tel: +7 495 789 2409 Office 2.1.2, Gate 22 Email: [email protected] 17C1 Nastavnicheskiy Pereulok URL: www.semenovpevzner.ru 105120, Moscow Russia

Semenov&Pevzner has specialised in protecting intellectual property Pictures, Universal Pictures, Columbia Pictures, Elsevier, Springer Nature, (including on the Internet) since 2006. Among the firm’s clients are major Cartoon Network, Entertainment One UK Limited, Rovio Entertainment record labels, brand owners, licensing agencies, software and game devel- and Harman. opers, advertising companies, international film companies, animation www.semenovpevzner.ru studios, web-shops and audio-system producers. Semenov&Pevzner cooperates with the Russian Internet Video Association, works as an official legal consultant of the National Federation of the Music Industry, and is a member of the Russian Children’s Goods Industry Association. Our lawyers are members of working groups of the Ministry of Digital Development, Russian Parliament and Roskomnadzor, and participate in legislation drafting processes. For the last four years, Semenov&Pevzner has successfully represented its clients in more than 10,000 intellectual property disputes, including such companies as Sony Music, Warner Music, Universal Music, Paramount

Switzerland Switzerland

Melanie Müller

Wenger Plattner Yannick Hostettler

12 Copyright Subsistence Furthermore, copyright does not protect official or legally required collections and translations of the aforementioned works.

1.1 What are the requirements for copyright to subsist in a work? 1.5 Is there a system for registration of copyright and, if so, what is the effect of registration? Irrespective of their value or purpose, works are literary and artistic intellectual creations with an individual character. The validity of a copyright is not dependent on registration; Unlike for other intellectual property rights, there are no formal moreover, there is no registration process at all. Copyright requirements such as registration. always originates in the person of the creator. The author is the natural person who created the work, meaning that the right arises from the creation of the work itself and commences from 1.2 Does your jurisdiction operate an open or closed list of works that can qualify for copyright protection? the very moment the work comes into being (if the requirements for copyright protection are met).

The Federal Act on Copyright and Related Rights (“CopA”) gives – in a non-exhaustive list – examples of works that could 1.6 What is the duration of copyright protection? Does qualify for copyright protection (in so far as they are intellectual this vary depending on the type of work? creations with an individual character [see question 1.1]). These are in particular: A work is protected by copyright as soon as it is created, irre- ■ literary, scientific and other linguistic works; spective of when it has been fixed on a physical medium. In the ■ musical works and other acoustic works; case of a computer program, protection expires 50 years after ■ works of art, in particular paintings, sculptures and the death of the author, and in the case of all other works, 70 graphic works; years after the death of the author. Where it is assumed that the ■ works with scientific or technical content such as draw- author has been dead for more than 50 or 70 years, respectively, ings, plans, maps or three-dimensional representations; protection no longer applies. The term of protection is calcu- ■ works of architecture; lated from 31 December of the year in which the event deter- ■ works of applied art; mining the calculation occurred. ■ photographic, cinematographic and other visual or audio- Where two or more persons have contributed to the creation visual works, photographic depictions and depictions of of a work (joint authorship), protection expires according to the three-dimensional objects produced by a process similar paragraph above with regard to the last surviving joint author. to that of photography are considered works, even if they Where the individual contributions may be separated, protec- do not have individual character; tion for each contribution expires separately. ■ choreographic works and works of mime; Where the author of a work is unknown, protection for that ■ computer programs; and work expires 70 years after it has been published or, if it has ■ drafts, titles and parts of works, insofar as they are intellec- been published in instalments, 70 years after the final instal- tual creations with an individual character. ment. If the identity of the person who has created the work becomes publicly known before the expiry of the aforemen- 1.3 In what works can copyright subsist? tioned term, protection for the work expires according to the paragraph above. See questions 1.1 and 1.2 above. 1.7 Is there any overlap between copyright and other 1.4 Are there any works which are excluded from intellectual property rights such as design rights and copyright protection? database rights?

Copyright does not protect: acts, ordinances, international trea- A work can be protected simultaneously by copyright and other ties and other official enactments; means of payment; decisions, intellectual property rights (i.e. trademark rights or design minutes and reports issued by authorities and public administra- rights). Additional protection is also possible, according to the tions; patent specifications; and published patent applications. Federal Act against Unfair Competition (“UCA”).

1.8 Are there any restrictions on the protection Apart from the above, the owner of the work is always the for copyright works which are made by an industrial author himself. In practice, the rights to the works created process? under the contract in question must be transferred to the employer, client, etc., who acquire the copyrights derivatively. The author is the natural person who created the work, meaning In the absence of an explicit provision, the theory of purpose that there is no general restriction, provided that the work was transfer takes effect as a rule of interpretation, according to created by a natural person. Nevertheless, the author can use which only those rights are transferred to the employer, etc. any available technology, as long as the work itself was created which are necessary for the fulfilment of the contract. by the author himself and not entirely by an industrial process. 2.4 Is there a concept of joint ownership and, if so, 22 Ownership what rules apply to dealings with a jointly owned work?

2.1 Who is the first owner of copyright in each of the Where two or more persons have contributed as authors to the works protected (other than where questions 2.2 or 2.3 creation of a work, the copyright belongs to all such persons apply)? jointly (joint authorship). Unless they have agreed otherwise, they may only use the work with the consent of all authors; The first copyright owner of a work is the author defined as consent may not be withheld for reasons contrary to the prin- the natural person who created the work. In Switzerland, the ciples of good faith. creator principle applies, i.e. copyright always originates in the Each joint author may independently bring an action for person of the creator, respectively the author. An exception infringement, but may only ask for relief for the benefit of all. (contrary to the system) is found in the law regarding publishing Where the individual contributions may be separated and there contracts. Legal entities cannot originally acquire copyrights, is no agreement to the contrary, each joint author may use his but can do so derivatively, e.g. through legal transactions. own contribution independently, provided such use does not Unless proven otherwise, the author is the person whose impair the exploitation of the joint work. name, pseudonym or distinctive sign appears on the copies or the publication of the work. As long as the author is not named 32 Exploitation or remains unknown in the case of a pseudonym or distinctive sign, the person who is the editor of the work may exercise the 3.1 Are there any formalities which apply to the copyright. Where such person is also not named, the person transfer/assignment of ownership? who has published the work may exercise the copyright. Swiss law also grants copyright-related rights (so-called There are no formalities which apply to the transfer or assign- “neighbouring rights”) to performers, phonogram and audio- ment of ownership. Copyright is in general assignable and may visual fixation producers and broadcasting organisations. be inherited. However, as with any legal transaction, written form is recommended. In the context of inheritance law, rele- 2.2 Where a work is commissioned, how is ownership vant formal requirements must be considered. of the copyright determined between the author and the commissioner? 3.2 Are there any formalities required for a copyright licence? The sole right owner is always the author himself, and the author has the exclusive right to decide whether, when and how his There are no formalities required for a copyright licence. work is used. The commissioner will not automatically acquire However, as with any legal transaction, written form is recom- ownership of the copyright in the work created for him (for the mended, especially for evidence reasons and in order to avoid exception, see question 2.1). The copyright in this case must possible interpretation disputes. be assigned to the commissioner. The assignment of a right subsisting in the copyright does not include the assignment of other partial rights, unless such was agreed. The assignment of 3.3 Are there any laws which limit the licence terms the ownership of a copy of a work does not include the right to parties may agree to (other than as addressed in exploit the copyright, even in the case of an original work. questions 3.4 to 3.6)?

2.3 Where a work is created by an employee, how is There are no specific laws limiting the licence terms, but the ownership of the copyright determined between the general limitations to contracts also apply to licence terms. employee and the employer? Accordingly, a (licensing) contract is void if its terms are impossible, unlawful or immoral. In addition, the law prohibits any excessive restrictions within contracts. A dependent work creation is the creation of a work in the context of an employment contract, an agency contract (see question 2.2) or a contract for work and services. In contrast to 3.4 Which types of copyright work have collective patent and design law, copyright law does not contain any provi- licensing bodies (please name the relevant bodies)? sions on works created within the framework of an employment relationship. The following are subject to federal supervision: the manage- Exceptions are the rights to computer programs. Where a ment of exclusive rights for the performance and broadcasting computer program has been created under an employment of non-theatrical works of music, and the production of phono- contract in the course of fulfilling professional duties or contrac- grams and audio-visual fixations of such works; the assertion tual obligations, the employer alone shall be entitled to exercise of exclusive rights of certain works; and the assertion of certain the exclusive rights of use.

rights to remuneration provided for in this Act. The Federal 42 Owners’ Rights Council may subject other areas of collective rights management to federal supervision if public interest so requires. Personal use of exclusive rights by the author or his heirs is not subject to 4.1 What acts involving a copyright work are capable of federal supervision. being restricted by the rights holder? In Switzerland, the following collective licensing bodies exist: ■ SUISA (musical works with the exception of theatrical The author or the rights holder has the exclusive right to decide works); whether, when and how his work is used. The following acts ■ ProLitteris (literary and dramatic works as well as works of therefore may be restricted: producing copies of the work; fine art and photography); offering, transferring or otherwise distributing copies of the ■ SUISSIMAGE (visual and audio-visual works); work; reciting, performing or presenting a work; broadcasting ■ SISSPERFORM (rights of performers, producers of audio the work by radio, television or similar means; retransmitting and video recordings and broadcasting companies); and works by means of technical equipment; and making works ■ Société Suisse des Auteurs (“SSA”) (theatrical and audio-visual made available, broadcasted works and retransmitted works works). perceptible. The author of a computer program may also restrict the rental of the work. Further, the author has the exclusive right to decide whether, when and how the work may be altered 3.5 Where there are collective licensing bodies, how and whether, when and how the work may be used to create a are they regulated? derivative work or may be included in a collected work. Even where a third party is authorised by contract or law Any person who exploits rights which are subject to federal to alter the work or to use it to create a derivative work, the supervision requires authorisation from the Swiss Federal author may oppose any distortion of the work in violation of his Institute of Intellectual Property (“IPI”). personal rights. Authorisation is only given to collective rights management organisations which: (1) have been founded under Swiss law; (2) are domiciled in Switzerland and conduct their business from 4.2 Are there any ancillary rights related to copyright, Switzerland; (3) have the management of copyright or related such as moral rights, and, if so, what do they protect, and can they be waived or assigned? rights as their primary purpose; (4) are open to all holders of rights; (5) grant an appropriate right of participation in the decisions of the society to authors and performers; (6) guarantee The moral rights of the author specifically protect the relation- compliance with the statutory provisions, in particular in terms ship to his work and thus go beyond the rules of general personal of their articles of association; and (7) give rise to the expec- rights. They include the right to recognition of authorship, the tation of the effective and economic exploitation of rights. In right of first disclosure and the right of integrity of the work. general, authorisation is only granted to a single collective rights Generally, moral rights are not assignable, but are inheritable. management organisation per category of work, and to a single This means that, for example, the right of first disclosure cannot collective rights management organisation for related rights. be transferred as such. However, the author can allow a third Authorisation is granted for five years; on expiry, it may be party to exercise certain moral rights by contract. Further, the renewed for the same term. right of first publication can, if the author has agreed in principle, be exercised by a third party (e.g. by a publisher). Furthermore, the author can waive his rights of defence against violations of 3.6 On what grounds can licence terms offered by a his moral rights in a specific case. collective licensing body be challenged?

The Federal Arbitration Commission for the Exploitation of 4.3 Are there circumstances in which a copyright owner is unable to restrain subsequent dealings in works Copyrights and Related Rights (“Arbitration Commission”) is which have been put on the market with his consent? responsible for approving the tariffs drawn up by the collective rights management organisations. The decision of the Arbitration Commission may be appealed The “Principle of Exhaustion” means that once a copy of a work to the Federal Administrative Court and further to the Federal has been put on the market by the author (or with his consent), Supreme Court on limited grounds. Before the Federal the work can circulate freely. According to the Federal Supreme Administrative Court, the appellant may contend that there has Court, exhaustion unfolds its effect not only if the copy of been a violation of federal law including: exceeding or abusing the work has been put on the market in Switzerland, but also discretionary powers; that there has been an incorrect or incom- anywhere in the world (international exhaustion). Therefore, plete determination of the legally relevant facts of the case; or copyright owners cannot prevent any import of copies of that the ruling is inadequate (a plea of inadequacy is inadmis- the work – which have been legally acquired abroad – into sible if a cantonal authority has ruled as the appellate authority). Switzerland, and any reselling of such copies in Switzerland. Further, the appeal can be brought before the Federal An exception to this rule applies with regard to the protection Supreme Court to challenge violations of federal and interna- of audio-visual works, more specifically to the performance of tional law. The determinations of the facts of the case can only cinematographic works. Unless authorised by the author, copies be challenged if they are obviously incorrect or are based on an of audio-visual works, such as movies, may not be further trans- infringement of rights, and if the remedying of the defect can be ferred or rented as long as the author is thereby impaired in exer- decisive for the outcome of the proceedings. cising his right of performance, meaning the first broadcasting period in movie theatres.

52 Copyright Enforcement 5.6 On what basis are damages or an account of profits calculated?

5.1 Are there any statutory enforcement agencies and, if so, are they used by rights holders as an alternative to There are three bases for such claims: civil actions? Tort (art. 41 Code of Obligations (“CO”)): damages derived from tort can either be calculated using the common concrete No, there are no statutory enforcement agencies. Under Swiss calculation method (which is in many cases very hard to apply, law, an alternative to civil (and/or criminal) actions does not especially because loss of profits is often hard to prove in copy- exist. However, rights holders can request assistance from the right matters) or by way of the licence analogy, which is a hypo- customs authorities in case of unlawful import or export. thetical method. For the latter, damages are calculated on the basis of the licence fee which the infringer would have had to pay if he had asked for permission. 5.2 Other than the copyright owner, can anyone else Account of profits (art. 423 CO): this requires (inter alia) bad bring a claim for infringement of the copyright in a work? faith. Unjust enrichment (art. 62 CO): this basis is relevant in cases Apart from the owner, any person who holds an exclusive in which the infringer is not of bad faith. licence is entitled to bring a separate action unless this is explicitly excluded in the licence agreement. Furthermore, any (e.g. 5.7 What are the typical costs of infringement also non-exclusive) licensees may join an infringement action in proceedings and how long do they take? order to claim for their own losses. All of the above only applies to licence agreements that have been concluded or confirmed after 1 July 2008. The costs (court fees and attorneys’ fees) of infringement proceedings in the first instance depend on the amount in dispute and the canton in which litigation is conducted. Usually, 5.3 Can an action be brought against ‘secondary’ courts do not assume the amount in dispute to be lower than infringers as well as primary infringers and, if so, CHF 50,000 to 100,000. The costs also depend in particular on on what basis can someone be liable for secondary the complexity of the dispute, the number of court hearings and infringement? the number of submissions filed. The losing party must bear the court fees and compensation for the attorneys’ fees. In principle, an action can be brought against anyone who A standard infringement proceeding in the first instance participates in the infringement. This includes accomplices and usually takes up to two years. abettors. Costs for appeal proceedings (before the Federal Supreme Court) are usually lower than in the first instance, and such 5.4 Are there any general or specific exceptions proceedings take less time than first instance proceedings. which can be relied upon as a defence to a claim of infringement? 5.8 Is there a right of appeal from a first instance judgment and, if so, what are the grounds on which an The Copyright Act contains an enumeration of limiting provi- appeal may be brought? sions (“Chapter 5 Exceptions to Copyright”, art. 19 et seqq. CopA). This chapter contains exceptions for private use of In copyright matters, cantonal Appellate Courts and Commercial published works, decoding of computer programs, dissemi- Courts rule as the sole cantonal instance. An appeal may there- nation of broadcast works, use of broadcasting organisations’ fore only be brought before the Federal Supreme Court. archived works, use of orphan works, making available broad- The grounds for appeal are confined. Admissible grounds for casted musical works, compulsory licences for the manufacture appeal in copyright matters are especially the violation of federal of phonograms, archive and backup copies, temporary copies, and international law. There are additional restrictions for the copies for broadcasting purposes, use of works by people with application of foreign law. The facts can only be challenged if disabilities, use of works for the purpose of scientific research, the previous instance established them in an obviously incorrect inventories, quotations, museum, exhibition and auction cata- manner or in violation of the law. logues, works on premises open to the public and for reporting Appeals against interim measures can only be challenged on current events. A potential defendant may also refer to the the grounds of violation of constitutional rights. Principle of Exhaustion (see question 4.3).

5.9 What is the period in which an action must be 5.5 Are interim or permanent injunctions available? commenced?

Both interim and permanent injunctions are available. The The period depends on the action and its legal basis. standard of proof to obtain a preliminary injunction is lower A damage claim based on tort, for example, becomes time- than in proceedings on the merits. The fulfilment of the barred three years after the date on which the claimant became requirements must appear likely under a plausibility standard. aware of the damage and the identity of the infringer. In any These requirements are: possibility of success on the merits; event, a damage claim based on tort becomes time-barred 10 endangerment or infringement of rights; risk of serious harm; years after the damaging act. urgency; and balance of interests. An action for injunctive relief or a declaratory action is not In case of particular urgency, the court may issue interim subject to limitation per se. However, the corresponding condi- injunctions ex parte, that is, without hearing the party against tions of the respective type of action must be met. Inter alia, whom the measure is requested. the claimant must have a current and legitimate interest in the A permanent injunction requires proceedings on the merits. proceedings.

Regarding interim measures, since urgency is a prerequisite, 72 Current Developments the applicant is obliged to act promptly upon discovery of the infringement. 7.1 Have there been, or are there anticipated, any significant legislative changes or case law 62 Criminal Offences developments?

6.1 Are there any criminal offences relating to On 1 April 2020, the revised CopA entered into force. This copyright infringement? revision contains substantial changes. For example, according to the revised law, photographs of three-dimensional objects Copyright infringement is a criminal offence. Omission of are considered works, even if they do not have individual char- source, infringement of related rights, offences relating to tech- acter. The revised CopA also contains anti-piracy provisions nical protection measures and to rights-management informa- such as an obligation of providers of internet hosting services to tion, and unauthorised assertion of rights are also considered prevent a work from being unlawfully remade available (“duty criminal offences. of stay-down”).

6.2 What is the threshold for criminal liability and what 7.2 Are there any particularly noteworthy issues around are the potential sanctions? the application and enforcement of copyright in relation to digital content (for example, when a work is deemed to be made available to the public online, hyperlinking, Negligent infringements are of no criminal relevance; the etc.)? above-mentioned criminal offences require intentional acts. Depending on the criminal offence, the sanctions can be a Due to the mentioned “duty of stay-down” for hosting providers, custodial sentence of up to three years or a monetary penalty these providers will have to ensure that removed copyright-in- or a fine. If the copyright or related rights infringement was fringing content remains off their servers. Furthermore, the committed for commercial gain, the penalty is a custodial revised CopA contains provisions stating that on-demand sentence of up to five years (which must be combined with a providers owe the authors/performers remuneration, which is monetary penalty) or a monetary penalty alone. collected for them by collective licensing bodies.

7.3 Have there been any decisions or changes of law regarding the role of copyright in relation to artificial intelligence systems, including the use of copyright in those systems and/or any work generated by those systems?

A work can only be created by a human being (see question 2.1). Since the CopA is technologically neutral, no special rules apply. There have been no changes of law in this regard.

Melanie Müller is an associate at Wenger Plattner’s Basel office and a member of the IP and IT teams. She advises national and international companies as well as individuals on the full range of intellectual property matters, focusing primarily on trademarks, copyright and licensing. Further she advised a private Bank in Zurich as an external legal counsel in all relevant matters. Prior to joining Wenger Platter, Melanie Müller completed an LL.M. in Boston with a focus on IP law, and worked, among other positions, as a law clerk at the civil court in Basel.

Wenger Plattner Tel: +41 61 279 70 00 Aeschenvorstadt 55 Email: [email protected] 4010 Basel URL: www.wenger-plattner.ch Switzerland

Yannick Hostettler is a senior associate at Wenger Plattner’s Basel office specialising in advising on intellectual property matters and dealing with contentious cases in particular. Representing both individuals and companies, he conducts domestic and cross-border litigation before state courts of all levels and arbitral tribunals. Prior to joining Wenger Plattner, Yannick Hostettler worked, among other positions, as a law clerk at a civil court and as a research and teaching fellow for civil law and civil procedure law at the University of Basel.

Wenger Plattner Tel: +41 61 279 70 00 Aeschenvorstadt 55 Email: [email protected] 4010 Basel URL: www.wenger-plattner.ch Switzerland

For over 30 years, Wenger Plattner has been advising and representing clients in all aspects of business law. Wenger Plattner has offices in Basel, Zurich and Bern as well as a representative office in Geneva. We identify practical, workable solutions and help clients implement these to achieve the best possible commercial outcomes. We rely on teams of experts, many of whom are involved in decision-making as members of public authorities and other bodies, giving them an in-depth understanding of client needs. As a fully integrated partnership, we place a strong emphasis on teamwork and cooperation. You will have access to dedicated, highly experienced specialists who will help you meet your specific objectives efficiently and effectively, delivering the highest standards of quality. www.wenger-plattner.ch

Turkey Turkey

Ozlem Futman

Ofo Ventura Intellectual Property & Litigation Yasemin Aktas

12 Copyright Subsistence copyright protection over a work. The protection subsists automatically and becomes enforceable without registration. Registration is optional and may be preferred to prove ownership 1.1 What are the requirements for copyright to subsist and the date of creation, but it needs to be kept in mind that such in a work? a registration does not make a work eligible for a certain right. However, according to the Law, registration is compulsory The Law of Literary and Artistic Works No. 5846 (the Law) for cinematographic and musical works for commercial exploita- regulates the protection of copyrights. Copyright protection tion purposes and for facilitating proof of ownership, but not subsists in an intellectual or artistic creation: for the creation of any rights. Registration is deemed manda- (i) bearing the specialty of its author and by being original; tory also for computer games that include moving and audio- namely, it results from the independent, creative effort of visual images within a certain mise en scène or scenario under the the author; and Regulation of the Turkish Ministry of Culture and Tourism No. (ii) by being capable of being classified as one of the below 26171 dated May 17, 2006 for the same purpose. four main categories: The General Directorate of Cinema and Copyrights oper- (i) scientific and literary works; ating under the Ministry of Culture and Tourism is in charge (ii) musical works; of recording and registering copyright. Regulation No. 26171 (iii) artistic works; or determines the terms and conditions (e.g. necessary documents, (iv) cinematographic works. official fees, etc.) for the recording and registration of copyright.

1.2 Does your jurisdiction operate an open or closed 1.6 What is the duration of copyright protection? Does list of works that can qualify for copyright protection? this vary depending on the type of work?

We listed the four main categories of works recognised by the According to Article 27 of the Law, copyright protection starts Law in our response to the question 1.1. In addition to them, once the work becomes public, with no requirement for notifi- the Law recognises some sub-categories as well. For instance, cation or registration. In case the author is a real person, the computer software is listed as a sub-category in the Law under protection lasts for the lifetime of the author, plus 70 years after “scientific and literary works” and a sui generis protection is his/her death; this 70-year period starts from the first day of granted to them as well. The four main categories listed above the year following the author’s death. In joint authorships, the are numerus clausus, yet, sub-categories are not limited to the ones protection term lasts for the lifetime of the last-surviving author listed in the Law; namely, the Law allows the regulation of new plus 70 years. sub-categories by legal interpretation depending on the nature In case the author is a legal entity, the protection term lasts 70 of the creative work in every single case. years as of when the relevant work becomes public. For orphan works, the publisher would use the rights coming 1.3 In what works can copyright subsist? from copyright; if the publisher cannot be identified, then whoever makes the reproduction can use the rights. The protection term for orphan works is 70 years as of when the work Please see our responses to questions 1.1 and 1.2. becomes public, unless the author reveals his/her name before the term expires. 1.4 Are there any works which are excluded from In the last two cases above, the 70-year protection term in copyright protection? the Law is calculated from the first day of the year following the release of the work to the public. The Law does not exclude any works from copyright protection. 1.7 Is there any overlap between copyright and other intellectual property rights such as design rights and 1.5 Is there a system for registration of copyright and, database rights? if so, what is the effect of registration?

Yes. A work can also be protected according to the Turkish Under the Law, copyright registration is possible for all types Industrial Property Law No. 6769 (the IP Code), in case it meets of work but is not mandatory for the purpose of obtaining

the criteria for obtaining IP protection. The Turkish system agreement signed between parties. In the absence of an agree- accepts the cumulative protection principle. Therefore, a copy- ment, copyright over the commissioned work would automati- right-protected work can also be protected through design rights cally vest in the independent contractor. and trademarks. In case the commissioning party’s instructions play a key role For example, three-dimensional designs can also be registered in the creation process and the independent contractor’s contri- and protected as a design, and product packaging can be regis- bution constitutes no more than his labour, then the work may tered as a trademark according to the IP Code too. be subject to collective or joint ownership as per Articles 9 and 10 of the Law. 1.8 Are there any restrictions on the protection for copyright works which are made by an industrial 2.3 Where a work is created by an employee, how is process? ownership of the copyright determined between the employee and the employer? There are no specific restrictions stipulated in the Law on copyright protection for works that are made by an industrial Copyright over works created by an employee as a part of their process. They are subject only to the standard provisions of duties is regulated under Article 18(2) of the Law which reads copyright protection (the qualification of a work and the owner- as follows: “Provided that the contrary is not determined by ship principle). a private contract between the parties or is understood from the nature of the situation, the rights on the works created by 22 Ownership officers, servants and employees while they are performing their jobs shall be used by their employers or by the ones who have 2.1 Who is the first owner of copyright in each of the assigned them to work. The same rule applies in respect of the works protected (other than where questions 2.2 or 2.3 executive bodies of legal persons.” apply)? Thus, all the economic rights over a completed work are assigned to the employer once the work is created, but the employee remains its author and holds the moral rights in their As a general principle, the author who creates the work is the possession. owner of copyright in that work. Article 8 of the Law states: Please note, however, that this provision is not applicable to “The author of a work is the person who has created it.” This works created independently from the employee’s duties. principle is based on the assumption that the creator is always a real person. There are various presumptions on the ownership of a work, 2.4 Is there a concept of joint ownership and, if so, pursuant to the Law, depending on whether or not the work is what rules apply to dealings with a jointly owned work? published. According to the Law: ■ Any person using their name or their famous alias on any According to Article 9 of the Law, if a work is created jointly by copy of a published work shall be deemed as the owner of more than one person and can be separated into different parts, the work until otherwise is proven under Article 11. there will be a collective ownership and each person shall be ■ The person who is introduced in the customary manner as deemed the owner of the part they created. A collective owner- the author of a work at conferences or performances made ship can also be created if authors combine several independent in public premises or broadcast by radio and television works. shall be deemed the author of the work, unless another If a work created by the participation of more than one person person is deemed the author by way of the presumption constitutes an indivisible whole, the author of the work is the given above under Article 11. union of the persons who created it. The provisions on ordi- ■ So long as the author of a published work cannot be estab- nary partnership shall apply to such union as per Article 10 of lished under Article 11, the rights and authority belonging the Law. to the author may be exercised by the publisher, and, under Article 12, if the publisher cannot be determined, by the 32 Exploitation person making the reproduction, in his own name. ■ In cases where the author cannot be determined by the 3.1 Are there any formalities which apply to the presumption under the second paragraph of Article 11, transfer/assignment of ownership? under Article 12 such authority shall belong to the person giving the conference or the person who carries out the performance. The transfer of economic rights on a work – unrestricted or ■ The provisions on mandate shall apply to the relations restricted as regards duration, place or scope, with or without between the persons authorised under this article and the consideration – is entirely at the author’s discretion. real right holders, unless agreed otherwise. A transfer/assignment of any economic rights is valid only if it is in writing and contains the scope of the transferred or waived rights in detail by listing them one by one. Use of general 2.2 Where a work is commissioned, how is ownership wording (e.g. all economic rights) in transfer/assignment agree- of the copyright determined between the author and the ments will mean that they will be deemed void. commissioner? As per Article 48 of the Law, acts of disposal specified above shall be null and void if they relate to a work which has not yet The author of a commissioned work is determined according been created or shall be completed in the future. On the other to the general principles and authorship belongs to the inde- hand, the author can make a commitment regarding these acts pendent contractor who actually creates the work. The rights of of disposal before the creation of a work and such commitment the author may be assigned to the commissioner after comple- can be cancelled by either contracting party with a one-year tion of the work depending on the terms and conditions of the notice period.

Moral rights are non-transmissible and non-withdrawable by ■ Scientific and Literary Works the Law; any agreements or declarations contradicting the moral ■ Collecting Society of Science and Literature Work rights shall be void. Owners (BESAM). ■ Collecting Society of Science and Literature Work 3.2 Are there any formalities required for a copyright Owners of Turkey (İLESAM). licence? ■ Collecting Society of Information and Software Work Authors (BİYESAM). Likewise, the transfer/assignment of a copyright licence must ■ Collecting Society of Interpreters (ÇEVBİR). also be in writing and must contain the scope of the licensed ■ Collecting Society of Publishers’ Copyright and rights in detail by listing them one by one. Plus, the restric- Licensing (YAYBİR). tion related to transfer/assignment of moral rights is valid also ■ Collecting Society of Printing and Publishing of for licence agreements, and moral rights cannot be subject to a Turkey (TBYM). licence. In case of breach of any of these restrictions or formal ■ Collecting Society of Study and Culture Books requirements, a licence agreement will be deemed void. Publishers (DEKMEB). A licence can be given on any economic rights on both an ■ Collecting Society of Education Publishers exclusive and non-exclusive basis. Unless the licence is granted (EĞİTİMYAYBİR). on an exclusive basis explicitly in the agreement or such exclusive- ■ Radio and Television ness is derived from the Law, it shall be deemed as non-exclusive. ■ Collecting Society of Radio and Television Broadcasters (RATEM). 3.3 Are there any laws which limit the licence terms ■ Artistic Works parties may agree to (other than as addressed in ■ Collecting Society of Artistic Work Owners questions 3.4 to 3.6)? (GESAM). ■ Theatre Please see the answer to question 3.2 above. ■ Collecting Society of Theatre Artists (TOMEB).

3.4 Which types of copyright work have collective 3.5 Where there are collective licensing bodies, how licensing bodies (please name the relevant bodies)? are they regulated?

All types of work (scientific and literary, musical, artistic and Article 42 of the Law regulates collective licensing bodies and cinematographic) have collective licensing bodies and the authorises them to manage the economic rights of their members current bodies are listed below: on the basis of a written agreement or deed between them. ■ Federation Below are the aims for the establishment of collective ■ Federation of Publisher Collecting Society licensing bodies, according to the Law: (YAYFED). ■ Protection of the mutual interests of their members. ■ Cinematographic Works ■ Management and pursuit of the rights granted by the Law. ■ Collecting Society of Cinematographic Works ■ Collection and distribution of fees to the right holders. Authors (BSB). The By-law on Work Owners and Related Right Owners ■ Collecting Society of Cinematographic Works Collective Bodies and Federations published on April 1, 1999 Authors of Turkey (SESAM). under No. 23653 (the By-law) regulates duties and auditing of ■ Collecting Society of Cinematographic and Television these bodies, conditions of membership, conditions of with- Works Authors (SETEM). drawal and removal of memberships, the economic relation- ■ Collecting Society of Cinematographic Works ships between the bodies and their members, the relationships Authors (SİNEBİR). between the bodies and the legal/real persons. ■ Collecting Society of Film Producers (FİYAB). ■ Collecting Society of Cinematographic Works Producers (SE-YAP). 3.6 On what grounds can licence terms offered by a ■ Collecting Society of Television and Cinema Film collective licensing body be challenged? Producers (TESİYAP). ■ Collecting Society of Cinema Artists (BİROY). According to Article 40 of the By-law, collective licensing ■ Collecting Society of Anatolian Cinematographic bodies’ representation authorisation is limited to the frame- and Television Works Authors (ASİTEM). work of rights assigned by its members. The bodies shall take ■ Collecting Society of Scenario and Dialog Writers into account the following criteria while forming an agreement Cinematographic Works Authors (SENARİSTBİR). for third parties’ use of works, performances, publications and ■ Musical Works records: ■ Collecting Society of Music Works Authors of Turkey ■ Continuity in the widespread transmission of the work to (MESAM). society. ■ Collecting Society of Group of Music Works Authors ■ Determination of reasonable fees by taking into consider- (MSG). ation national and international practices. ■ Collecting Society of Music Performers ■ Avoiding violating competition in the market. (MÜYOR-BİR). ■ The publishers’ respective area and the audience of the ■ Collecting Society of Neighbouring Right Owner work. Phonogram Producers (MÜZİKBİR). ■ Frequency of use of the work. ■ Mü-Yap Collecting Society of Neighbouring Right ■ Determination of one fee per each use of the work. Owner Phonogram Producers (MÜ-YAP). ■ Determination of a unit price in seconds or minutes. ■ Collecting Society of Neighbouring Right Owner ■ Fixed fees. Phonogram Producers (MÜYA-BİR).

The licence terms offered by a collective licensing body may the compulsory standards. These authorities are entitled to be challenged in case the relevant terms exceed the limits of organise ex officio inspections and to work with the local police power of the bodies or if the terms are non-proportional on the for the seizure of pirate works which do not meet the stand- basis of the provisions of the Code of Obligations No. 6098. ards. Upon seizure, further investigations are held by the Public Prosecutors. 42 Owners’ Rights However, the above-stated system does not deal with copyright infringement from a right holder’s perspective and cannot be used as an alternative to civil actions. 4.1 What acts involving a copyright work are capable of being restricted by the rights holder? 5.2 Other than the copyright owner, can anyone else bring a claim for infringement of the copyright in a work? A copyright holder has the right to restrict any act infringing his/her moral and/or economic rights which means the right holder can prevent third parties from the following: Yes. Likewise, the copyright owner and the exclusive licensee ■ adapting the work; can initiate a court action and claim indemnity against infringe- ■ duplicating/reproducing the work; ment of their economic rights. A non-exclusive licensee can also ■ distributing the work; bring a claim for infringement in case the written licence agree- ■ performing the work to the public; ment explicitly grants them a right of action. ■ broadcasting or communicating the work to the public by The Law entitles collective licensing bodies to sue for copy- any means of transmission of signs, sounds or images; right infringement on behalf of their members as well. ■ disclosing the work to the public; ■ modifying the work; 5.3 Can an action be brought against ‘secondary’ ■ integrating the work; and infringers as well as primary infringers and, if so, ■ having the work attributed to them. on what basis can someone be liable for secondary infringement?

4.2 Are there any ancillary rights related to copyright, such as moral rights, and, if so, what do they protect, The Law does not categorise infringing acts as “primary” or and can they be waived or assigned? “secondary” and deems all of them as “an act of copyright infringement” generally. Thus, there is no difference between liabilities of infringers and they all may be subject to the civil, Below are the ancillary rights associated with the creation of criminal and injunctive remedies regulated in the Law. copyright works: Moral rights: the author of a work has the following moral rights: 5.4 Are there any general or specific exceptions (i) disclosure of the work; which can be relied upon as a defence to a claim of (ii) attribution of the work; and infringement? (iii) protection of the integrity of the work. Protection of these rights is regulated under the same provi- There are provisions in the Law exempting certain activities from sions protecting economic rights. However, contrary to copyright infringement; the main categories are listed below: economic rights, moral rights cannot be transferred or waived Public order: The rights granted to authors shall not prevent according to the Law. a work from being used as evidence in court or before other Neighbouring rights: performers who interpret, introduce authorities or from being the subject matter of police or criminal and recite a work, phonogram producers and radio-television proceedings. Photographs may be reproduced and distributed organisations have various rights according to Article 80 of the in any form by official authorities without the author’s consent Law. (Article 30). Public interest: ■ The reproduction, distribution, adaptation, exploitation in 4.3 Are there circumstances in which a copyright any other form of officially published laws, by-laws, regu- owner is unable to restrain subsequent dealings in works lations, notifications, circulars and court decisions that which have been put on the market with his consent? have been officially published or announced is permitted (Article 31). According to the doctrine of national exhaustion of rights ■ The reproduction, public recitation, or broadcasting accepted under Article 23/2 of the Law, the owner of a copyright by radio and distribution by any other means of official work cannot prevent circulation of “lawfully made copies” after speeches is permitted (Article 32). the first sale or release of a copyright work – with their consent ■ Published works may be freely performed in all educa- – to the public in Turkey. tional institutions (Article 33). ■ It is free to create selected or collected works, which are 52 Copyright Enforcement dedicated to educational purposes (Article 34). ■ Quotations of a work are permitted under certain conditions listed under Article 35. 5.1 Are there any statutory enforcement agencies and, if so, are they used by rights holders as an alternative to ■ Daily news and information communicated to the public civil actions? by the press or radio may be freely quoted (Article 36). ■ A recording of parts of an intellectual or artistic work on devices enabling the transmission of signs, sounds and/or The Law authorises the Ministry of Culture and its local repre- images in relation to current events is permitted provided sentatives in each city to investigate whether or not the cine- that it has the nature of news and does not exceed the matographic/musical and literary works sold in public meet limits of giving information (Article 37).

Private (personal) use: Reproducing all intellectual and time limit is 10 years from the date when the cause of action artistic works for personal use without pursuing profit is arose. In case the infringing act is also subject to criminal permitted (Article 38). responsibility and if the statutory time limit for criminal respon- And naturally, after expiration of the protection term of a sibility is longer, then the longer period shall apply. It needs to copyright, it enters the public domain and can be used without be noted that as long as the infringement is ongoing, the time permission. limit does not start.

5.5 Are interim or permanent injunctions available? 62 Criminal Offences

Yes. Interim (preliminary) injunctions are set out by both the Law 6.1 Are there any criminal offences relating to copyright infringement? and the general principles of the Code of Civil Procedures. The court can issue a preliminary injunction by ordering the alleged infringer to do or not to do something upon the ex parte or inter Yes. Articles 71 and 72 of the Law regulate criminal liability for partes request of the right holder before or after filing the lawsuit. the following infringing acts: The right holder can also seek permanent cessation of the ■ Infringement of any economic rights on a copyrighted infringing acts under the Law. work. ■ Making an adaptation without any reference to the original work. 5.6 On what basis are damages or an account of profits ■ Renaming a work without referring to the actual owner. calculated? ■ Disclosing a work to the public without permission from the owner. The right holders may claim payment of compensation from ■ Giving a reference regarding a work in an incorrect, persons infringing their rights up to three times the amount that incomplete or misleading way. could have been demanded if the unauthorised person used the ■ Reproducing, distributing, publishing or broadcasting a right that had been granted by contract, or up to three times the work, performance, phonogram or production by using current market value which shall be determined under the provi- the name of a well-known other person. sions of the Law. ■ Producing, putting up for sale, selling or possessing non-private use programs and technical equipment which 5.7 What are the typical costs of infringement aim to circumvent additional programs developed to proceedings and how long do they take? prevent illegal reproduction of a computer program.

Costs for professional fees may vary from EUR 10,000 to EUR 6.2 What is the threshold for criminal liability and what 50,000, or more, depending on the specific conditions and are the potential sanctions? complexity of each case. The court fees can be around EUR 1,000 to EUR 3,000 in Any infringing acts against copyrights are subject to criminal total, depending on the expert’s fee, which is determined by the liability with no exception and there are various sanctions, as courts. For compensation claims, the court’s official fees are listed below, depending on the nature of the offence: 5.6% of the total claimed amount. ■ Infringement of any economic rights on a copyrighted The typical timeframe for civil and criminal court actions is work may be punished by imprisonment from one to five around 12 to 24 months at the First Instance Court and with an years or a judicial fine. appeal before the District Courts a further nine to 15 months. ■ Making an adaptation without any reference to the original District Court judgments can be appealed before the Court of work may be punished by imprisonment from six months Appeal which usually concludes its examination in around 12 to to two years or a judicial fine. 18 months. ■ Renaming a work without referring to the actual owner may be punished by imprisonment from six months to two 5.8 Is there a right of appeal from a first instance years or a judicial fine. The upper limit can be increased judgment and, if so, what are the grounds on which an to five years in case the renamed work is put on sale. appeal may be brought? ■ Disclosing a work to the public without permission from the owner may be punished by imprisonment of up to six The first instance judgment can be appealed before the District months. Courts, and the decision of such courts may be subject to an ■ Giving a reference regarding a work in an incorrect, appeal before the Court of Appeal. incomplete or misleading way may be punished by impris- Appeals before the Court of Appeal can be grounded as: a) an onment of up to six months. error in implementation of the agreement between the parties; ■ Reproducing, distributing, publishing or broadcasting a b) an error in the examination of the evidence; c) an error of work, performance, phonogram or production by using law; or d) an error in or lack of implementation of procedural the name of a well-known other person may be punished requirements having an impact on the decision. by imprisonment from three months to one year or a judicial fine. ■ Producing, putting up for sale, selling or possessing 5.9 What is the period in which an action must be non-private use programs and technical equipment which commenced? aim to circumvent additional programs developed to prevent illegal reproduction of a computer program may be The time limit for legal infringement actions is two years as of punished by imprisonment from six months to two years. learning of the infringing act and the infringer. The maximum

72 Current Developments content provider and ask him to remove the infringing content within three days. In case of the content provider’s failure to fulfil the removal request, the copyright holders can apply to the 7.1 Have there been, or are there anticipated, Public Prosecutor for the issuance of an order which blocks the any significant legislative changes or case law content provider’s internet access within three days. developments? The draft New Code mentioned in the answer to question 7.1 above introduces a quicker process to combat copyright The current Law was first enacted in 1951 and has been amended infringement on digital platforms and allows the right holders to a few times (in 1995, 2001 and 2004). Now, it is on the verge of directly apply to the Public Prosecutors for an immediate block changes by means of a long-awaited New Code. of the access to the infringing content. The draft for the New Code which was prepared and made The draft of the New Code also entitles collecting societies open to public comment by the Ministry of Culture is now to challenge copyright infringement on peer-to-peer (P2P) plat- waiting before Parliament. forms via warnings. According to the draft, the collecting soci- The main purpose of the draft is to re-organise the collecting eties will mark the protected works and follow up on potential societies by introducing a compulsory common licensing unit for infringements. Once any infringement is determined, warn- all collecting societies in each industry separately. It also aims to ings can be sent to the related user by the Ministry of Culture bring an obligatory collective right management system which or authorised institutions. In case of the continuation of the will be managed by the collecting societies under specific condi- infringing use despite two warnings, the internet speed of the tions and will prevent some of the rights (regarding the financial related user can be slowed down for a duration of up to six rights arising from the re-sale of fine arts or communication of months by the Public Prosecutor. musical works to the public) to be enforced individually. The other major change in the draft is the introduction of the international exhaustion principle for computer software and 7.3 Have there been any decisions or changes of law regarding the role of copyright in relation to artificial databases. The proposed changes concerning enforcement of intelligence systems, including the use of copyright copyright in relation to digital content will be mentioned in our in those systems and/or any work generated by those response to question 7.2 below. systems?

7.2 Are there any particularly noteworthy issues around There have not yet been any decisions or changes to the law the application and enforcement of copyright in relation regarding the role of copyright in relation to artificial intelli- to digital content (for example, when a work is deemed gence systems. to be made available to the public online, hyperlinking, etc.)?

In current practice, the additional Article 4 of the Law regulates a specific process for copyright infringements on digital platforms and orders the copyright holders to first contact the

Özlem Futman is an IP litigator, Turkish trademark and patent attorney and European patent attorney who has more than 20 years’ experience practising IP law in Turkey. After being in-house counsel (where she handled the IP portfolio of one of the biggest companies in Turkey) and then working in a reputable IP firm, she founded OFO VENTURA in 2002. Özlem has broad experience in effectively protecting copyrights and managing IP portfolios for some of the most recognisable national and international companies operating in Turkey. She applies her considerable experience, tenacity and creativity to the handling of more complex matters such as copyright matters, data protection matters, domain name issues, negotiating complex licences, customs seizures, oppositions, dilution claims, and anti-counterfeiting matters, as well as non-use and nullification matters. Her clients span all industries, including entertainment, broadcasting, media, publishing, online games, certification companies, food and fashion. She has also handled IP matters for celebrities, designers and Art Institutions. As a leading expert in geographical indications (GIs), Özlem is a member of MARQUES’ and ECTA’s GI committee and has spoken and written on the topic extensively. She is an active member of the Regulatory Committee of International Association for the Protection of Intellectual Property (AIPPI). She has participated in many other committees and organisations over the last 20 years and is a member of ECTA, the Pharmaceutical Trademarks Group (PTMG), the German Association for the Protection of Intellectual Property (GRUR), the International Trademark Association (INTA), AIPPI, MARQUES, and the Turkish Patent and Trademark Agents Association. Ozlem has been ranked as a leading IP practitioner by WTR1000 and IAM1000 and as an IP Star by Managing IP.

Ofo Ventura Intellectual Property & Litigation Tel: +90 212 219 67 33 Levent Mah. Çilekli Cd. No: 2 34330 Email: [email protected] Besiktas, Istanbul URL: www.ofoventura.com.tr Turkey

Yasemin Aktas is an IP litigator, Turkish trademark and patent attorney who has more than 10 years’ experience practising IP law in Turkey. After completing her internship in one of the biggest national media groups having several newspapers and TV channels under its umbrella and then becoming experienced in a reputable IP firm, she joined OFO VENTURA as partner. She has advised on a wide range of IP issues and transactions regarding copyrights, trademarks, designs, domain names and tradenames for her foreign and multinational clients from various industries in the fields of online games, media, entertainment, broadcasting, software, electronics, automotives, pharmaceuticals and life sciences, fashion and cosmetics in implementing IP protection, litigation and enforcement strategies and portfolio management. Yasemin represents clients in complex copyright, design and trademark infringement and invalidation cases, design and trademark cancellation actions, interlocutory and precautionary injunctions, negotiations, licensing agreements, co-existence settlements as well as prosecution of trademark and design rights before the Turkish PTO. She has wide-ranging experience in building anti-counterfeiting strategies, including customs monitoring, raids, seizures and settlement negotiations with counterfeiters. She completed her Master’s with a thesis on “Data Exclusivity Protection and the Effects of Bolar Extension on This Protection” and has been involved in court actions on data exclusivity conflicts as well. Yasemin is a member of leading IP organisations worldwide, including INTA, AIPPI and MARQUES. She is a member of INTA anti-counterfeiting committee and has been selected to IP Experts Group to assist the International AntiCounterfeiting Coalition (IACC) IP Advisory Board. Yasemin has been ranked as a leading IP practitioner by WTR1000 and IAM1000.

Ofo Ventura Intellectual Property & Litigation Tel: +90 212 219 67 33 Levent Mah. Çilekli Cd. No: 2 34330 Email: [email protected] Besiktas, Istanbul URL: www.ofoventura.com.tr Turkey

Founded in 2002 as a full IP boutique, our firm finds efficient and tailor- cosmetics, food and beverage, pharma, fashion, luxury products, sporting made ways for clients to obtain and enforce their rights in order to goods, stationery, electronics, automobiles and telecommunication. maximise their potential both within Turkey and beyond our borders. Our Since 2002, we have earned the loyalty of a distinguished national and team is composed of partners, senior lawyers and senior trademark and international client base by connecting with them and managing their patent attorneys who competently provide legal support and assistance issues with tenacity in this challenging jurisdiction. Highly responsive, we on a full range of IP services including litigation, enforcement, prosecution, build and sustain long-term relationships with each client and treat their counselling, and advice on non-contentious matters. problems as our own. Our practice covers all aspects of IP rights including copyright, patents, www.ofoventura.com.tr utility models, trademarks, designs, geographical indications and internet domain names. Serving our clients also in media and entertainment law, information technology law and the GDPR where our team brings a broad perspective to conflicts. Our practice benefits from the firm’s experience and expertise in contentious matters, enabling it to broker settlements through thoughtful negotiations. With expertise handling more complex IP cases, our renowned and international client base spans many industries from entertainment, broadcasting, media, publishing, online games and certification companies to

Rebecca O’Kelly-Gillard

Bird & Bird LLP Phil Sherrell

12 Copyright Subsistence 1.5 Is there a system for registration of copyright and, if so, what is the effect of registration?

1.1 What are the requirements for copyright to subsist in a work? No, copyright subsists automatically.

For copyright to subsist: 1.6 What is the duration of copyright protection? Does ■ literary, dramatic, musical and artistic works must comply this vary depending on the type of work? with the criterion of originality, i.e. the work must originate from its author and must not be copied from another work. In general, the terms of protection in the UK are as follows: This does not mean that the work must be the expression ■ Copyright in a literary, dramatic, musical or artistic work of original or inventive thought; the originality required lasts for the life of the author plus 70 years from the end of relates to the expression of the thought and is not a subjec- the calendar year in which the author dies. tive test regarding the ‘artistic’ originality or novelty. The ■ Copyright in computer-generated literary, dramatic, musical standard of originality is low and depends on the author or artistic works lasts 50 years from the end of the calendar having created the work through his own skill, judgment year in which the work was made. and individual effort, and not having copied from other ■ Copyright in a film expires 70 years after the end of the works; calendar year in which the death occurs of the last to ■ the work must be fixed, i.e. recorded in writing or in some survive of the principal director, the author of the screen- other material form; play or dialogue, and the composer of any music specifi- ■ the work must meet UK qualification requirements, either cally created for the film. through the nationality of its author or through its place of ■ Copyright in a sound recording expires 50 years from the first publication; and end of the calendar year in which the recording is made; ■ the relevant term of copyright must not have expired. or if, during that period, the recording is published, 70 years from the end of the calendar year in which it was 1.2 Does your jurisdiction operate an open or closed first published; or if, during that period, the recording is list of works that can qualify for copyright protection? not published but is played or communicated in public, 70 years from the end of the calendar year in which it was first so made available. The Copyright, Designs and Patents Act 1988 sets out a closed ■ Copyright in a broadcast expires 50 years from the end of list of works that qualify for copyright protection. However, the calendar year in which the broadcast was made. recent CJEU case law, in particular in the Cofemel and Brompton ■ Copyright in the typographical arrangement of a published Bicycles decisions, suggests that a closed list may be incompatible edition expires at the end of the period of 25 years from with the requirements of the InfoSoc Directive (Dir 2001/29). the end of the calendar year in which the edition was first published. 1.3 In what works can copyright subsist?

1.7 Is there any overlap between copyright and other Copyright can subsist in: original literary, dramatic, musical or intellectual property rights such as design rights and artistic works; sound recordings, films or broadcasts; and typo- database rights? graphical arrangements of published works. Some works are also covered by other intellectual property 1.4 Are there any works which are excluded from rights in addition to copyright: e.g. 3-D and other designs can be copyright protection? protected by design rights; a database may be protected by the sui generis database right (this is intended to protect and reward Works which do not include the requisite level of originality as investment in the creation and arrangement of databases, and set out in question 1.1 are excluded from copyright protection. protects rightsholders from the extraction and/or re-utilisation of the contents of the database). A logo protected by copyright may also be protected as a trade mark.

1.8 Are there any restrictions on the protection 2.3 Where a work is created by an employee, how is for copyright works which are made by an industrial ownership of the copyright determined between the process? employee and the employer?

No. Historically in the UK, where articles embodying a copy- If a work is produced as part of an employee’s employment, right work were made with the copyright owner’s consent by the first owner will automatically be the company that employs means of an industrial process, and had been marketed, the the individual who created the work, unless the employee and work could be copied without infringing copyright in the work employer agree otherwise in writing. No further formali- 25 years after those articles were first marketed. A work is ties are required and the employee has no rights to subsequent regarded as made by an industrial process if it is one of more compensation. than 50 articles made as copies of a work (this can include minia- ture replicas of a work). In 2016, legislation repealed this provi- 2.4 Is there a concept of joint ownership and, if so, sion in the UK with effect from 28 July 2016 so that all artistic what rules apply to dealings with a jointly owned work? works, whether or not made by an industrial process, benefit from copyright protection for the life of the author plus 70 years. Following the end of the transitional period on 28 January 2017, Yes. A work will be of joint authorship if it is produced by the any work created in reliance of the old section, and which does collaboration of two or more authors in which the contribution not fall within an exception to copyright law, must be destroyed of each author is not distinct from that of the other author or or authorised by the rightsholder. authors. If the contribution is distinct, then separate copyrights will subsist in each author’s respective parts of the work. 22 Ownership A joint author will have individual rights that they can assign independently of the other author or authors. However, a joint owner cannot grant a licence which is binding on the other 2.1 Who is the first owner of copyright in each of the co-owners, nor can a joint owner grant an exclusive licence. works protected (other than where questions 2.2 or 2.3 apply)? 32 Exploitation The author, i.e. the person who creates the work, is usually the 3.1 Are there any formalities which apply to the first owner of copyright in that work. The presumption is that transfer/assignment of ownership? the author will be: ■ the person who creates a work for literary, dramatic, musical or artistic works; Copyright is transmissible by assignment, by testamentary dispo- ■ the producer of a sound recording; sition or by operation of law, as personal or movable property. ■ the producer and the principal director of a film; The only formal requirements for an assignment of copyright ■ the publisher of a published edition; are that it is in writing and signed by or on behalf of the assignor. ■ the person making a broadcast or effecting a retransmis- The terms of the assignment (and how they are expressed) are sion of a broadcast; entirely at the discretion of the contracting parties. ■ the publisher of a typographical arrangement; and An assignment or other transfer of copyright may be partial, ■ the person making the arrangements necessary for the crea- that is, limited so as to apply to one or more, but not all, of the tion of the work for computer-generated works (including acts the copyright owner has the exclusive right to do; and can certain works created by artificial intelligence systems). be in relation to part or the whole of the period for which the However, this may be amended by agreement. For example, copyright is to subsist. it is possible for someone who would ordinarily be deemed to be the copyright owner to assign the benefit of future copyright, 3.2 Are there any formalities required for a copyright even prior to that work having been created. licence?

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

3.4 Which types of copyright work have collective In addition, a person can make an application to the Copyright licensing bodies (please name the relevant bodies)? Tribunal where an operator of a scheme has unreasonably refused to grant a licence under that scheme. In addition to copyright claims, the Collective Management There are numerous collecting societies in existence in the UK, of Copyright (EU Directive) Regulations 2016 require copyright including: licensing bodies to make available alternative dispute resolution ■ the Performing Rights Society (PRS), which administers procedures in relation to any breach of the Regulations, except the public performance rights (including in relation to in relation to tariffs. broadcasts, streaming services, and non-theatrical performances) of songwriters, composers and music publishers in musical compositions and lyrics; 42 Owners’ Rights ■ the Mechanical-Copyright Protection Society (MCPS), which administers the reproduction rights (e.g. in rela- 4.1 What acts involving a copyright work are capable of tion to CDs, digital downloads and musical toys) of song- being restricted by the rights holder? writers, composers and music publishers (PRS and MCPS operate jointly as PRS for Music); Copyright holders have the exclusive right to do or authorise the ■ Phonographic Performance Ltd (PPL), which licenses following: recorded music when it is played in public or broadcast on ■ copying the work; the radio or TV in the UK and then distributes the fees to ■ issuing copies of the work to the public; the performers and recording rightsholders it represents; ■ renting or lending the work to the public; ■ PPL PRS (a joint venture between PPL and PRS for Music), ■ performing, showing or playing the work in public; which offers a single joint music licence, on behalf of them ■ communicating the work to the public; and both, for playing and performing music in public; ■ adapting the work. ■ ICE (a joint venture between PRS for Music, Swedish The copyright owner can restrict these acts in relation to the collecting society STIM and German collecting society whole or any substantial part of the work. GEMA), which is an integrated multi-territory music The courts have shown that they are willing to find inter- copyright licensing and processing hub; mediary service providers (ISPs) liable for primary copyright ■ NLA Media Access (formerly the Newspaper Licensing infringement where they have infringed the exclusive right Agency), which administers the reproduction rights of of copyright owners to authorise any of the above acts, most newspaper and some magazine publishers in articles; notably where ISPs have authorised the copying of works or ■ the Copyright Licensing Agency (CLA), which adminis- making them available to the public. ters the reproduction rights of authors and publishers in The courts have also shown a willingness to use common literary and artistic works; law principles to protect the rights of copyright owners. For ■ the Authors’ Licensing and Collecting Society (ALCS), example: which administers various rights of authors in literary and ■ parties have been found to infringe copyright where they dramatic works; and act in a common design with each other to induce others ■ the Design and Artists Copyright Society (DACS) and the to do any of the above infringing acts; and Artists’ Collecting Society (ACS), which administer rights ■ case law has also found that where website operators or in artistic works (including resale rights). service providers provide the key means by which copyright can be infringed, and they know or intend for their 3.5 Where there are collective licensing bodies, how service to be used for that purpose, they can be held to are they regulated? be joint tortfeasors with those who actually perform the infringing act. Collecting societies are regulated by the Collective Management of Copyright (EU Directive) Regulations 2016. They are also 4.2 Are there any ancillary rights related to copyright, subject to the supervision of the Copyright Tribunal in relation such as moral rights, and, if so, what do they protect, to licensing terms. and can they be waived or assigned?

3.6 On what grounds can licence terms offered by a There are a number of ancillary rights associated with the crea- collective licensing body be challenged? tion of copyright works, the most common of which are: ■ Moral rights: the author or director of a copyright work usually has moral rights in relation to the work. These A reference in respect of the terms of a proposed licensing are the rights to: i) be identified as the work’s author or scheme may be made to the Copyright Tribunal by an organi- director; ii) object to derogatory treatment of the work; sation claiming to be representative of persons who claim that iii) privacy in respect of certain photographs and films; they require licences under the proposed scheme. A licensee and iv) not have the work’s authorship wrongly attributed. may also refer to the Copyright Tribunal the terms on which These rights may be waived by the author or director but a licensing body proposes to grant a licence to it. A reference not assigned. The first three rights have the same duration to the Copyright Tribunal in respect of the terms of an existing as copyright, but the right to object to false attribution lasts licence scheme may be brought by a person claiming that he for the author’s or director’s lifetime plus 20 years. requires a licence under it, or an organisation claiming to be ■ Performers’ rights: performers have various property and representative of such persons. non-property rights in relation to the exploitation of their The primary grounds of challenge which the Copyright performances, in addition to a right to equitable remuner- Tribunal can consider are that the terms are unreasonable or ation in certain cases. discriminate unfairly between licensees.

■ Publication right: the publication right grants rights equiv- A non-exclusive licensee can also bring a claim for infringe- alent to copyright to a person who publishes for the first ment, although only in limited circumstances; specifically, if the time a literary, dramatic, musical or artistic work, or a film infringement is directly connected to an act which the licensee in which copyright has expired. had been licensed to carry out under the licence, and the licence is in writing, signed by the copyright owner, and expressly grants the non-exclusive licensee a right of action. 4.3 Are there circumstances in which a copyright owner is unable to restrain subsequent dealings in works which have been put on the market with his consent? 5.3 Can an action be brought against ‘secondary’ infringers as well as primary infringers and, if so, The doctrine of exhaustion of rights provides that once copies on what basis can someone be liable for secondary infringement? of a copyright work are issued to the public in one EEA Member State with the owner’s consent, the owner cannot object to their circulation anywhere else within the EEA. The courts have held Yes, a person will be liable for secondary infringement of copy- that the principle does not apply to subsequent/back-up copies right if they do or authorise any of the following: of digital works. In those cases, it appears that the copyright ■ import an infringing copy; owner’s rights would only be exhausted in relation to the orig- ■ possess or deal with an infringing copy; inal digital version placed on the market. It has yet to be deter- ■ provide means for making infringing copies; mined how the principle of exhaustion will apply in the UK after ■ permit the use of premises for an infringing performance; the UK leaves the EU. and ■ provide apparatus for an infringing performance. 52 Copyright Enforcement To be liable for secondary acts of infringement, the secondary infringer must have some actual or imputed knowledge of the primary infringement of the copyright work. 5.1 Are there any statutory enforcement agencies and, if so, are they used by rights holders as an alternative to civil actions? 5.4 Are there any general or specific exceptions which can be relied upon as a defence to a claim of HMRC is the UK customs authority responsible for national infringement? policy governing IP rights enforcement at the UK external border. In certain circumstances, HMRC (and Border Force, A number of provisions of the CDPA permit various activities the law enforcement command within the Home Office respon- which would otherwise be infringements of copyright in literary, sible for carrying out the frontier interventions that implement dramatic or musical works. this policy) are empowered to detain goods that may infringe The most common exceptions relate to: intellectual property rights such as copyright. There are two ■ temporary copies technically required to enable a lawful regimes in existence, one governed by European Regulations use; and the other by purely domestic legislation. The two regimes, ■ fair dealing, including the use of copyright works for the which are mutually exclusive, are as follows: purpose of: ■ Regulation (EU) No 608/2013 (in force in the UK since ■ news reporting; 1 January 2014), which regulates pirated goods infringing ■ parody, caricature or pastiche; and copyright; and ■ quotation; ■ Section 111 of CDPA 1988, which permits the owner of ■ incidental inclusion; copyright in certain types of works to lodge a notice with ■ educational use; HMRC stating their ownership of copyright in a work and ■ use in libraries; requesting infringing copies to be treated as prohibited ■ archives and public administration; goods. ■ works permanently situated in public places; Trading Standards officers in the UK are also under a stat- ■ the making of digital copies by various institutions; utory duty to enforce copyright and have the powers, among ■ text and data mining; others, to make test purchases of infringing goods, to enter ■ making copies accessible to disabled people; premises and to inspect and seize goods and documents which ■ further exceptions for the purpose of research or private infringe. study; The City of London Police and the UK Intellectual Property ■ public interest; and Office have also set up the Police Intellectual Property Crime ■ copying for the visually impaired. Unit (PIPCU) to tackle serious and organised intellectual prop- There is currently no private copying exception under UK erty crime (counterfeit and piracy) affecting physical and digital law. goods (with the exception of pharmaceutical goods). PIPCU’s focus is on offences committed online. 5.5 Are interim or permanent injunctions available?

5.2 Other than the copyright owner, can anyone else Yes, both interim and permanent injunctions are available, as bring a claim for infringement of the copyright in a work? are “site-blocking injunctions” (orders against ISPs to prevent access to websites held to infringe copyright). Yes, an exclusive licensee has the same rights and remedies in respect of matters that occur after the exclusive licence was granted, as if the licence had been an assignment. This statutory position can be modified by contract.

5.6 On what basis are damages or an account of profits ■ importing an infringing article into the UK other than for calculated? private and domestic use; ■ possessing an infringing article in the course of business with a view to committing any act infringing copyright; Damages are calculated so as to put the claimant in the posi- ■ selling, letting for hire, offering/exposing for sale or hire, tion it would have been in if the infringing act had not occurred. exhibiting in public, or distributing an infringing article in This is often based on what would have been a reasonable the course of business; licence fee had the copyright owner entered into an arm’s length ■ distributing an infringing article not in the course of busi- licence with the party found to infringe copyright. An account ness but to such an extent as to prejudice the copyright of profits is calculated so as to make the defendant forfeit to the owner; for example, a large number of infringing copies copyright owner the profits made as a result of the infringing are given away for free, therefore affecting the copyright act. A successful claimant must elect one of the two remedies. owner’s revenue; In the event that the infringement has been particularly ■ making/possessing an article specifically designed for flagrant, the copyright owner will be able to claim punitive making copies of a copyright work; damages in addition to the basic amount. ■ communicating a work to the public intending to make a gain for themselves or another person, or knowing or 5.7 What are the typical costs of infringement having reason to believe that communicating the work to proceedings and how long do they take? the public will cause loss to the owner of the copyright, or will expose the owner of the copyright to a risk of loss; The traditional forum for IP litigation at first instance in the UK ■ causing a copyright work to be performed, played or shown is the High Court. Costs can vary from £250,000–£1 million+ in public (otherwise than by reception of a communication per side (depending on the complexity of the claims at issue) to the public) so as to infringe copyright; and to take an action to trial, and the winner can usually expect ■ circumventing technological measures, removing or to recover about two thirds of its actual costs from the loser. altering electronic rights management information, or The typical time for a case to be heard at the High Court is dealing in devices meant for that purpose. about 12–15 months, and with an appeal within a further 12–18 months. 6.2 What is the threshold for criminal liability and what Infringement proceedings can also be brought in the are the potential sanctions? Intellectual Property and Enterprise Court (IPEC) in which court procedures are simplified to make the cost of actions Criminal liability usually requires knowledge or reasonable significantly lower: typical costs are of the order of £75,000– belief about the infringing nature of the works and/or activity, £350,000 per side, although costs recovery by the winner is in addition to a commercial purpose. limited to a maximum of £50,000. The typical time for a case to Criminal remedies apply in parallel with civil remedies, and be heard is 8–12 months in the IPEC. offences carry varying levels of possible punishment including fines and/or imprisonment with, in certain cases, a maximum 5.8 Is there a right of appeal from a first instance term of imprisonment of 10 years. Criminal sanctions for online judgment and, if so, what are the grounds on which an copyright infringement have recently been brought in line with appeal may be brought? those for physical infringement (i.e. to increase the sanction from a maximum two-year imprisonment to a maximum of 10 Yes, the appeal court will allow an appeal where the decision of years’ imprisonment). the lower court was one of the below: ■ Wrong, which is presumed to mean: an error of law; an 72 Current Developments error of fact; or an error in the exercise of the court’s discretion. 7.1 Have there been, or are there anticipated, ■ Unjust, because of a serious procedural or other irregu- any significant legislative changes or case law larity in the proceedings in the lower court. developments?

5.9 What is the period in which an action must be The European Copyright Directive was approved in April 2019, commenced? with Member States having two years in which to implement its provisions. However, in February 2020 the UK Government The limitation period for bringing a copyright infringement stated that it would not be implementing the Directive. As a claim in the UK is six years from the date when the cause of result, there is likely to be a divergence between UK and EU law action arose. post July 2021 (the deadline for implementation of the Directive by Member States). 62 Criminal Offences In addition, the recent CJEU decisions in Cofemel and Brompton Bicycles decisions raise the question as to whether the UK’s closed list of copyright works is compatible with EU law. This issue is 6.1 Are there any criminal offences relating to addressed in more detail in the Expert Chapter at the start of copyright infringement? this guide.

There are various criminal offences in respect of copyright infringement, including: ■ making an infringing article for sale or hire;

7.2 Are there any particularly noteworthy issues around 7.3 Have there been any decisions or changes of law the application and enforcement of copyright in relation regarding the role of copyright in relation to artificial to digital content (for example, when a work is deemed intelligence systems, including the use of copyright to be made available to the public online, hyperlinking, in those systems and/or any work generated by those etc.)? systems?

The High Court decision of Warner Music and Sony Music v TuneIn There have not been any legislative or case law developments in [2019] EWHC 2923 (Ch) held that services which are neither this area to date in the UK. conventional search engines nor conventional websites, but are specialist search engines which link to third party content, may be liable for making that third party content available to the public where the content is re-targeted to users who were not taken into account by the copyright owner, even if the first act of communication was licensed. This case is under appeal, but if the first instance decision is upheld, it could have far reaching consequences for any service that provides specialist search functions.

Rebecca O’Kelly-Gillard is a partner in Bird & Bird’s Intellectual Property Group in London and her particular focus is helping clients solve trade mark and copyright issues that have a digital or online focus. A major part of Rebecca’s practice is working with companies to set up their global brand enforcement projects: using technology to stream- line processes for clients and make their anti-counterfeit programmes as cost effective as possible. Her digital focus relates to all IP issues arising online, including highly complex issues regarding copyright infringement, hyperlinking and the communication of works to the public. Rebecca works with a range of service platforms, content owners and content creators helping them navigate their business against a changing legislative backdrop, enabling them to maximise their digital and data assets for commercial success.

Bird & Bird LLP Tel: +44 20 7415 6000 12 New Fetter Lane Email: [email protected] London, EC4A 1JP URL: www.twobirds.com United Kingdom

Phil Sherrell heads Bird & Bird’s international Media, Entertainment & Sport sector and focuses on litigating disputes relating to the media industry, content and brands. Phil’s team offers the full range of contentious IP and media law advice, handling complex trade mark and copyright infringement litigation, disputes relating to the dissemination of information (confidential, private, defamatory, etc.), as well as complaints to UK media regulators including the ASA, IPSO and Ofcom. Phil sits on the Copyright and Technology Working Group of the British Copyright Council and is the editor of ICLG – Copyright. He appears regularly in the media discussing all aspects of media and IP law and led the team which created Bird & Bird’s own content platform, MediaWrites.

Bird & Bird LLP Tel: +44 20 7415 6000 12 New Fetter Lane Email: [email protected] London, EC4A 1JP URL: www.twobirds.com United Kingdom

USA USA

David Donahue

Fross Zelnick Lehrman & Zissu, P.C. Jason D. Jones

12 Copyright Subsistence 1.4 Are there any works which are excluded from copyright protection?

1.1 What are the requirements for copyright to subsist in a work? Copyright in the U.S. does not extend copyright protection for a useful article except to the extent that the design of the useful article incorporates pictorial, graphic, or sculptural features that The fundamental criteria of copyright protection are (i) origi- can be identified separately from and are capable of existing inde- nality, and (ii) fixation in a tangible medium of expression. pendently of the utilitarian aspects of the article. This makes it To meet the originality requirement, the author must show difficult to obtain copyright protection in the U.S. for clothing, independent creation and some modicum of creativity. To meet furniture, watches, and other useful articles. Moreover, in the the fixation requirement, the author must show that the work is U.S., typeface is considered a useful article that is not eligible for embodied in a copy or a recording or in any manner that is suffi- copyright protection. ciently permanent or stable to permit it to be perceived, repro- Copyright protection does not exist in the U.S. for any idea, duced, or otherwise communicated for a period of more than procedure, process, system, method of operation, concept, prin- transitory duration. ciple, or discovery; rather, copyright protection only extends to the manner in which ideas are expressed. 1.2 Does your jurisdiction operate an open or closed There is no copyright protection in the U.S. for unoriginal list of works that can qualify for copyright protection? works under a “sweat of the brow” theory. Moreover, there is no separate statutory protection for databases. However, a data- A strict statutory interpretation of the Copyright Act arguably base may be protected under copyright as a compilation if there would hold that an open list of works can qualify for copyright is original authorship in the selection, coordination or arrange- protection. See 17 U.S.C. § 102(a) (“Works of authorship include ment of materials in the database. the following categories….”) (emphasis added), and 17 U.S.C. § 101 (“The terms ‘including’ and ‘such as’ are illustrative and not 1.5 Is there a system for registration of copyright and, limitative”). However, the Copyright Office has taken the view if so, what is the effect of registration? that works that do not fall within one or more of the listed categories are not copyrightable. See Registration of Claims to Copyright, Copyright registration is not mandatory for the purposes of 77 Fed. Reg. 37,605, 37,607 (June 22, 2012) (“Congress did obtaining copyright protection in the U.S., but there are signifi- not delegate authority to the courts to create new categories of cant benefits to obtaining such a registration. authorship. Congress reserved this option for itself”). ■ For works of U.S. origin, a copyright registration is required before the copyright owner can commence a 1.3 In what works can copyright subsist? copyright infringement litigation in a U.S. court. The registration-before-commencement of litigation require- The Copyright Act provides protection for literary, artistic, ment does not apply to works of foreign origin. musical, dramatic, and choreographic works, pantomimes, ■ For all works, including works of foreign origin, the copy- motion pictures and other audio-visual works, and architectural right owner must obtain a copyright registration before works fixed on or after December 1, 1990. While software is an infringement commences to be eligible for recovery not listed under a separate category, it is protected as a literary of statutory damages and attorneys’ fees in any action work. The Copyright Act also has special provisions for the arising from the infringement. As an exception, if a newly protection of semiconductor chip products and designs relating published work is infringed within three months of first to vessel holds and decks. Prior to the passage of the Music publication but before registration, the copyright owner Modernization Act (MMA) in October 2018, sound recordings will be eligible to recover statutory damages and attorneys’ fixed before February 15, 1972 were not protected under federal fees as long as the registration is obtained within three copyright law. The MMA partially closed this “pre-1972” loop- months of first publication and no more than one month hole by making pre-1972 sound recordings eligible for copyright after the copyright owner learned of the infringement. infringement subject to certain limitations.

1.6 What is the duration of copyright protection? Does 22 Ownership this vary depending on the type of work?

2.1 Who is the first owner of copyright in each of the The duration of copyright protection in the United States works protected (other than where questions 2.2 or 2.3 depends on the date on which copyright in the work was orig- apply)? inally secured and on the type of author of the work at issue. For works that were either unpublished and unregistered as The general rule is that the creator of a work is considered both of January 1, 1978, or created on or after January 1, 1978, the the author and original copyright owner of the work. term of protection varies depending on the nature of authorship, as follows: ■ Work created by a single author not as a work made for 2.2 Where a work is commissioned, how is ownership of the copyright determined between the author and the hire: life of the author plus 70 years. commissioner? ■ Work created by joint authors: life of the last surviving author plus 70 years. ■ Anonymous works, pseudonymous works, and works The ownership of a commissioned work created by an inde- made for hire: 95 years from the year of first publication pendent contractor depends on when the work was created. or 120 years from the year of creation, whichever expires For such works created before January 1, 1978, the work first. would be considered a “work made for hire” – such that the commissioning party would own the copyright and be consid- ■ Works created but not published or registered with the ered its author – if the work was created at the “instance and Copyright Office before January 1, 1978: this is the same expense” of the commissioning party. as that of works created on or after January 1, 1978, except For commissioned works created by independent contractors that if the work was first published between January 1, on or after January 1, 1978, a work can be considered a “work 1978 and December 31, 2002, the term of copyright will made for hire” such that the commissioning party would be the not expire before December 31, 2047. author and original copyright owner only if (i) the parties agree For works first published or registered with the U.S. in writing that the work “shall be considered a work made for Copyright Office before January 1, 1978, the Copyright Act of hire”, and (ii) the work is specially ordered or commissioned for 1909 provided for an initial term of copyright of 28 years and a use as one of the following: second renewal term of copyright of 28 years, the latter of which ■ a contribution to a collective work; has since been extended to 67 years. As such, for works first ■ part of a motion picture or other audio-visual work; published with notice or registered before January 1, 1978, the ■ a translation; maximum term of protection is 95 years. This means that many ■ a supplementary work; works first published in the late 1920s remain protected under ■ a compilation; U.S. copyright, regardless of the date of the author’s death. ■ instructional text; ■ a test; 1.7 Is there any overlap between copyright and other ■ answer material for a test; or intellectual property rights such as design rights and ■ an atlas. database rights? 2.3 Where a work is created by an employee, how is Overlapping protection under copyright law and design patent ownership of the copyright determined between the law exists where a novel ornamental feature of an article of employee and the employer? manufacture can be identified separately from and is capable of existing independently of its utilitarian aspects. For example, it Works created by employees within the scope of their employ- would be possible to obtain design patent protection and copy- ment are considered works made for hire, the result being that right protection for a novel ornamental stitching design applied the employer is the author and copyright owner of the work. to an article of clothing. Overlapping protection under trademark and copyright law 2.4 Is there a concept of joint ownership and, if so, also exists, particularly with respect to logos and product pack- what rules apply to dealings with a jointly owned work? aging, as well as characters and other sufficiently creative elements of entertainment properties that also serve a source-identifying A work prepared by two or more authors with the intention purpose (e.g., illustrations of the SUPERMAN character). that their contributions be merged into inseparable or interde- pendent parts of a unitary whole will be considered a work of 1.8 Are there any restrictions on the protection joint authorship. for copyright works which are made by an industrial Absent a written agreement to the contrary, each joint author process? will be considered a co-owner of the copyright in the work with an equal undivided interest in the whole regardless of the relative There are no express restrictions on copyright protection for contributions of each author to the work. works that are made by an industrial process. However, some Each joint author/co-owner may grant licences to others without of the limitations discussed above, including the limitations on the other joint authors’ consent, but any such licence can only be a copyright protection for useful articles, would preclude copy- non-exclusive licence unless all joint authors join together to grant right protection for many works made by an industrial process. an exclusive licence or the joint authors agree beforehand that one Moreover, for copyright to exist in a work, there must be a of them has the right to grant exclusive licences. human author; works created by an industrial process without A joint author who grants a licence without the participation human guidance would not be copyrightable. or consent of the other joint authors must account to the other joint authors for their share of the profits of the licence.

32 Exploitation ■ secondary transmissions of copyrighted works by cable providers; ■ public performances of non-dramatic musical works and 3.1 Are there any formalities which apply to the published pictorial, graphic, and sculptural works in the transfer/assignment of ownership? course of transmissions made by public broadcasting entities; The Copyright Act defines a “transfer of copyright ownership” ■ satellite dish transmissions; and to include assignments, mortgages and exclusive licences but not ■ jukebox performances of non-dramatic musical non-exclusive licences. compositions. A copyright transfer is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or 3.5 Where there are collective licensing bodies, how such owner’s duly authorised agent. Any purported assign- are they regulated? ment or exclusive licence that is not reflected in writing signed by the copyright owner or the copyright owner’s agent will not Most collective licensing agencies are self-regulated. ASCAP be recognised as a copyright transfer but may, under certain and BMI, however, entered into consent decrees with the U.S. circumstances, be treated as a non-exclusive licence. Department of Justice in the 1940s arising out of antitrust alle- A copyright transfer may be recorded with the Copyright Office. gations. Since that time, ASCAP and BMI have been subject to While such recordation is not mandatory, it is advisable, since the oversight by a United States District Court. failure to record a transfer can result in a loss of rights where a In the case of compulsory licences, the compulsory licence second purchaser obtains a transfer of copyright in the same work rates are set by a panel of Copyright Royalty Judges (“CRJs”). without notice of the prior transfer, and records the assignment with the Copyright Office before the first assignment is recorded. 3.6 On what grounds can licence terms offered by a collective licensing body be challenged? 3.2 Are there any formalities required for a copyright licence? With respect to the majority of the voluntary collective licensing bodies addressed in question 3.4 above, licence rates are subject An exclusive licence must be reflected in writing signed by the to negotiation by the parties. copyright owner or the copyright owner’s duly authorised agent. Challenges to a licence rate set by ASCAP and BMI may be Non-exclusive licences need not be in writing. brought in the United States District Court for the Southern District of New York on the basis that the rate is not reasonable, 3.3 Are there any laws which limit the licence terms in that it does not reflect the fair market value of the licensed parties may agree to (other than as addressed in right. questions 3.4 to 3.6)? Challenges to compulsory licence rate determinations by CRJs may be brought in the United States Court of Appeals for An author or the author’s heirs may terminate a grant of copy- the District of Columbia Circuit on the ground that the CRJs’ right by the author for a five-year period beginning at the end determination is arbitrary, capricious, an abuse of discretion, or of 35 years from the date that the author executed the grant, otherwise not in accordance with law. “notwithstanding any agreement to the contrary”. As such, the author and grantee cannot agree that the work will not be 42 Owners’ Rights subject to termination or that the author will waive or otherwise forego his or her termination rights. 4.1 What acts involving a copyright work are capable of being restricted by the rights holder? 3.4 Which types of copyright work have collective licensing bodies (please name the relevant bodies)? The copyright owner enjoys the following exclusive rights to: ■ reproduce the copyrighted work in copies; Collective licensing in the United States is available for a variety ■ prepare derivative works based on the copyrighted work; of works. For example: ■ distribute copies of the work to the public; ■ Performance rights in musical compositions, through ■ perform the work publicly for literary, musical, dramatic, ASCAP, BMI and SESAC. and choreographic works, pantomimes, and motion ■ Mechanical rights in musical compositions, through the pictures and other audio-visual works; Harry Fox Agency. ■ display the copyrighted work publicly for literary, musical, ■ Certain rights in motion pictures and other audio-visual dramatic, and choreographic works, pantomimes, and works, through the Motion Picture Licensing Corporation pictorial, graphic, or sculptural works; and other agencies. ■ perform the copyrighted work publicly by means of digital ■ Certain rights in text-based works, through the Copyright audio transmission, for sound recordings; and Clearance Center and other agencies. ■ control the importation into the U.S. of copies of the work. There is also mandatory or compulsory licensing under the Copyright Act in a variety of areas, notably including: ■ licences for making and distributing recordings of non-dra- 4.2 Are there any ancillary rights related to copyright, matic musical compositions (i.e., “mechanical licences”); such as moral rights, and, if so, what do they protect, ■ blanket licensing system for digital music providers to and can they be waived or assigned? make and distribute digital phonorecord deliveries (e.g., permanent downloads, limited downloads, or interactive The Copyright Act prohibits any person from knowingly streams); removing or falsifying “copyright management information”

from a work with the intention of inducing, enabling, facilitating The Copyright Act also permits “beneficial owners” of exclu- or concealing infringement. Copyright management informa- sive rights to sue for infringement. A beneficial owner is one tion includes, among other things, the copyright notice, the who formerly owned exclusive rights in the work and parted with copyright owner’s name, the work’s title, and any other informa- such rights but still owns a continuing interest in the work. The tion used to identify the work or owner of the copyrighted work. most common example of a beneficial owner is an author who The Visual Artists Rights Act (“VARA”) provides the transfers his or her rights in the work to another in exchange for following additional rights in the nature of moral rights to a continuing royalty. authors of “works of visual art”: ■ to claim authorship of the work; 5.3 Can an action be brought against ‘secondary’ ■ to prevent the use of the author’s name on any work that infringers as well as primary infringers and, if so, has been distorted, mutilated, or modified in a way that on what basis can someone be liable for secondary would be prejudicial to the author’s honour or reputation; infringement? ■ the right to prevent distortion, mutilation, or modification of the work that would prejudice the author’s honour or A defendant can be secondarily liable as a contributory infringer reputation; and if it (i) has knowledge of the direct infringer’s infringing ■ if the work is of “recognized stature”, to prohibit the inten- activity, and (ii) induces, causes or materially contributes to such tional or grossly negligent destruction of the work. infringing conduct. Under VARA, “works of visual art” include paintings, draw- A defendant can be vicariously liable for another infringer’s ings, prints, sculptures, and still photograph pictures produced direct infringement if it (i) profits from the infringement, and for exhibition only and existing in single copies or in limited (ii) declines to exercise a right to stop or limit the infringement. editions of 200 or fewer copies signed and numbered by the artist. But VARA only applies to works created on or after December 1, 1990, or earlier-created works that remained 5.4 Are there any general or specific exceptions under the original author’s ownership as of December 1, 1990. which can be relied upon as a defence to a claim of Moreover, the rights only subsist for the life of the author, and infringement? do not extend to the author’s heirs. The Copyright Act does not provide for droit de suite. The State There are many provisions of the Copyright Act that expressly of California enacted a statute in 1977 providing for such rights, exempt certain activities from infringement. These exemp- but the U.S. Court of Appeals for the Ninth Circuit (which over- tions are too numerous to mention, but some notable examples sees federal courts in California) held that the law is pre-empted include: by the Copyright Act to the extent it seeks to regulate sales occur- ■ rights of libraries and archives to reproduce copyrighted ring after January 1, 1978. Accordingly, the California law now works; only provides for droit de suite for sales of works for only a one-year ■ rights of non-profit educational institutions, religious period, namely from January 1, 1977 to December 31, 1977. While organisations, governmental bodies and certain commer- there have been proposals in Congress for a federal resale royalty cial establishments (including retail stores and food service right for authors, such proposals have not resulted in legislation. or drinking establishments, subject to size and technical limitations) to perform or display copyrighted works; ■ rights of the management of a hotel, apartment house, or 4.3 Are there circumstances in which a copyright owner is unable to restrain subsequent dealings in works similar establishment to make secondary transmissions of which have been put on the market with his consent? performances or displays of a work; and ■ rights to perform copyrighted works and to reproduce for distribution copyrighted works in specialised formats Under the “first sale doctrine”, as codified in the Copyright Act, exclusively for use by the blind or other persons with the owner of a “lawfully made” copy of a copyrighted work may disabilities. sell or otherwise dispose of that copy without the authority of In addition, the Copyright Act expressly provides for a “fair the copyright owner. use” defence to copyright infringement for purposes such as criticism, comment, news reporting, teaching, scholarship, or 52 Copyright Enforcement research. In determining whether a given use is a fair use, courts consider and weigh the following non-exclusive list of factors: 5.1 Are there any statutory enforcement agencies and, (1) the purpose and character of the use, including whether if so, are they used by rights holders as an alternative to the use is of a commercial nature or is for non-profit civil actions? educational purposes; (2) the nature of the copyrighted work; Copyright owners can record their copyright registrations with (3) the amount and substantiality of the portion used in rela- the U.S. Customs and Border Protection Department to seek tion to the copyrighted work as a whole; and assistance in preventing the unlawful importation of infringing (4) the effect of the use upon the potential market for or value works into the U.S. of the copyrighted work.

5.2 Other than the copyright owner, can anyone else 5.5 Are interim or permanent injunctions available? bring a claim for infringement of the copyright in a work? The Copyright Act permits a court to grant temporary and final The owner of any exclusive right under copyright may sue for injunctions on such terms as it may deem reasonable to prevent infringement. This includes exclusive licensees, including those or restrain infringement of a copyright. who own some but not all of the rights conferred to authors To obtain a preliminary injunction, a copyright infringement under the Copyright Act. plaintiff must establish that:

(1) it is likely to succeed on the merits; complex cases, can cost more than US$1 million (and beyond) (2) it will suffer irreparable harm in the absence of prelimi- to bring to completion. nary relief; The length of time that it can take to litigate a copyright (3) the balance of equities tips in its favour; and infringement case also varies widely based on the particular (4) an injunction is in the public interest. district court in which the case is brought, the scheduling require- To obtain a permanent injunction, a copyright infringement ments of the judge assigned to the case, and the complexity of plaintiff must demonstrate that: the case. Some cases are resolved within six to 12 months, while (1) it has suffered an irreparable injury; others take much longer to resolve. Motions for preliminary (2) remedies available at law are inadequate to compensate for injunctions are usually decided within one month of filing. that injury; (3) the balance of hardships tips in the plaintiff’s favour; and 5.8 Is there a right of appeal from a first instance (4) the public interest would not be disserved by a permanent judgment and, if so, what are the grounds on which an injunction. appeal may be brought? The Copyright Act also permits a court to order the impounding and disposition of infringing articles. Appeals from final judgments of district courts in copyright infringement cases may be brought to the United States Court 5.6 On what basis are damages or an account of profits of Appeals. The Court of Appeals reviews the district court’s calculated? factual determinations for clear errors and the district court’s legal determinations de novo. The Court of Appeals reviews the scope of any injunction issued by the district court as well as the A successful plaintiff who registered the copyright in the amount of any actual damages, infringer’s profits, or statutory infringed work before the infringement commenced may elect damages awarded by the district court for abuse of discretion. to recover either (i) its actual damages and the defendant’s profits, or (ii) statutory damages. The election may be made any time before a final judgment is entered. 5.9 What is the period in which an action must be A copyright owner who did not obtain a registration before commenced? the infringement commenced will only be entitled to recover its actual damages and the defendant’s profits. Claims under the Copyright Act must be brought within three With respect to actual damages, there are two basic measures: years after the claim accrues. Under the separate-accrual rule, (i) the copyright owner’s lost profits based on diverted sales; each time an infringing work is reproduced or distributed, the or infringer commits a new wrong, which gives rise to a new statute (ii) the fair market value of the infringing use. of limitations. When a defendant commits successive violations, In addition to actual damages, the plaintiff may recover the the statute of limitations runs separately from each violation. defendant’s profits attributable to the infringement that have not been taken into account in computing the plaintiff’s actual 62 Criminal Offences damages. The Copyright Act provides for a two-step process to determine the infringer’s profits: 6.1 Are there any criminal offences relating to ■ first, the plaintiff must present proof of the infringer’s copyright infringement? gross revenue; and ■ second, the infringer must prove deductible expenses and The Copyright Act provides for criminal liability in the following the elements of profit attributable to factors other than the circumstances: copyrighted work. ■ wilful infringement for purposes of commercial advantage With respect to statutory damages, the amount of damages or private financial gain; available to the plaintiff depends on a variety of factors, ■ wilful infringement by the reproduction or distribution including, without limitation, the economic injury to the plain- during a six-month period of one or more copyrighted tiff, principles of deterrence, and the level of the defendant’s works having a total retail value of more than US$1,000; culpability. ■ wilful infringement by the distribution of a work being ■ The general rule is that a plaintiff is entitled to statutory prepared for commercial distribution by making it avail- damages in a sum of not less than US$750 or more than able on a computer network accessible to members of the US$30,000 per work infringed. public; ■ If the plaintiff proves that the defendant acted wilfully, ■ with fraudulent intent, placing on any article a false copy- the court may increase the award of statutory damages to a right notice; sum of not more than US$150,000 per work infringed. ■ with fraudulent intent, publicly distributing or importing ■ If the infringer proves that the infringer was not aware and for public distribution any article bearing a false copyright had no reason to believe that its acts constituted an infringe- notice; ment, the court may reduce the award of statutory damages ■ with fraudulent intent, removing or altering any copyright to a sum of not less than US$200 per work infringed. notice appearing on a copyrighted work; and ■ knowingly making a false representation of a material fact in an application for copyright registration or in any 5.7 What are the typical costs of infringement written statement filed in connection with an application. proceedings and how long do they take?

6.2 What is the threshold for criminal liability and what The costs of prosecuting an infringement claim vary widely are the potential sanctions? from case to case depending on the nature of the works at issue and the number of works involved. Some cases can be resolved at early stages for less than US$100,000; while other, more The sanctions available depend on the nature of the offence and the value of the infringing work. Such sanctions range from

fines of up to US$2,500 to 10 years in prison. The criminal Wood in Sinclair v. Ziff Davis, LLC, 2020 WL 1847841 (S.D.N.Y. provisions of the Copyright Act and the U.S. Code also provide April 13, 2020). In Sinclair, media website The Mashable for the forfeiture and destruction of infringing copies as well as published a news story that embedded a photographer’s public- restitution to any victim of infringement. ly-posted Instagram photograph. The photographer sued The Mashable for copyright infringement, but Judge Wood dismissed 72 Current Developments the claim, holding that Instagram’s API “enables users to embed publicly-posted content in their websites” and, thus, consti- 7.1 Have there been, or are there anticipated, tuted a sublicense from Instagram to third-party media compa- any significant legislative changes or case law nies to embed such photographs in news stories. Roughly two developments? months later, however, on 1 June 2020, Judge Katherine Polk Failla – also of the Southern District of New York – reached the opposite conclusion and refused to dismiss an infringement The Supreme Court has clarified that States are immune from claim filed against Newsweek over its embedding of a public copyright infringement lawsuits. In the case of Allen v. Cooper, Instagram photo in an online news story. McGucken v. Newsweek, 140 S.Ct. 994, decided in March 2020, the U.S. Supreme Court LLC, 2020 WL 2836427 (S.D.N.Y. June 1, 2020). Specifically, held that States are immune from copyright infringement claims Judge Failla held that the language of Instagram’s Platform under the doctrine of “sovereign immunity” as provided by the Policy which states that its API is meant to “help broadcasters Eleventh Amendment of the U.S. Constitution. In Allen, a film- and publishers . . . share media using web embeds”, does not maker sued the State of North Carolina for copyright infringe- “expressly grant a sublicense to those who embed publicly ment over the state’s use of copyrighted photographs and videos posted content”. Thus, under Judge Failla’s decision, websites of a shipwreck discovered off the coast of North Carolina on are required to seek permission from photographer’s before the State’s website. North Carolina moved to dismiss the suit embedding their publicly-posted Instagram photos. on sovereign immunity grounds. The plaintiff filmmaker These contrary decisions prompted Instagram to make a argued that an exception to the sovereign immunity rule applied public statement on 4 June 2020 explaining that Instagram does because Congress had abrogated the States’ sovereign immu- not believe its API users have a sublicense to embed images on nity from copyright suits in the Copyright Remedy Clarification other websites without the photographer’s consent. Instagram Act of 1990 (the “CRCA”), which provided that a State “shall stated: “While our terms allow us to grant a sub-license, we not be immune, under the Eleventh Amendment [or] any other do not grant one for our embeds API . . . . Our platform poli- doctrine of sovereign immunity, from suit in Federal court” for cies require third parties to have the necessary rights from appli- copyright infringement. Ultimately, the Supreme Court rejected cable rights holders.” Shortly thereafter, on 24 June 2020, Judge the plaintiff filmmaker’s arguments and held that Congress Wood reconsidered her decision in Sinclair and reinstated the lacked authority to enact the CRCA under the U.S. Constitution photographer’s copyright claim against The Mashable in light of and, thus, the CRCA was invalid and States remain immune the “persuasive authority” of the McGucken case. Sinclar v. Ziff from suits for copyright infringement. Davis, LLC, 2020 WL 3450136 (S.D.N.Y June 24, 2020). Accordingly, as the law now stands, it is advisable for media 7.2 Are there any particularly noteworthy issues around companies to ask photographers for permission before embed- the application and enforcement of copyright in relation ding their photos in news articles, and to use a different photo if to digital content (for example, when a work is deemed permission is not given. to be made available to the public online, hyperlinking, etc.)? 7.3 Have there been any decisions or changes of law regarding the role of copyright in relation to artificial Yes. A current noteworthy issue is whether news websites intelligence systems, including the use of copyright are permitted to embed an Instagram user’s public Instagram in those systems and/or any work generated by those photographs in online news stories without incurring liability systems? for infringement. Instagram’s Terms of Use provide that when a user uploads Not at this time. Section 313.2 of the Compendium of U.S. a photo, they “grant to [Instagram] a non-exclusive . . . sub-li- Copyright Office Practices explains that, in the United States, censable, worldwide license to . . . use [or] display [the photo] “[t]o qualify as a work of ‘authorship’ a work must be created (consistent with privacy and application settings)”. Instagram’s by a human being”. As such, “the [Copyright] Office will not Privacy Policy in turn informs users that “any [photo] that you register works produced by a machine or mere mechanical make public is searchable by other [Instagram] Users and subject process that operates randomly or automatically without any to use under Instagram’s API [application programming inter- creative input or intervention from a human author”. face]”. Instagram’s Platform Policy – which governs the use of In the U.S., there is an ongoing debate about the relation- the API – states that the Platform is provided “to help broad- ship between AI and copyright protection. Indeed, on February casters and publishers discover content, get digital rights to 5, 2020, the U.S. Copyright Office and the World Intellectual media, and share media using web embeds”. These intercon- Property Organization (“WIPO”) held a symposium that took necting Terms of Use have led many online publishers to believe an in-depth look at how the creative community currently is they have a sublicense via Instagram’s API to embed public- using AI to create original works, whether such works can be ly-posted Instagram photos without the photographer’s permis- eligible for U.S. copyright protection and, if so, what level of sion – and so they have done so. human input is required for the work to be eligible. Videos and This “sublicense” issue was recently addressed in the April transcripts from the event are available at https://www.copy- 2020 decision of Southern District of New York Judge Kimba right.gov/events/artificial-intelligence/.

David Donahue is a Partner in Fross Zelnick’s litigation department. He litigates and advises on copyright, trademark, unfair competition, right of publicity, design patents and related commercial matters in federal and state trial and appellate courts. David’s practice spans a broad range of industries, including hotels and resorts, food and beverage, fashion, music, entertainment and celebrities, authors and literary works, fine art, and film among many others. He also negotiates and drafts commercial agreements relating to intellectual property matters. David is a frequent speaker on intellectual property issues, and has presented on a wide range of copyright-related topics, including, for example, Calculating Damages in Copyright Infringement Actions, Statutory Termination of Copyright Grants in the Music Industry, and Testing the Limits of the Safe Harbor: Recent Developments under the Digital Millennium Copyright Act.

Fross Zelnick Lehrman & Zissu, P.C. Tel: +1 212 813 5900 151 West 42nd Street, 17th Floor Email: [email protected] New York, NY 10036 URL: www.frosszelnick.com USA

Jason D. Jones is a Partner in Fross Zelnick’s litigation department. He focuses on litigation in the areas of copyright, trademark, and unfair competition. He represents clients on matters related to intellectual property rights across a wide range of industries, including publishing, fashion, entertainment, pharmaceuticals, financial services, and consumer products. He represents clients in federal and state courts and before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office, as well as through alternative avenues of dispute resolution such as mediation and arbitration. He is also an Adjunct Faculty Member at New York Law School, where he teaches a seminar in Trademark and Copyright Litigation. Jason is a frequent speaker on trademark topics, including, for example, The USPTO’s New Proof of Use Post-Registration Audit Program and Fraud in Trademark Applications and Registrations: Proving or Defeating Allegations.

Fross Zelnick Lehrman & Zissu, P.C. Tel: +1 212 813 5900 151 West 42nd Street, 17th Floor Email: [email protected] New York, NY 10036 URL: www.frosszelnick.com USA

With 50 lawyers located in New York City and Alexandria, Virginia, Fross Zelnick Lehrman & Zissu, P.C. is one of the largest law firms focusing exclusively on U.S. and international copyright, trademark, unfair competition and design patent law. Fross Zelnick represents a broad spectrum of clients, from multinational corporations in all arts and industries to individual creators. Fross Zelnick has repeatedly received the highest rankings in surveys of leading intellectual property practitioners, by publications such as Chambers, Who’s Who Legal, Euromoney’s Guide to the World’s Leading Trademark Practitioners, Managing Intellectual Property, WTR 1000, Super Lawyers, The Legal 500, and The Best Lawyers in America. www.frosszelnick.com

Wintertons Legal Practitioners Cordellia Nyasha Midzi

12 Copyright Subsistence (b) news of the day that are mere items of press information; (c) speeches of a political nature; (d) speeches delivered in the course of legal proceedings; 1.1 What are the requirements for copyright to subsist (e) official texts of enactments; in a work? (f) official texts of Bills prepared for presentation in Parliament; (g) official records of judicial proceedings and decisions; In Zimbabwe copyright law is regulated in terms of the (h) notices, advertisements and other material published in Copyright and Neighbouring Rights Act [Chapter 26:05], here- the Gazette; after referred to as “the Act”. (i) applications, specifications and other matters published in For copyright to subsist in a work, the following requirements the Patent and Trade Marks Journal referred to in section must be met: 95 of the Patents Act [Chapter 26:03]; a) the author of the work must be a qualified person as is (j) official texts of international conventions, treaties and defined in the Act; agreements to which Zimbabwe is a party; b) the work must so qualify for copyright protection by virtue (k) entries in, and documents that form part of, any register of the country in which it was published or made; and which is kept in terms of an enactment and is open to c) the work must have been made under the direction or public inspection; and control of the State or a designated international organisa- (l) such other documents of a public nature as may be tion as provided in the Act. prescribed. Further to these requirements, a work shall not be eligible for copyright if it has been reduced to writing, recorded or otherwise reduced to material form. 1.5 Is there a system for registration of copyright and, if so, what is the effect of registration?

1.2 Does your jurisdiction operate an open or closed list of works that can qualify for copyright protection? In Zimbabwe copyright does not depend on official procedures such as registration. Protection of a created work is automatic, with effect from the date of creation of the works. Zimbabwe operates a closed-list system. Copyright only subsists A voluntary deposit rule for created works is available. Three in specific works which are provided for in the Act. copies are stamped by a legal practitioner and the Copyright Registrar upon deposit. This is in harmony with The Berne 1.3 In what works can copyright subsist? Convention for the Protection of Literary and Artistic Works.

In terms of section 9 (2), copyright subsists in the following 1.6 What is the duration of copyright protection? Does works: this vary depending on the type of work? ■ literary works; ■ musical works; The duration of copyright varies with the type of work. In the ■ artistic works; case of: ■ audio-visual works; (a) an audio-visual work, a collective work, a photograph or ■ sound recordings; a computer program, the duration is 50 years from the ■ broad-casts; and end of the year in which the work is made available to the ■ programme-carrying signals. public with the consent of the owner of the copyright or, failing such an event, within 50 years from the making of 1.4 Are there any works which are excluded from the work; copyright protection? (b) a sound recording, the duration is 50 years from the end of the year in which the recording is first published; In terms of section 10 (5) and (6), the following works are (c) a broadcast, the duration is 50 years from the end of the excluded from copyright protection: year in which the broadcast first takes place; (a) ideas, procedures, systems, methods of operation, concepts, (d) a programme-carrying signal, the duration is 50 years from principles, discoveries, facts or figures, even if they are the end of the year in which the signal is first transmitted explained, illustrated or embodied in a work; to a satellite;

(e) a published edition, the duration is 50 years from the end 2.4 Is there a concept of joint ownership and, if so, of the year in which the edition is first published; and what rules apply to dealings with a jointly owned work? (f) any other literary, musical or artistic work, the duration is the life of the author plus 50 years from the end of the year The concept of joint ownership exists in copyright, in the case of in which the author dies. a work of joint authorship. A work is said to be jointly-authored where the contributions of the authors cannot be separated. In 1.7 Is there any overlap between copyright and other terms of section 15 (4) of the Act, the death of an author in intellectual property rights such as design rights and the case of literary, musical and artistic work, and in the case of database rights? anonymous or pseudonymous literary work, shall be taken to refer to the author who dies last. Yes. An overlap is present between copyright and design rights. The Industrial Designs Act [Chapter 26:02] regulates design 32 Exploitation rights in Zimbabwe. In terms of section 15 of the Act, the registration of a design gives to the registered proprietor the copy- 3.1 Are there any formalities which apply to the right in the registered design, that is to say, the exclusive right transfer/assignment of ownership? in Zimbabwe to make, import or export for sale or for use for the purposes of any trade or business and to sell, hire or offer Copyright in a work may be transmitted as incorporeal movable for sale or hire any article in respect of which the design is regis- property by assignment, testamentary disposition or operation tered. A proprietor therefore enjoys protection under the design of the law. In the case of an assignment, the assignment must laws as well as under copyright law. The Act does not provide be reduced to writing and signed by or on behalf of the assignor. for database rights.

3.2 Are there any formalities required for a copyright 1.8 Are there any restrictions on the protection licence? for copyright works which are made by an industrial process? There are two types of licences provided for in terms of the Act. A licence may be either an exclusive licence or a non-ex- There is no specific provision in the Act which restricts or limits clusive licence. An exclusive licence authorises the licensee (to the protection of a work made by an industrial process. the exclusion of all other persons, including the person granting the licence) to exercise the economic right that is the subject of 22 Ownership the licence. A non-exclusive licence is a licence that does not preclude the person granting the licence from granting a similar licence to some other person. 2.1 Who is the first owner of copyright in each of the works protected (other than where questions 2.2 or 2.3 The formalities required for a copyright licence depend on the apply)? type of licence. An exclusive licence must be reduced to writing and signed by the person granting the licence. A non-exclusive licence may be in writing or oral form and may also be inferred The general rule is that the author or co-author is the first owner from conduct. of the copyright in a work. The word “author” as it relates to a work, means the maker or creator of the work. This definition, however, applies only to literary, musical and artistic works. In 3.3 Are there any laws which limit the licence terms all other categories of works, someone other than the creator, parties may agree to (other than as addressed in may qualify as the author. questions 3.4 to 3.6)?

No. There are no laws which limit the licence terms to which 2.2 Where a work is commissioned, how is ownership of the copyright determined between the author and the parties may agree. commissioner? 3.4 Which types of copyright work have collective In terms of section 14 (4) of the Act, where a work is commis- licensing bodies (please name the relevant bodies)? sioned (for example, where a person commissions the taking of a photograph, painting or portrait, of the making of a gravure, Literary, artistic and musical works are the subject-matter sound recording, or any audio visual work) the owner of any of collecting societies in Zimbabwe. There are three main copyright will vest in the person that commissioned the work. collecting societies which include: This scenario is an exception to the general rule mentioned in ■ Zimbabwe Music Rights Association (ZIMURA) which was question 2.1. established in 1982 and is responsible for the collection and distribution of royalties on behalf of registered members. ■ ZimCopy, a reproduction rights organisation which is affil- 2.3 Where a work is created by an employee, how is ownership of the copyright determined between the iated with the International Federation of Reproduction employee and the employer? Rights Organisation (IFRRO) and the body is responsible for the collective management of reproduction and other rights relevant to copyright works. In terms of section 14 (3) of the Act, where a work is created by ■ Zimbabwe Association of Recording Industries (ZARI), an employee, the proprietor or employer shall be the owner of which is an organisation comprising recording companies, the copyright in the work insofar as the copyright relates to the whose mandate is to control and harmonise the recording, publishing of the work. manufacture and distribution of artworks within the arts industry.

3.5 Where there are collective licensing bodies, how (c) importing the work into Zimbabwe or exporting it from are they regulated? Zimbabwe, other than for the personal and private use of the person importing or exporting it; (d) broadcasting the work; Collecting licensing bodies are regulated by Part X of the (e) making the work available on a public computer network; Copyright and Neighbouring Rights Act and its Regulations of (f) causing the work to be transmitted in a cable programme 2006. Generally, collecting societies must make an application service, unless the service transmits a lawful television for registration to the Registrar, and until such application is broadcast, including the work, and is operated by the orig- granted, no person or organisation shall carry on the business of inal broadcaster; a collecting society in Zimbabwe. (g) directly or indirectly selling or letting for hire or offering or exposing for sale or hire, by way of business, a copy of 3.6 On what grounds can licence terms offered by a the work; or collective licensing body be challenged? (h) making an adaptation of the work. In the case of sound recordings, the following acts are The Copyright and Neighbouring Rights Act provides for the restricted: registration of collective bodies but does not address the rela- (a) making, directly or indirectly, a record embodying the tionship between the collecting bodies and the owners of sound recording; copyright. (b) directly or indirectly selling or letting for hire or offering or exposing for sale or hire, by way of business, a copy of 42 Owners’ Rights the sound recording; (c) importing the sound recording into Zimbabwe or exporting it from Zimbabwe, other than for the personal and private 4.1 What acts involving a copyright work are capable of being restricted by the rights holder? use of the person importing or exporting it; (d) making the sound recording available on a public computer network; There are various acts which are restricted by a rights holder (e) causing the sound recording to be transmitted in a cable in a copyright work. The acts vary, depending on the type of programme service, unless the service transmits a lawful copyright work. In the case of a literary or musical work, the broadcast, including the sound recording, and is operated following acts are restricted: by the original broadcaster; or (a) reproducing the work; (f) making an adaptation of the sound recording. (b) publishing the work; In the case of broadcasts, the following acts are restricted: (c) importing the work into Zimbabwe or exporting it from (a) reproducing the broadcast directly or indirectly, including, Zimbabwe, other than for the personal and private use of in the case of a television broadcast, making a still photo- the person importing or exporting it; graph from it; (d) performing the work in public; (b) re-broadcasting the broadcast; (e) broadcasting the work; (c) making the broadcast available on a public computer (f) causing the work to be transmitted in a cable programme network; or service, unless the service transmits a lawful broad- (d) causing the broadcast to be transmitted in a cable cast, including the work, and is operated by the original programme service, unless the service is operated by the broadcaster; original broadcaster. (g) except in the case of a computer programme, making an In the case of programme carrying signals, only the rights adaptation of the work; holder has the exclusive right to authorise the direct or indirect (h) in the case of a computer programme: distribution of the signal in Zimbabwe. (i) publishing an adaptation of the programme; or In the case of published editions, the following acts are (ii) by way of business, directly or indirectly selling or restricted: letting for hire a copy of the programme or offering or (a) reproducing the published edition; exposing a copy of the programme for sale or hire. (b) importing the published edition into Zimbabwe or In the case of artistic works, the following acts are restricted: exporting it from Zimbabwe, other than for the personal (a) reproducing the work; and private use of the person importing or exporting it; or (b) publishing the work; (c) making the published edition available on a public (c) importing the work into Zimbabwe or exporting it from computer network. Zimbabwe, other than for the personal and private use of the person importing or exporting it; (d) including the work in an audio-visual work or a broadcast; 4.2 Are there any ancillary rights related to copyright, (e) causing a programme which includes the work to be trans- such as moral rights, and, if so, what do they protect, and can they be waived or assigned? mitted in a cable programme service, unless the service transmits a lawful broadcast, including the work, and is operated by the original broadcaster; or Moral rights are provided for in terms of Part VI of the Act. (f) making an adaptation of the work. These rights protect the right of a person to be identified as the In the case of audio-visual works, the following acts are author or director of a copyright work, the right of a person not restricted: to be identified as author or director, the right of the author or (a) reproducing the work, including making a still photograph director to object to derogatory treatment of copyright work and from it; the right of a person to privacy in regard to certain photographs (b) causing the work, insofar as it consists of images, to be and audio-visual works. seen in public or, insofar as it consists of sounds, to be Moral rights are transmissible, but only in certain circum- heard in public; stances. In terms of section 66 of the Act, moral rights are not

transmissible during the lifetime of the person in whom the ■ Quotations from copyright works. copyright vests. On that person’s death, they may be trans- ■ Public readings and recitations. mitted by testamentary disposition or by operation of law. ■ Records made from soundtracks. Moral rights can be waived. ■ Reconstruction of architectural works. ■ Reproduction of artistic works in public places. ■ Incidental inclusion of copyright material. 4.3 Are there circumstances in which a copyright owner is unable to restrain subsequent dealings in works ■ Ephemeral recordings. which have been put on the market with his consent? ■ Reproducing an artistic work for the purpose of advertising its sale. ■ Use of a work for demonstration purposes. The copyright owner is unable to restrain subsequent dealings in ■ Computer programmes: back-up copies and de-compilation. works which have been put on the market with his or her consent. ■ Recording of programmes and broadcasts for purposes of subsequent viewing or listening. 52 Copyright Enforcement ■ Private recording of musical works and sound broadcasts. ■ Acts carried out under statutory authority. 5.1 Are there any statutory enforcement agencies and, ■ Prescribed dealings in copyright work. if so, are they used by rights holders as an alternative to civil actions? 5.5 Are interim or permanent injunctions available?

There are various fora available to rights holders for the enforcement of their rights. These are the Intellectual Property Tribunal, Yes. Interim or final interdicts are available to a rights holder the High Court of Zimbabwe, and (subject to jurisdictional limits) as remedies against a copyright infringer. Other remedies are the Magistrates Court. Criminal proceedings may also be insti- damages, Anton Piller orders, sentences of imprisonment and tuted through the Magistrates and High Courts. The Zimbabwe the imposition of fines. Republic Police is also instrumental in safeguarding copyrights. 5.6 On what basis are damages or an account of profits calculated? 5.2 Other than the copyright owner, can anyone else bring a claim for infringement of the copyright in a work? Damages for infringement of copyright may, at the option of the Generally, an infringement of copyright is actionable by person seeking them, be calculated on the basis of the reason- the owner of the copyright. There are instances in the Act able royalty which would have been payable under the circum- where someone other than the owner may bring an infringe- stances by a licensee in respect of the copyright concerned. ment action. In terms of section 53 of the Act, an exclusive licensee shall have the same rights of action and is also entitled 5.7 What are the typical costs of infringement to the same remedies as the licensor or owner of the copyright. proceedings and how long do they take? Collective licensing bodies may also bring a claim for infringement on behalf of their members. The typical costs in any law suit can be divided into two categories: disbursements; and professional fees. Disbursements 5.3 Can an action be brought against ‘secondary’ cover such costs as revenue stamps, court fees and costs gener- infringers as well as primary infringers and, if so, ally associated with instituting legal proceedings in either local on what basis can someone be liable for secondary or superior courts. Professional fees charged by legal practi- infringement? tioners are regulated by a Tariff which is reassessed from time to time by the Law Society of Zimbabwe. The Act does not distinguish between primary and secondary It is difficult to give any estimate of time frames, as a lot will infringers. An action may be brought against any person who depend on the nature of dispute, the congestion of the court roll infringes upon a copyright, on the grounds set out in the Act. and the filing of any interlocutory applications. Generally, litigation may take anything from a year upwards.

5.4 Are there any general or specific exceptions which can be relied upon as a defence to a claim of 5.8 Is there a right of appeal from a first instance infringement? judgment and, if so, what are the grounds on which an appeal may be brought? The defences available to a claim for infringement are listed below: In terms of the Act, appeals against decisions of the Registrar ■ Fair dealing for purposes of research or private study. are to the Intellectual Property Tribunal. Where the Intellectual ■ Educational use of copyright material. Property Tribunal is the court of first instance, appeals are to ■ Copies made to replace or conserve library or archival the Supreme Court of Zimbabwe. An appeal may be brought copies of works. by any person aggrieved with the decision of the relevant body. ■ Use of anonymous or pseudonymous works. ■ Use of a work for Parliamentary or judicial proceedings or 5.9 What is the period in which an action must be inquiries. commenced? ■ Fair dealing for purposes of criticism, review or news-reporting. In terms of section 15 of the Prescription Act [Chapter 8:11], ■ Publication of public speeches and articles of topical the period of prescription of a debt is three years in the case of interest.

normal debts. Prescription starts to run as soon as the debt falls 6.2 What is the threshold for criminal liability and what due. Prescription may not start if the creditor is unaware of the are the potential sanctions? existence of the debt. In terms of the Act, criminal liability is imputed on a person 62 Criminal Offences who “knows” or has “reason to believe” that an infringement exists. 6.1 Are there any criminal offences relating to A person who is found guilty of infringing a copyright is liable copyright infringement? to a fine or to imprisonment for a period not exceeding two years or to both such fine and imprisonment. The Act makes provision for criminal sanctions in respect of specific acts of infringement. In terms of section 59, a person is 72 Current Developments guilty of an offence if he or she does any of the following things in Zimbabwe without the authority of the owner of the copy- 7.1 Have there been, or are there anticipated, right in the work: any significant legislative changes or case law (a) he or she makes it; developments? (b) other than for his or her personal and private use, he or she imports it into Zimbabwe or exports it from Zimbabwe; In 2017, Zimbabwe made a significant advancement with (c) in the course of business, he or she possesses it or exhibits the establishment of the Intellectual Property Tribunal. The it in public or distributes it; Tribunal was created through the Judicial Laws Amendment (d) he or she sells it or lets it for hire or offers or exposes it for (Ease of Settling Commercial and Other Disputes) Act No. 7 of sale or hire; or 2017. In terms of the Act, the Tribunal forms a specialised divi- (e) other than in the course of business, he or she distributes sion of the High Court of Zimbabwe, the objectives are to expe- it to such an extent that the owner of the copyright is prej- dite justice delivery and to promote easy access to justice. udicially affected. Other specific offences are as follows: (1) Any person who causes a literary or musical work to be 7.2 Are there any particularly noteworthy issues around performed in public knowing that copyright subsists in the application and enforcement of copyright in relation to digital content (for example, when a work is deemed the work and that the performance constitutes an infringe- to be made available to the public online, hyperlinking, ment of the copyright, is guilty of an offence. etc.)? (2) Any person who causes a broadcast to be re-broadcast or transmitted in a cable programme service, knowing that copyright subsists in the broadcast and that the re-broad- There are presently no noteworthy issues around the application cast or transmission constitutes an infringement of the and enforcement of copyright in relation to data content. copyright, is guilty of an offence. (3) Any person who causes a programme-carrying signal to be 7.3 Have there been any decisions or changes of law distributed without the authority of the owner of the copy- regarding the role of copyright in relation to artificial right in the signal, knowing that copyright subsists in the intelligence systems, including the use of copyright signal and that the re-broadcast constitutes an infringe- in those systems and/or any work generated by those ment of the copyright, is guilty of an offence. systems?

There have not been any decisions or changes of law regarding the role of copyright in artificial intelligence systems.

Cordellia Nyasha Midzi graduated from the University of Zimbabwe in 2014 and joined the firm as an Associate in the same year. She was admitted into Partnership in July 2019. She is a member of the Real Estate and Intellectual Property (IP) Departments. In the Intellectual Property department, she provides general legal support and advice in all aspects of this practice area, including in relation to Trademarks, Patents, Industrial Designs and Copyright matters. She lays emphasis on IP prosecution, enforcement, and advisory matters in various African countries. She is currently a Member of the Zimbabwe Institute of Trade Mark and Patents Agents (ZIPTA). She handles regional and local IP registrations through the Africa Regional Intellectual Property Organisation (ARIPO) and the Zimbabwe Intellectual Property Office (ZIPO), and has assisted various Zimbabwean entities with IP registrations in the European Union (EU), as well as in other African jurisdictions. She holds a second Law Degree from the University of South Africa (UNISA), where she specialised in Intellectual Property Law. Apart from her IP practice, she offers services in various areas of Real Estate Law and Family Law, including adoption, custody and guardianship matters. Cordellia is currently pursuing an LL.M. in Intellectual Property from the University of South Africa.

Wintertons Legal Practitioners Tel: +263 242 250112 11 Selous Avenue, Beverley Corner Email: [email protected] Harare URL: www.wintertons.co.zw Zimbabwe

Wintertons Legal Practitioners is a long-established and well regarded firm IPOs, securities law and exchange compliance; mergers and acquisi- with a wide range of experience, owing to its diverse and highly talented tions; corporate restructuring and investments in Zimbabwe). personnel. In engaging us a client will be able to leverage the legal skills Energy, Infrastructure and Natural Resources (general due diligence, of an established brand that has stood the test of time in the legal profes- project structuring and documentation, power purchase agree- sion in Zimbabwe. We are a one-stop legal services firm with practitioners ments, financing security agreements, infrastructure sharing agreements, regulatory approvals, implementation & direct agreements, who are experienced in the major areas of legal practice in Zimbabwe and tribute agreements and mining transactions). in cross-border transactions. We set out below our areas of practice and Property Law (agreements of sale and purchase, transfers, mort- advisory services in: gages, bonds). Intellectual Property Law. Deceased Estates and Wills. Insurance Law. Currency Litigation. Labour and Employment Law (drafting employment contracts, www.wintertons.co.zw drafting Employment Codes of Conduct, prosecuting and defending on behalf of clients in disciplinary actions, representing clients in the Labour and Supreme Court). Banking and Finance matters (acquisition finance, asset finance, bilateral & syndicated finance, trade finance, private placements, project finance, real estate finance). Litigation and Alternative Dispute Resolution. Corporate and Commercial (commercial contracts; commercial, industrial and residential leases; franchising, insurance and pensions;

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