Copyright 2016, Getting the Deal Through

2016

Contributing editors J Kohlmann Susan and R Englund H Bart, Steven Andrew Copyright

The National Law Journal Legal 500 – Copyright Team of the Year – Intellectual Property Hot List Jenner & Block was named Jenner & Block is among the 15 elite firms “Copyright Team of the Year” named to The National Law Journal’s 2016 by Legal 500 US in 2015, marking the “Intellectual Property Hot List,” third time that the firm has received marking our second consecutive year on the list. this prestigious recognition as the No. 1 copyright practice in the country.

Law360 – Practice Group of the Year: Intellectual Property Chambers USA – Intellectual Property: Copyright, Trademark & Trade Secrets The firm’s roughly 70 IP lawyers around the (Nationwide) United States bring “some serious One of only seven firms to receive IP firepower” to their clients’ cases. nationwide recognition in this category in the 2016 rankings.

Contributing editors Andrew H Bart, Steven R Englund and Susan J Kohlmann Jenner & Block LLP

ReproducedReproduced withwith permissionpermission fromfrom LawLaw BusinessBusiness ResearchResearch Ltd.Ltd. ThisThis articlearticle waswas firstfirst publishedpublished inin GettingGetting thethe DealDeal Through:Through: CopyrightCopyright 2016,2016, (published (publishedin July 2016; in contributing July 2016; contributing editors: Andrew editors: H AndrewBart, Steven H Bart, R Englund Steven Rand Englund Susan Jand Kohlmann, Susan J Kohlmann, Jenner & Block Jenner LLP) & Block For further LLP) For information further information please visit www.gettingthedealthrough.com.please visit www.gettingthedealthrough.com.

Publisher Law The information provided in this publication is Gideon Roberton general and may not apply in a specific situation. [email protected] Business Legal advice should always be sought before taking Research any legal action based on the information provided. Subscriptions This information is not intended to create, nor does Sophie Pallier Published by receipt of it constitute, a lawyer–client relationship. [email protected] Law Business Research Ltd The publishers and authors accept no responsibility 87 Lancaster Road for any acts or omissions contained herein. Although Senior business development managers London, W11 1QQ, UK the information provided is accurate as of July 2016, Alan Lee Tel: +44 20 3708 4199 be advised that this is a developing area. [email protected] Fax: +44 20 7229 6910

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Overview 5 Japan 63 Andrew H Bart, Steven R Englund and Susan J Kohlmann Takashi Nakazaki Jenner & Block LLP Anderson Mōri & Tomotsune

Australia 6 Mexico 67 Kristin Stammer and Helen Macpherson Carlos Trujillo and Karla Alatriste Herbert Smith Freehills Uhthoff, Gomez Vega & Uhthoff

Austria 11 Nigeria 73 Sonja Dürager Emmanuel Ekpenyong, Oluwole Awe and Chamba Unongo bpv Hügel Rechtsanwälte OG Fred-Young & Evans

Belgium 17 Poland 77 Karel Nijs and Vicky Bracke Dorota Rzążewska LMBD Prioux JWP Patent & Trademark Attorneys

Brazil 24 Spain 83 Rodrigo d’Avila Mariano, Talitha Correa Chaves and Jesús Arribas, Beatriz Bejarano and Guillem Villaescusa Cristina Zamarion Carretoni Grau & Angulo Chiarottino e Nicoletti – Advogados Switzerland 88 Chile 30 Brendan Bolli and Sven Capol Claudio Magliona, Nicolás Yuraszeck and Carlos Araya E Blum & Co AG García Magliona Abogados Turkey 93 China 36 Sıdıka Baysal Hatipoğlu, Gökhan Uğur Bağcı and Benan Ilhanli Xie Guanbin, Zhang Bin and Che Luping B+B Law Firm Lifang & Partners United Kingdom 97 France 42 Douglas Peden, Varuni Paranavitane, Anna Rawlings and Olivia Bernardeau-Paupe Robert Guthrie Hogan Lovells LLP Osborne Clarke

Germany 47 United States 102 Jasper Hagenberg and Christine Nitschke Andrew H Bart, Steven R Englund and Susan J Kohlmann Buse Heberer Fromm Rechtsanwälte Steuerberater Jenner & Block LLP Partnerschaftsgesellschaft mbB Venezuela 109 Greece 52 Matías Pérez-Irazábal Alkisti-Irene Malamis Hoet Pelaez Castillo & Duque Malamis & Associates

India 57 Pravin Anand and Tanvi Misra Anand and Anand

Preface

Getting the Deal Through is delighted to publish the eleventh edition of Copyright, which is available in print, as an e-book and online at www.gettingthedealthrough.com.

Getting the Deal Through provides international expert analysis in key areas of law, practice and regulation for corporate counsel, cross-border legal practitioners, and company directors and officers.

Throughout this edition, and following the unique Getting the Deal Through format, the same key questions are answered by leading practitioners in each of the jurisdictions featured. Our coverage this year includes a new chapter on Nigeria.

Getting the Deal Through titles are published annually in print. Please ensure you are referring to the latest edition or to the online version at www.gettingthedealthrough.com.

Every effort has been made to cover all matters of concern to readers. However, specific legal advice should always be sought from experienced local advisers.

Getting the Deal Through gratefully acknowledges the efforts of all the contributors to this volume, who were chosen for their recognised expertise. We also extend special thanks to the contributing editors, Andrew H Bart, Steven R Englund and Susan J Kohlmann, of Jenner & Block LLP, for their continued assistance with this volume.

London July 2016

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Overview

Andrew H Bart, Steven R Englund and Susan J Kohlmann Jenner & Block LLP

Copyright law around the world continues to evolve to address advances Access to Published Works for Persons Who Are Blind, Visually Impaired, in technology and adoption of new communications media. Judicial deci- or Otherwise Print Disabled focuses on copyright exceptions relating to sions, international treaties and proposed national legislation in vari- the creation and dissemination of materials accessible to the blind and ous countries all reflect efforts to strike the appropriate balance between other print-disabled persons. Seventeen countries have now ratified or encouraging creativity by providing meaningful protection of intellectual acceded to that treaty. Both treaties are yet to enter into force. In addi- property rights and encouraging continued growth and development of tion, on 4 February 2016, 12 Pacific Rim countries signed the Trans-Pacific new technologies. Partnership, which contains significant copyright provisions. It is now The unauthorised dissemination of copyrighted works over the inter- under review in those countries, as described further in the chapters con- net continues to raise new questions for copyright owners worldwide, and cerning Chile, Japan, Mexico and the United States. has been the subject of proposed legislation as well as judicial decisions Various countries have ongoing legislative efforts to update and mod- in various countries. For example, in 2015, Australia enacted legislation ernise their copyright laws. In the United States, a wide range of copyright to provide for blocking of access to infringing sites, and a proposal for policy issues have been under review for several years. In the European such legislation is pending in Switzerland. China and Spain have recently Union, the Commission is considering a copyright modernisation initia- adopted new penalties for internet-related copyright infringement, and tive to address the ‘Digital Single Market’. Another issue being examined legislation is pending in Nigeria to provide better protection of copyright legislatively in multiple countries is management of collective licensing. in the digital environment. While France considers legislation addressing Implementation of the 2014 EU Directive on Management of Copyright whether cloud computing should be added to its system of copyright lev- and Related Rights has been proceeding. Efforts to implement it are noted ies, the courts in Brazil are considering whether an internet transmission in the chapters concerning Germany and Greece. Other collective licens- constitutes a public performance. ing proposals are under evaluation in India, Mexico and Switzerland. Two major international copyright treaties remain pending. The 2012 As the digital world continues to evolve, so do copyright laws around Beijing Treaty on Audiovisual Performances is a multilateral treaty that the world. We hope that you find our analysis helpful and informative as would, for the first time, comprehensively bring audiovisual performers you navigate the ever-changing copyright landscape in your practice or into the international copyright framework. Eleven countries have now business. We look forward to hearing from you and welcome any com- ratified or acceded to that treaty. The 2013 Marrakesh Treaty to Facilitate ments that you may have.

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Australia

Kristin Stammer and Helen Macpherson Herbert Smith Freehills

Legislation and enforcement Agency 1 What is the relevant legislation? 5 Is there a centralised copyright agency? What does this The Copyright Act 1968 (Cth) governs copyright in Australia. agency do? Australia has no central copyright agency. Instead, a number of copyright 2 Who enforces it? collecting societies manage certain types of copyright works (for example, Copyright may be enforced by the owner or an exclusive licensee (as issuing licences and collecting royalties on behalf of the copyright owner). defined in the Copyright Act) only. Criminal provisions may be enforced These include: by the state, territory or federal police. • the Copyright Agency Limited (CAL), which represents authors and publishers; 3 Are there any specific provisions of your copyright laws that • the Australasian Performing Rights Association Ltd (APRA) and the address the digital exploitation of works? Are there separate Australasian Mechanical Copyright Owners’ Society Ltd (AMCOS), which represent composers, songwriters and music publishers; statutory provisions that do so? • the Phonographic Performance Company of Australia Ltd (PPCA), Yes. For example, in 2000, the Copyright Act was amended to introduce which represents record companies; a right to communicate a work. ‘Communicate’ is defined to mean make • the Audiovisual Copyright Society Ltd (Screenrights), which repre- available online or electronically transmit (whether over a path, or a com- sents owners of copyright in film and other audiovisual products; and bination of paths, provided by a material substance or otherwise) a work or • the Visual Arts Copyright Collecting Agency (Viscopy), which repre- other subject matter, including a performance or live performance within sents painters and other visual artists. the meaning of the Copyright Act. In addition, Australia adopted an anti-circumvention regime in 2007 Subject matter and scope of copyright to enhance the protection of digital copyright material. The regime generally prohibits the following three types of acts: 6 What types of works are copyrightable? • circumventing access protection measures, such as encryption or pass- The works and subject matter that may be protected are listed in the word protection; Copyright Act. Copyright may subsist in the following: • manufacturing or trafficking a device that circumvents copyright or • original literary, artistic, musical and dramatic works whether pub- access protection measures; and lished or unpublished. Literary works encompass a wide range of • providing or offering a device that circumvents copyright or access works and include computer software and databases. Artistic works protection measures. include (among other works) photographs, buildings, sculptures and works of artistic craftsmanship; and The regime establishes both civil and criminal actions in relation to these • sound recordings, films, television and sound broadcasts, and pub- prohibited acts. lished editions.

4 Do your copyright laws have extraterritorial application to 7 What types of rights are covered by copyright? deal with foreign-owned or foreign-operated websites that For literary, musical, artistic and dramatic works, the core rights given are infringe copyright? the exclusive rights to reproduce the work in a material form, publish the Yes. work, and make the work available online or electronically transmit it. In 2015, a blocking injunction provision was introduced into the For literary, musical and dramatic works, an exclusive right is also Copyright Act (section 115A). This provision enables a rights holder who given to make an adaptation of the work and to perform the work in public. discovers infringing material on a foreign website to obtain an injunction For sound recordings and films, the owner has the exclusive right to from the Federal Court requiring carriage service providers (also known make a copy, cause it to be seen or heard in public, and make it available as ISPs) to take reasonable steps to block access to the content where the online or electronically transmit it. rights holder can establish to the court that ‘the primary purpose’ of the In the case of computer programs and works recorded in sound record- website is ‘to infringe, or to facilitate the infringement of, copyright’. ings, the owner has the exclusive right to commercially rent the sound Previously, authors of copyright works had to rely on the exclusive recording or computer program. right to communicate their work, or authorise the communication thereof, Exclusive rights also exist for television and sound broadcasts and to the public, whether inside or outside Australia. Such communication published editions, and certain other limited exclusive rights also exist for includes uploading material to a generally accessible website. the subject matter discussed above. There are, however, two limitations to the extraterritorial application of these principles: 8 What may not be protected by copyright? • the alleged infringing act must be sufficiently connected to There are no exclusions from protection in the Australian legislation. Australia; and There is, however, a common law threshold that requires a work to be suf- • a carriage service provider, such as an internet service provider, will ficiently substantial before it is protected. Copyright does not protect ideas not be taken to have authorised the infringement of copyright by or information as such but only the original expression of ideas or infor- merely providing services that allow another to use those services to mation. Copyright can also only subsist once the original work has been infringe copyright: Copyright Act section 39B. reduced to a material form.

9 Do the doctrines of ‘fair use’ or ‘fair dealing’ exist? 17 Is there a requirement of copyright deposit? Fair dealing exceptions apply to all types of copyright materials. However, No. In Australia, copyright protection is granted automatically from the their application is limited to apply within only five specific categories. time a work or other subject matter is created. There is no general require- Those categories are research or study, criticism or review, parody or sat- ment of copyright deposit. ire, reporting of news, and provision of professional advice by a lawyer, pat- However, the Copyright Act requires publishers of certain literary, dra- ent attorney or trademark attorney. If a dealing is found objectively to fall matic, musical or artistic works to deposit a copy of those works published within one of these categories, it must then be shown to be ‘fair’. in Australia with the National Library of Australia. The National Library A number of other specific exceptions to copyright infringement are may also request the delivery of works that are available online (section set out in the Copyright Act. These include the private copying rights 195CA of the Copyright Act). A deposit at other libraries may also be providing exceptions for certain format-shifting, time-shifting and required by state legislation. space-shifting. 18 What are the consequences for failure to make a copyright 10 What are the standards used in determining whether a deposit? particular use is fair? Not applicable generally – see question 17. Where publishers are required to For the fair dealing exception for the purposes of research or study, the deposit a copy of a work with the National Library of Australia, a failure to court must consider whether the work was available at an ordinary com- do so within one month of publication will result in a fine. mercial price, the effect of the copying on the market value of the work, the purpose of the copying and how much was used. 19 Is there a system for copyright registration? The fair dealing exception for criticism or review must include an No. In Australia, copyright protection is granted automatically from the acknowledgment of the original work, recording or broadcast. time a work or other subject matter is created. There is no requirement of, For each of the fair dealing exceptions, a court must determine or system for, registration. whether the dealing was ‘fair’. In doing so, the court will focus on the specific use that the work was put to, and whether that use falls within the per- 20 Is copyright registration mandatory? ceived statutory purpose of the relevant fair dealing exception. No. See question 19. 11 Are architectural works protected by copyright? How? 21 How do you apply for a copyright registration? Buildings, models of buildings, engineering and architectural plans, and Not applicable. other architectural drawings are all protected by copyright, under the ban- ner of ‘artistic works’. The criteria for protection is that they are original 22 What are the fees to apply for a copyright registration? and substantive works connected to Australia. As is the case for other copyright works, protection exists once the copyright work is recorded in Not applicable. material form. 23 What are the consequences for failure to register a 12 Are performance rights covered by copyright? How? copyrighted work? Performers have certain limited rights under the Copyright Act, including Not applicable. the right to prevent unauthorised uses of their performances. The applicable monopoly terms are shorter than for copyright. Performers also have Ownership and transfer certain moral rights in live performances and performances incorporated 24 Who is the owner of a copyrighted work? in sound recordings. As a general rule under the Copyright Act, the creator of the work, or the 13 Are other ‘neighbouring rights’ recognised? How? person who was responsible for making the published edition, broadcast, film or sound recording, is the first owner of copyright. An agreement may The Copyright Act includes protection for films, sound recordings, tel- provide for ownership contrary to these rules. evision and sound broadcasts, and published editions (see also questions There are a number of important exceptions. These include the fol- 7 and 35). The Act also includes limited rights for performers (see ques- lowing (in the absence of an agreement to the contrary): tion 12). • an employer will own copyright in works created by his or her employees in the course of employment; 14 Are moral rights recognised? • in the case of commissioned portraits, engravings, films, sound Authors, film directors, film producers, screenwriters and performers have recordings and some photographs, the commissioning person, and not the following moral rights: the artist or maker, will own copyright in the work; • a right of attribution; • a producer or person who paid for a film or sound recording will own • a right to prevent false attribution; and copyright in the film or sound recording (although a performer in a live • a right to prevent derogatory treatment of their work or performance. performance who is recorded on a sound recording will generally own a share of copyright in the sound recording); and Moral rights are personal rights and are therefore not assignable. There is • a journalist who creates a literary, dramatic or artistic work for inclu- a specific regime in the Copyright Act relating to consent to acts that would sion in a newspaper, magazine or similar periodical, under the terms of otherwise infringe moral rights. There is a broad defence of reasonable- a contract of service with the proprietor of a newspaper, magazine or ness in relation to the right of attribution and the right against deroga- similar periodical, may own all or a share of the copyright in the work. tory treatment. 25 May an employer own a copyrighted work made by an Copyright formalities employee? 15 Is there a requirement of copyright notice? As explained in question 24, the Copyright Act provides that an employer will own copyright in a work that an employee creates in the course of There is no requirement to include a copyright notice as part of any cop- employment unless there is an agreement to the contrary. There is a spe- yright work, but including such a notice may assist a copyright owner to cific exception for works for inclusion in a newspaper, magazine or simi- rebut an innocent infringement defence, and to establish a presumption of lar periodical. ownership of the copyright work. 26 May a hiring party own a copyrighted work made by an 16 What are the consequences for failure to display a copyright independent contractor? notice? See question 24. Generally the hiring party will not own a copyrighted work See question 15. made by an independent contractor unless an assignment of copyright is

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© Law Business Research 2016 AUSTRALIA Herbert Smith Freehills expressly agreed to. A legal assignment of copyright must be in writing and 35 How long does copyright protection last? signed by or on behalf of the assignor. As a general rule, copyright protection currently continues as follows: The exception is that for commissioned portraits, engravings, some • literary, dramatic, musical and artistic works – continues for the life photographs, films and sound recordings, the commissioning person, and of the author plus 70 years. However, in the case of a literary work not the artist or maker, will own copyright in the work. (other than a computer program), a dramatic work or musical work, If there is no assignment of copyright, the hiring party will generally if the author dies before the work has been published, broadcast, per- have received a licence (express or implied) to make certain uses of the formed or sold, copyright continues until 70 years after the work is first copyrighted work. published, broadcast, performed or sold. In addition, if the literary, dramatic, musical or artistic work is first published anonymously or 27 May a copyrighted work be co-owned? under a pseudonym, copyright continues until 70 years after the work Yes. In Australia, a ‘work of joint authorship’ may be jointly owned. A work is first published; of joint authorship is defined as ‘a work that has been produced by the col- • sound recordings and films – continues until 70 years after the end of laboration of two or more authors in which the contribution of each author the year in which the sound recording or film is first published; is not separate from the contribution of the other author or the contribu- • television and sound broadcasts – continues until the expiration tions of the other authors’. of 50 years after the expiration of the year in which the broadcast is The joint author must have made a significant and original contribu- made; and tion to the form of expression embodied in the work (as opposed to merely • published editions – continues until the expiration of 25 years after the supplying an idea). expiration of the year in which the edition is first published. In addition, copyright works may also be co-owned by assignment. For copyright already in existence, the duration of protection may vary 28 May rights be transferred? depending upon when the work was created and when it was first pub- Yes. In Australia, under the Copyright Act, copyright is transmissible by lished, broadcast, performed or sold. assignment. An assignment of copyright must, under the Copyright Act, be in writing, signed by or on behalf of the assignor. The assignment may 36 Does copyright duration depend on when a particular work be a limited or partial assignment, for example limited to certain rights. was created or published? An assignment that is not in writing may, however, give rise to an equita- See question 35. ble interest. 37 Do terms of copyright have to be renewed? How? 29 May rights be licensed? No. In Australia, copyright does not have to be (and cannot be) renewed. Yes. In Australia, copyright owners can license their rights in copyright material. A licence may also be implied depending on the circumstances. 38 Has your jurisdiction extended the term of copyright Under the Copyright Act, an exclusive licence of copyright must be in protection? writing and signed by the copyright owner. It gives the licensee the right Yes. In 2006, the term of copyright protection for most categories of to exercise the licensed rights to the exclusion of all others including the copyright works was extended – see question 35. For example, the term of copyright owner (an exclusive licence that is not in writing may, however, copyright protection for literary, dramatic, musical and artistic works was still have some effect, but it may not necessarily obtain the rights under the extended to the life of the author plus 70 years. Prior to the 2006 amend- Copyright Act for an exclusive licensee). ments, the copyright protection for such works was life of the author plus 50 years. 30 Are there compulsory licences? What are they? Yes. The Copyright Act provides for statutory licences that allow certain Copyright infringement and remedies copyright material to be used for certain purposes without the express 39 What constitutes copyright infringement? voluntary licence of the copyright owner. For example, copying and communication of a work or broadcast by an educational institution for edu- To establish infringement, the copyright owner or exclusive licensee must cational purposes will not infringe copyright in the work or broadcast if it prove that the defendant performed one of the copyright owner’s exclusive is copied or communicated in compliance with the terms of the statutory rights (see question 7) in relation to the copyright work, or in relation to a licence. Furthermore, sound recordings may be played in public if the per- ‘substantial part’ of the copyright work. son who plays the recording agrees to pay equitable remuneration to the Where only part of a work is copied, the court will focus more on the copyright owner. quality of what was taken, rather than on the quantity of what was taken, in assessing whether a ‘substantial part’ was taken. 31 Are licences administered by performing rights societies? It is also an infringement to import an article into Australia for sale How? or hire if the article, had it been made in Australia, would have infringed the owner’s copyright. Parallel importation of many copyright articles is, Yes. The copyright collecting societies (see question 5) offer licences in rela- however, expressly allowed under the Copyright Act. tion to the particular category of copyright works that each society admin- It is, further, an infringement to sell, hire or offer for sale or hire an isters. The collecting societies distribute proceeds to copyright owners. article that is an infringing article. The Copyright Act also provides remedies against a defendant that 32 Is there any provision for the termination of transfers of has authorised another to directly infringe the owner’s copyright (see ques- rights? tion 40). No. 40 Does secondary liability exist for indirect copyright 33 Can documents evidencing transfers and other transactions infringement? What actions incur such liability? be recorded with a government agency? Yes, secondary liability does exist. Secondary liability may arise in the fol- No. lowing ways: • copyright can be infringed by a person who authorises the performing Duration of copyright in Australia of any act comprised in the copyright without the licence 34 When does copyright protection begin? of the copyright owner. The Act provides that the following factors must be considered when determining whether someone has author- Copyright protection is granted automatically from the time a work or ised a copyright infringement: the extent (if any) of the person’s power other subject matter is created. to prevent the copyright infringement, the nature of the relationship between the person and the infringer, and whether any reasonable preventive steps were taken by the person to avoid the infringement;

Update and trends The most significant developments in Australia over the past 12 months In late June 2015, the Australian Senate passed the Copyright have been in the online arena. Amendment (Online Infringement) Bill 2015 (Cth), which introduced Last year we reported on the Dallas Buyers Club (DBC) case. In the a new section 115A into the Copyright Act, allowing rights holders to Court’s judgment in November 2014, the Federal Court indicated a will- seek ‘blocking injunctions’ against ISPs (internet service providers) in ingness to give DBC access to the details of the account holders whose the Federal Court. The new injunctions require an ISP to block access IP addresses were alleged by DBC to have been used to share copies to overseas websites where the rights holder can establish to the court of the movie online. However, in a subsequent judgment in August that ‘the primary purpose’ of the website is ‘to infringe, or to facilitate 2015, the Court was not prepared to give that access until DBC gave an the infringement of, copyright’. The Federal Court has not yet delivered undertaking to the Court that it would only seek an amount from the a judgment considering the new section 115A of the Copyright Act, alleged infringers in pre-litigation correspondence that it could reason- however three cases concerning applications for blocking injunctions ably expect to be awarded in an action for copyright infringement. are before the Court at the time of writing. Similar mechanisms are The Court considered that the appropriate amount would be the cost already in force in several European Union member countries, including of purchasing the movie legally as well as a proportion of DBC’s costs the United Kingdom, where several copyright-infringing websites have of obtaining preliminary discovery. The Court also required DBC to been blocked since the legislation came into effect. provide a surety of A$600,000 to ensure its compliance with the under- Virtual private networks (VPNs) are not captured by the ‘primary takings. In September 2015, DBC again sought access to the account purpose’ test. VPNs allow users to securely access a private network as if holder details, but this time it sought only a subset of the contact infor- they were sitting at a local computer on that network, and access public mation in exchange for modified undertakings and a reduced surety of networks like the internet from there. VPNs are excluded from the new A$60,000. The Court rejected DBC’s proposal in a judgment delivered laws because they can be used for legitimate purposes or used to access on 16 December 2015, saying that it was not prepared to ‘do anything legitimate copyright material distributed in a foreign geographic market. beyond what [the Court] indicated in the August judgment’. Following Injunctions against Australian websites will continue to be consid- the Court’s rejection of DBC’s September application, DBC has now ered under the existing provisions of the Copyright Act. allowed its application to gain access to account holder details to lapse, so bringing this litigation to an end.

• a person may be liable for infringements of copyright by their employ- ‘Additional damages’ and damages for detinue or conversion may also ees or agents, and as a joint tortfeasor; and be sought (see question 41). • copyright can be infringed by the importation of infringing articles into Australia for trade purposes such as the sale or hire of, and trade 44 Can attorneys’ fees and costs be claimed in an action for dealings with, infringing articles in Australia, and by permitting a copyright infringement? place of public entertainment to be used for an infringing public per- Generally, a successful party will obtain an order that the unsuccessful formance of a literary, dramatic or musical work. party pay a contribution towards its legal costs. Those costs are assessed by reference to a court-administered scale of costs. 41 What remedies are available against a copyright infringer? Nevertheless, costs are discretionary. The standard costs order can A copyright owner can obtain an injunction, and can either seek damages be varied where the unsuccessful party was successful on a number of or an account of profits. A copyright owner may also obtain an order for issues, where the court disapproves of the conduct of a party and in cer- delivery up of infringing articles and an order for payment of a contribution tain circumstances where a settlement offer was made in advance by one towards its legal costs. Each of these remedies is subject to the discretion of the parties. of the court. If the copyright owner seeks an order for damages, he or she may also 45 Are there criminal copyright provisions? What are they? seek an order for additional damages where the infringement was flagrant, There is a wide range of criminal copyright provisions, which mainly where there is a perceived need for deterrence or where there are other address commercial dealings in infringing items or possession of infring- relevant circumstances. ing items for commercial dealings, circumvention devices and systems, The copyright owner may also seek an order for damages for con- electronic rights management and broadcast decoding. version or detinue of infringing goods, although the court must consider The maximum penalties are greater where the offence also involves an whether ordinary damages have already adequately compensated the unauthorised digitisation of a hard copy or analogue work. copyright owner. Offences may be indictable, summary, or strict liability, depending on An account of profits looks to the profit made by the defendant as a the seriousness of the offence and the level of fault involved. result of the copyright infringement. The court is therefore meant to make an allowance for the costs incurred by the defendant in making its profits, 46 Are there any specific liabilities, remedies or defences for and is also meant to make an allowance for those profits made as a result of online copyright infringement? the other contributions made by the defendant. Online copyright infringement is actionable, and the Copyright Act was A civil search warrant, known as an Anton Piller order, can also be substantially revised in 2001 for the purpose of more clearly targeting obtained on an ex parte basis in certain situations where there is a risk that infringement occurring online. the defendant would destroy relevant evidence if proceedings were initi- Subject to some requirements, remedies against carriage service pro- ated in the usual way. viders for any online copyright infringement is limited to exclude any monetary relief. The Copyright Act does, however, include a copyright notice 42 Is there a time limit for seeking remedies? takedown procedure that can be used to request that a carriage service An action must generally be commenced within six years of the date of provider prevent access to online material. See also question 4 regarding the infringement. section 115A, which enables a copyright owner to obtain a blocking injunction against an ISP in certain circumstances. 43 Are monetary damages available for copyright infringement? Damages are available for copyright infringement. Damages are intended 47 How may copyright infringement be prevented? to compensate the owner for the diminution in the value of the copyright Naturally, strategies will vary depending upon the nature of the copyright as a result of the infringement. The owner will usually either seek to prove work and the market for that work. Strategies will commonly involve one an impact on its own sales, or prove what royalty it could have reasona- or more of: bly charged. • including clear and prominent copyright notices; Damages are not available where the defendant establishes that he or • monitoring the marketplace and developing an enforcement policy; she was not aware, and had no reasonable basis for being aware, that the • incorporating anti-circumvention measures or electronic rights man- actions constituted an infringement. agement information;

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• use of customs notices; • the Trade Related Aspects of Intellectual Property (TRIPS) Agreement, • imposing contractual terms; and under the General Agreement of Tariffs and Trade (GATT), managed • using supporting intellectual property rights. by the World Trade Organization; and • the World Intellectual Property Organization (WIPO) Copyright Relationship to foreign rights Treaty (WCT) and WIPO Performances and Phonograms Treaty (WPPT) as of 26 July 2007. 48 Which international copyright conventions does your country belong to? Australia is also a signatory to a number of bilateral and multilateral agree- Australia is a signatory to a number of international treaties, conventions ments that deal with copyright, including the Australia-US Free Trade and agreements that deal with copyright, including: Agreement (AUSFTA) and the Trans-Pacific Partnership (TPP). • the Berne Convention for the Protection of Literary and Artistic Works; • the Universal Copyright Convention; 49 What obligations are imposed by your country’s membership • the International Convention for the Protection of Performers, of international copyright conventions? Producers of Phonograms and Broadcasting Organisations and Final Australia’s obligations under these international copyright conventions Act (the Rome Convention); generally involve enacting copyright legislation that meets the require- • the Convention for the Protection of Producers of Phonograms ments imposed by the international conventions and providing reciprocal Against Unauthorised Duplication of their Phonograms (the Geneva rights for the citizens of the other signatory countries. Phonograms Convention);

Kristin Stammer [email protected] Helen Macpherson [email protected]

ANZ Tower Tel: +61 2 9225 5000 161 Castlereagh St Fax: +61 2 9322 4000 Sydney www.herbertsmithfreehills.com Australia

Austria

Sonja Dürager bpv Hügel Rechtsanwälte OG

Legislation and enforcement Agency 1 What is the relevant legislation? 5 Is there a centralised copyright agency? What does this In Austria, the Federal Law on Copyright in Works of Literature and Arts agency do? and on Related Rights (the Copyright Act) in the current version of the Austria does not have a copyright agency, because the copyright origi- Federal Gazette I No. 19/2015 provides for the protection of the intellectual nates from the creation of a work and no formal requirements (eg, reg- property of the author and therefore defines the terms author, co-author, istration in public registers) need to be fulfilled in order for copyright to requirements of a protected work and the author’s moral rights. Further, be acknowledged. the law prescribes the exclusive exploitation rights of an author and the exemptions from it. Subject matter and scope of copyright The Federal Law on Collecting Societies 2016, in the current version of 6 What types of works are copyrightable? the Federal Gazette I No. 27/2016, particularly provides for the operational requirements of a collecting society, as well as for their rights and duties The Copyright Act protects original intellectual productions in the fields of towards copyright owners on the one hand and users on the other hand. literature, music, art and cinematography. Works of literature include works of language of any kind, including 2 Who enforces it? computer programs; theatrical works expressed by gestures or other move- ments of the body (works of choreography and pantomime); as well as The civil law provisions of the Copyright Act regarding infringement of works of a scientific or didactic nature which consist of two-dimensional or the exploitation rights and the moral rights are enforced by the author three-dimensional pictorial representations, unless they constitute works of a work or the exclusive licensee, who is entitled to legal enforcement of art. according to the licence agreement, through remedies before the ordinary Works of art include works of photography (photographic works), civil courts. architecture and applied art (commercial art). Criminal law provisions are enforced by a public prosecutor upon a Cinematographic works (films) are motion pictures in which the prosecution request from the injured right holder. events and actions that form the subject of the work are presented either by images only or simultaneously by images and sounds, irrespective of 3 Are there any specific provisions of your copyright laws that the nature of the process employed in the production or performance of address the digital exploitation of works? Are there separate the work. statutory provisions that do so? The Copyright Act does not legally define ‘musical art’. However, it is The digital exploitation of works is considered in Austrian copyright law. understood in the prevailing literature that musical art includes the supply Section 18a of the Copyright Act provides for the protection of an author’s of tones as a whole including the melody. ‘making available’ right. It is prescribed that the author has the exclusive right to make his or her works available to the public by wire or wireless 7 What types of rights are covered by copyright? means, in such a way that members of the public may access them from a The Copyright Act covers exploitation rights and moral rights (see ques- place and at a time individually chosen by them. tion 14). This provision transposes article 3 of Directive 2001/29/EC of the Exploitation rights grant the author the exclusive right to exploit his European Parliament and of the Council of 22 May 2001 on the harmo- or her work in the manner reserved to him or her in sections 14 to 18a of nisation of certain aspects of copyright and related rights in the informa- the Copyright Act. This definitive catalogue comprises the following rights: tion society. • the right to adapt and translate the work (section 14, paragraph 2); • the right to communicate to the public of the contents of a work of lit- 4 Do your copyright laws have extraterritorial application to erature or cinematography for the first time (section 14, paragraph 3); deal with foreign-owned or foreign-operated websites that • the right of reproduction (section 15); infringe copyright? • the right of distribution (section 16); Austrian copyright laws do not have extraterritorial application. • the right of rental and lending (section 16a); Additionally, on 22 January 2015 the European Court of Justice ruled • the right of broadcasting (section 17); in the Hejduk case (No. C-441/13) that copyright owners are entitled to file • the right of recitation, performance and presentation (section 18); and the action before a court in the jurisdiction in which the damage arising • the right to make a work available (section 18a). out of an alleged infringement of copyright occurs or is likely to occur. The occurrence of damage or the likelihood of its occurrence arise from The exploitation rights ensure that the author can decide him or herself if, the accessibility of a website in the respective member state of the court; and to what extent, his or her work shall be exploited. In general, the use of it is, however, irrelevant whether the website is directed at a member state a work is not admissible without the author’s consent (except for the limita- in which the court seised is situated. However, given that the protection tion of copyright that is determined by law). Note that only a certain type of of copyright and rights related to copyright granted by the member state use that can be subsumed under the exploitation rights shall be exclusively of the court seised is limited to the territory of that member state, a court reserved to the author. Any new and unclassifiable type of use is not bound seised on the basis of the place where the alleged damage occurred has by the exploitation rights, and, hence, a work could be used in this manner jurisdiction only to rule on the damage caused within that member state. freely without consent of the author.

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8 What may not be protected by copyright? and distributed in other newspapers and periodicals (section 44). This The Copyright Act only protects works that are peculiar and intellectual shall not apply, however, where reproduction is expressly prohibited creations. According to court practice the creation of a human mind is by the author (with wording such as ‘reprinting only with permission deemed peculiar and intellectual if the work is the result of creative mental of the publisher’ or similar terms). activity, which has obtained its peculiarity, that makes it distinguishable from other works, from the personality of the creator, who expresses his 10 What are the standards used in determining whether a or her innermost nature in the respective creation and these personal ele- particular use is fair? ments make it unique. Hence, the creation must stand out from ordinary Considering that the Copyright Act does not include a fair use doctrine, and popular works. there are no standards that determine fair use of a work. Thoughts as such (‘ideas’) are not protectable under Austrian law. Austrian law prescribes the requirements of use of a work without the Only the specific form of the content is subject to protection. Hence, consent of the author for certain exemptions individually (see, for exam- ideas must be brought in a tangible form of expression in order to ple, the right of citation or use by schools). Further, all limitations to copy- become copyrightable. right have to recognise borders, where they infringe moral interests of the A distinction has to be made between protectable ideas and free con- author (section 57 of the Copyright Act). Hence, there are certain principles tent (public domain). For instance, any inspiration from nature or the chro- that have to be adhered to in order to perpetuate the right of integrity of nology of historical events is in the public domain, hence, anybody can works and the recognition or designation of authorship. According to sec- bring this material into a certain form. Only the peculiar form into which tion 57, paragraph 1 of the Copyright Act, the permissibility of abridging, the author has transformed the free content shall then be protectable. adding to or otherwise altering a work itself, its title or the designation of Further, according to section 7 of the Copyright Act, laws, orders, offi- the author shall also be determined in accordance with the right of integ- cial decrees, public notices and decisions, or official works produced exclu- rity in the case of free uses. In no event may the meaning and essential sively or mainly for official use, shall not enjoy copyright protection. nature of the work be distorted. Further, in general the author also has to be denominated. 9 Do the doctrines of ‘fair use’ or ‘fair dealing’ exist? The Copyright Act does not include a fair use doctrine. The Austrian law 11 Are architectural works protected by copyright? How? expressly determines the rights of the users to freely (without the consent According to section 3 of the Copyright Act, works of art also include works of the author) use a work and hence, prefers specific statutory exemptions of architecture. In order to be protectable, the elected work must not only from copyright infringement to the general concession that any use of a be functional but also an artistic interpretation. Solely technical solutions work could be fair depending on certain factors (eg, the purpose of use, would not be protectable. Hence, whether an architectual work can be effect of the use, etc). granted protection will depend on whether the form elements only rely on Chapter VII of the Copyright Act contains several provisions stipulat- technical aspects or whether they have also been included simply for rea- ing limitations to the exploitation rights of the right holder. The most rel- sons of taste, beauty and aesthetics, and hence, the artist has decided on evant are: the elements by use of creative exploitation of a certain margin. • Copyright shall not prevent the use of works as evidence in proceed- In addition, models, plans, designs and drawings of buildings can ings before courts or other authorities or for the purposes of adminis- be protected as works, provided that the particular technical task can be tration of criminal justice and public safety (section 41). solved in different ways and that the concrete selected execution is not • Temporary acts of reproduction, which are transient or incidental and only functional, but can moreover be qualified as artistic interpretation an integral and essential part of a technological process and whose (see Austrian Supreme Court, Case No. 4 Ob 26/00b). sole purpose is to enable a transmission in a network between third parties by an intermediary, or a lawful use of a work or other subject 12 Are performance rights covered by copyright? How? matter to be made, and which have no independent economic signifi- Performance rights in the sense of the rights granted to performers, such as cance, shall be exempted from the reproduction right of the copyright musicians, actors or dancers, or any person reciting or performing a work holder (section 41a). of literature or music, on the one hand and to promoters on the other hand • Any person may make single copies of a work on paper or a similar are protected by the Copyright Act as ‘neighbouring (or related) rights’. data carrier for their own use (including for professional use), and on Performers are granted moral and exploitation rights. Hence, a per- any other data carrier (particularly digital copies) only for personal use former shall have the exclusive right to fix his or her recitation or perfor- and neither for direct nor indirect commercial use. Schools and uni- mance, including broadcasting thereof, on a video or audio recording versities may make and distribute copies for purposes of teaching or medium, and to reproduce or distribute such recording. At the request of training in the quantities required for a specific class or lecture (repro- the performer, his or her name (or pseudonym) shall be shown on the video duction by schools for own use). or audio media. This may not be done without his or her consent. Further, • According to section 42c of the Copyright Act, works that become per- it is illegal to use a performance in an amended version, if these amend- ceivable to the public during the reporting of current events may, to ments are of a nature that harms the reputation of the performer (section the extent warranted by the purpose of information, be reproduced, 68, paragraph 1a of the Copyright Act). The same applies to the distribution distributed, broadcast or used for public lectures, performances and reproduction for the purpose of distribution of audio media on which or presentations. the performance is fixed. • Works may be reproduced, distributed, broadcasted, made available Unless an exception is permitted by law, recitation and performances to the public and used for public recitation, performance and presen- given on the instructions of a promoter may be recorded on video or audio tation, provided that they are only used coincidentally and in pass- media only with the consent of the promoter. Video or audio media pro- ing without reference to the primary object of the exploitation action duced in violation of this provision may not be reproduced or distributed (inessential attachment). (section 66, paragraph 5 of the Copyright Act). • Generally speaking, reproduction and distribution, as well as public recitation and broadcasting, shall be permissible when citing indi- 13 Are other ‘neighbouring rights’ recognised? How? vidual passages of a work of language that has been published, provided that the use in its certain extent is legitimated by the specific Photographs purpose (section 42f of the Copyright Act). Inter alia, citation from The Copyright Act acknowledges the protection of photographs (ie, images works of literature as well as from musical and visual art works shall produced by a photographic process, in contrast to photographic works) be admissible. in the chapter about neighbouring rights. The photographer shall have • According to section 43 of the Copyright Act, speeches made in an the exclusive right to reproduce, distribute, publicly present by means of assembly responsible for the conduct of public affairs, or in the course optical devices and broadcast such photograph. In the case of photographs of proceedings before a court of law or other public agency, as well as produced commercially, the owner of the enterprise shall be deemed the political speeches given in public, may be reproduced, distributed, producer. Where the producer has marked his or her name (pseudonym, publicly delivered and broadcast for the purpose of reporting. trade name) on a photograph, copies thereof made by other persons and • Individual articles contained in a newspaper or periodical concern- intended for distribution shall also bear the corresponding reference to the ing current economic, political or religious issues may be reproduced photographer. Copyright protection in respect of photographs terminates

50 years after they were taken or, where the photograph is made public name or a pseudonym known to be used by the author – or in the case of before the expiry of that term, 50 years after publication. works of art, the artist’s known mark – failing proof to the contrary. Hence, if a work is not marked respectively, this presumption of authorship is not Audio recordings applicable, and hence, considering that it is not possible to determine a cer- Any person who fixes acoustic phenomena on an audio medium for the tain author, the protection period cannot follow the death of the author. purpose of repeatable communication (the producer) shall enjoy the exclusive right to reproduce and distribute the audio medium. Reproduction 16 What are the consequences for failure to display a copyright shall be deemed to include the use of an audio medium for reproduc- notice? tion on another audio medium. In the case of commercially produced Not applicable. audio media, the owner of the enterprise shall be deemed the producer. Protection of audio recordings shall terminate 50 years after their produc- 17 Is there a requirement of copyright deposit? tion, but if the recording is made public before the expiry of such term, the No, there is no such requirement. term shall be 50 years after publication. 18 What are the consequences for failure to make a copyright Broadcastings deposit? Any person who transmits sounds or images by broadcasting or similar means shall have the exclusive right to transmit the broadcast simultane- Not applicable. ously over another transmitter, to fix the broadcast on a video or audio medium (in particular, in photographic form) and to reproduce and distrib- 19 Is there a system for copyright registration? ute such medium. Protection of broadcasts shall terminate 50 years after No, there is no copyright registration in Austria. the broadcast. 20 Is copyright registration mandatory? Databases Not applicable. A database shall enjoy protection under granted neighbouring rights if the obtaining, verification or presentation of its contents have required qualita- 21 How do you apply for a copyright registration? tively or quantitatively a substantial investment. Therefore, the content of Not applicable. the database and not the structure itself, which could only be protected as copyrightable work, is subject to these provisions, and hence, these provi- 22 What are the fees to apply for a copyright registration? sions implement more or less a protection of the investment. Any person who has made such an investment shall have the exclusive right to repro- Not applicable. duce, distribute, broadcast and publicly communicate the database as a whole or a qualitatively or quantitatively substantial part of the database. 23 What are the consequences for failure to register a The repeated and systematic reproduction, distribution, broadcasting and copyrighted work? public communication of non-substantial parts of the database shall be Not applicable. deemed equivalent to these acts of exploitation where such acts conflict with the normal exploitation of the database or unreasonably prejudice Ownership and transfer the legitimate interests of the maker of the database. The rights in data- 24 Who is the owner of a copyrighted work? bases shall expire 15 years after the completion of the database; however, if the database is published before the end of that period, the term shall be The creator of a work is the owner of a copyrighted work. Because of the 15 years after publication. legal requirement for a work to be a unique, intellectual creation an author can only be a natural person, not a legal entity. For the authorship it does 14 Are moral rights recognised? not matter whether the author has legal capacity or not; therefore, children and mentally disabled people can be authors. The Copyright Act recognises moral rights of the authors: • Protection of authorship (section 19): where the authorship of a work 25 May an employer own a copyrighted work made by an is contested or the work is attributed to a person other than its crea- employee? tor, the latter shall be entitled to claim authorship. This right would be infringed if a third party wrongly attributes a work to him or herself. The Copyright Act only regulates the allocation of rights between employer Waiver of this right shall be without effect. and employee in copyrightable works for certain cases (eg, software). In all • Designation of the author (section 20): the author shall determine other cases, the general rule would apply whereby the copyright remains whether and in what manner the work is to bear a designation of the with the author (the employee) and the employer can only be successor in author (eg, his or her full name or a pseudonym), or if the work shall be exploitation rights. published anonymously. Section 40b of the Copyright Act provides that if a computer program • Protection of works (section 21): any abridgements, additions or other is created by an employee in the performance of his or her employment alterations to the work itself, its title or the designation of the author duties, the employer shall enjoy an unlimited right of utilisation in the must only be made with the author’s consent thereto, unless the law work unless the employer has agreed otherwise with the author of the pro- permits such alteration. Such alterations, in particular, shall be per- gram. This provision only applies to software; however, there are several missible if they are in accordance with the accepted practices of fair legal opinions that would also apply these rules by analogy to other works trading, that is to say, alterations necessitated by the manner or pur- that have been created by employees in the performance of their employ- pose of the authorised use of the work (eg, the adaption to new ortho- ment duties. graphic rules). However, there are certain alterations that are under no In addition, the Austrian Supreme Court has concluded, from the circumstances admissible, because they infringe the moral interests in employment of employees in certain functions with the purpose of creat- the works (protection from distortion of a work). This would be, for ing of works (eg, marketing departments) for the benefit of the employer, instance, the change of the fundamental character of a work. that the implicit granting of exclusive exploitation rights in the works that have been created in the performance of the employment duties can be Copyright formalities assumed, unless an agreement to the contrary exists.

15 Is there a requirement of copyright notice? 26 May a hiring party own a copyrighted work made by an There is no requirement of copyright notice in Austria. independent contractor? However, it is recommended for authors to mark their work as their The hiring party does not acquire the copyright in a certain work, consider- own in some way, because according to section 12 of the Copyright Act, ing that this is not transferable, however, he or she is granted (implicitly) the person designated in the usual manner as the author on the copies of certain exploitation rights, if the respective commission makes this neces- a work that has been published or on the original of a work of art shall be sary. The Austrian Supreme Court has stated that according to sections 26 presumed to be the author provided the designation gives his or her true and 33 of the Copyright Act, the scope of the rights that are granted to the www.gettingthedealthrough.com 13

© Law Business Research 2016 AUSTRIA bpv Hügel Rechtsanwälte OG hiring party (the licensee) cannot be broader than required for the purpose exercised in accordance with the purpose for which it was granted or is of the intended use of the work. exercised only to an extent so inadequate as to prejudice important interests of the author, the latter, provided he or she is not at fault, may rescind 27 May a copyrighted work be co-owned? the contract prematurely insofar as it relates to such right to use. The right Co-ownership is admissible under section 11 of the Copyright Act. The to rescind the contract for these reasons may not be waived more than author, who has created a work together with a third party, and thus, who three years in advance. has worked together consciously with the purpose of creating a work, is qualified as co-author. Further, the respective work must form an indivis- 33 Can documents evidencing transfers and other transactions ible whole. Joint authors share copyright. Hence, any alteration or exploita- be recorded with a government agency? tion of the work requires the consent of all co-owners. Not applicable.

28 May rights be transferred? Duration of copyright Copyright and moral rights cannot be transferred or be subject of a legal 34 When does copyright protection begin? succession. Exploitation rights, however, can be subject to licence agree- Protection starts with the creation of the work. ments, which assign the right to use the copyright protected work in a certain manner. 35 How long does copyright protection last? 29 May rights be licensed? In Austria, section 60 of the Copyright Act provides for a protection period of 70 years following the death of the author with regard to literary and Exploitation rights can be licensed to another individual person or a legal artistic works, and musical art. In the case of a co-authorship the protec- entity. There are two types of licensing according to law: section 24 of tion period ends 70 years after the death of the last surviving co-author. If the Copyright Act regulates that the author may authorise others to non- the speech or performance has been recorded on an audiovisual carrier or exclusively use the work by some or all of the methods of exploitation an audio carrier, the term of copyright protection lasts for 70 years as of the reserved to the author under sections 14 to 18a (authorisation to use); fur- publication of the recording. ther, he may also grant to other persons the exclusive right so to do (right to The neighbouring right for photos lasts for 50 years as of taking the use), which entitles the licensee to prevent the right holder as well as third photo, or where the photograph is made public before the expiry of that parties from using the work in the licensed scope. term, 50 years after publication. 30 Are there compulsory licences? What are they? 36 Does copyright duration depend on when a particular work A compulsory licence only exists for audio recording (section 58 of the was created or published? Copyright Act). Where the entitled person has permitted another person to The protection period for anonymous and pseudonymous works shall run reproduce and distribute a musical work on an audio medium, any manu- for 70 years after its creation. But when the work is published before the facturer of such medium may require the entitled person, once the work expiry of that period, copyright shall run for 70 years after publication. has been published, to grant him or her the same uses of the work for equitable payment; where the manufacturer has his or her place of residence or 37 Do terms of copyright have to be renewed? How? principal place of business abroad, this shall apply, subject to international treaties, only on condition that manufacturers having their place of resi- The terms for copyright protection are not renewable. dence or principal place of business in Austria are treated, in the country concerned, in approximately the same way, or at least in the same way as 38 Has your jurisdiction extended the term of copyright manufacturers having their place of residence or principal place of busi- protection? ness in that country. This provision also applies to works of language com- Prior to 1933, copyright protection expired 30 years after the death of the bined with a musical work, where the right holder has permitted another author. On 15 December 1933, the Austrian legislator extended the term by person to reproduce and distribute the work of language, so combined, on 20 years, to 50 years after the death of the author. In 1953, the protection audio media. term was further increased up to 57 years. The increase was conditioned by the circumstances of the Second World War. It was required that the work 31 Are licences administered by performing rights societies? was created before 1 January 1949 and that the work was still protected in How? 1953 (thus the respective creator must have died after 31 December 1902). Some types of exploitation rights of certain works (depending on the scope With an amendment to the Copyright Act on 16 December 1972 (Federal of the collecting society’s permission) are administered by collecting soci- Law Gazette 492/1972), Austria increased the protection term again up eties (‘performing rights societies’) upon explicit request of the author. to 70 years in accordance with the changes in Germany in 1965. Since Hence, there is no obligation of an author to license a work through a col- then, the general protection term for copyright protectable works has lecting society (no mandatory membership). not changed. Their main task is to collect remuneration for the right holders and distribute it to them. Collecting societies make rights to works and related Copyright infringement and remedies rights in the sense of copyright law available that provide users with the 39 What constitutes copyright infringement? necessary authorisations against consideration or make other claims under the Copyright Act. The collecting societies conclude, with the right holders In general, any use of a work that fulfils the criteria for a protectable work at their request under appropriate and consistent conditions, a contract for under the Copyright Act in a manner that is comprised by the types of the perception of the rights and claims that belong to their field of activ- exploitation mentioned in sections 14 to 18a of the Copyright Act without ity (management agreements). On this basis the collecting societies grant the consent of the author (or co-authors) constitutes a copyright infringe- permission to use the works to the users under appropriate conditions and ment, unless the use falls under the limitations to copyright. an adequate fee. Additionally, if a user has been granted a licence to use the work, and he or she disregards the scope of this licence, this also constitutes an 32 Is there any provision for the termination of transfers of infringement of the exploitation rights of the right holder (apart from the rights? breach of contract between the parties). With regard to the granting of a licence on exploitation rights the parties 40 Does secondary liability exist for indirect copyright are free to agree on the duration of the licence (an indefinite term is possi- infringement? What actions incur such liability? ble) and the reasons for terminating the agreement. The parties can agree on a termination at will (a good cause must justify the extraordinary termi- Claims under the Copyright Act can also be asserted against indirect per- nation), but also on a termination without cause but under adherence to a petrators (eg, the instigator), not only against the direct offender. certain notice period. In particular, a specific liability of the entrepreneur is prescribed. Further, the Copyright Act provides certain rules concerning the An action for injunction may also be brought against the owner of an termination of exploitation rights. Where the right to use a work is not enterprise where such infringement has been committed or is likely to

© Law Business Research 2016 bpv Hügel Rechtsanwälte OG AUSTRIA be committed within the activities of the enterprise by one of his or her employees or agents. Further, where the infringement giving rise to equi- Update and trends table remuneration is committed by an employee or agent in the course of the activities of an enterprise, the owner of the enterprise shall be liable to The Austrian Copyright Act was amended last year. The amendment was published in Federal Gazette I No. 99/2015 and came into pay such remuneration. The owner of the enterprise shall also be liable to force on 1 October 2015. One of the most important changes was the compensate damages if he or she was aware or should have been aware of imposing of copyright levies for all storage media. The levy has to be the violation. paid by the importer of the storage media. Further, a right holder can also apply for an injunction against an intermediary whose services are used by a third party to infringe a copyright or related right, provided that the intermediary is aware of the In the event of negligent or intentional behaviour damages may be copyright infringement and hence, liable under the rules of the Austrian awarded instead of an adequate compensation. The author is entitled to E-Commerce Act. either damages including the own lost profits or the surrender of profits made by the infringer. In order to facilitate the bringing of evidence, the 41 What remedies are available against a copyright infringer? author is also entitled to assert lumped damage claims. The amount of a The author is entitled to bring a forbearance claim (section 81 of the lumped damage claim is calculated on the basis of double the amount for Copyright Act). Such a cease-and-desist obligation would also include an adequate compensation. obligation to remove the source of the infringement and the infringing products. However, this would only be admissible if the infringer is still 44 Can attorneys’ fees and costs be claimed in an action for legally entitled to remove such products (section 86). copyright infringement? Preliminary injunctions may be granted, inter alia, to secure such In Austria attorneys’ fees can be claimed by the winning party from the los- cease-and-desist claims (section 87c). With regard to preliminary injunc- ing party. The calculation basis for this is laid down in the Attorneys’ Tariff tions, Austrian law focuses on the questions of infringement and validity. Act. Based on a determined amount in dispute, which for intellectual prop- According to a lower evidentiary standard in interim proceedings, it is gen- erty proceedings is €43,200, the fees for all the required court actions (eg, erally sufficient to convince the court that a copyrighted work is valid and hearings and written pleading) are calculated. Hence, in Austria the losing that the occurrence of an infringement is more likely than the opposite. party must reimburse the winning party for the costs of the court proceed- Any person required to pay equitable remuneration or equitable com- ings calculated on these principles. pensation, or to pay damages (see question 43) shall also be required to render accounts to the right holder and to have their correctness verified by an 45 Are there criminal copyright provisions? What are they? expert as a first step (section 87a). The author is also entitled to be furnished with correct and complete Any person who commits an infringement of the kind referred to in sec- information on the producer, content, country of origin and quantity of tion 86, paragraph 1; section 90b; section 90c, paragraph 1; or section copies distributed by the offender. The right to information shall belong to 90d, paragraph 1 of the Copyright Act shall be liable to imprisonment not the person to whom the right to distribute copies in Austria belonged at the exceeding six months or to a fine not exceeding 360 times the daily rate; time of exhaustion (section 87b). ‘daily rate’ means the unit for the calculation of the fine on a certain daily basis. Therefore, Austrian verdicts determine a certain number of such 42 Is there a time limit for seeking remedies? daily rates and the respective amount for these rates. For instance, if the defendant is sentenced to 180 daily rates at €70, the fine in total amounts Claims for equitable remuneration, for equitable compensation, for sur- to €12,600. The infringement shall not, however, be punishable if it only render of profits and for information become time-barred within three involves the unauthorised reproduction or an unauthorised recording of years. Forbearance claims and claims for removal become time-barred a recitation or a performance for personal use or for the personal use of after 30 years. another person, effected free of charge. The offender shall be prosecuted only at the request of the person 43 Are monetary damages available for copyright infringement? whose right has been infringed, and hence, the prosecutor does not initiate Under section 86 of the Copyright Act the owner of a work is entitled to be investigations ex officio. paid an adequate compensation for the use of the work without his or her consent. The monetary compensation is assessed on the basis of a royalty 46 Are there any specific liabilities, remedies or defences for as far as the adequate compensation (and not damages in case of inten- online copyright infringement? tional or negligent behaviour) are concerned. There is minimal case law Section 87b, paragraph 3 of the Copyright Act allows information claims of regarding the assessment of the exact amount of the royalty rate to be paid. the right holder against the internet access provider to identify infringing The licence fees to be paid usually are assessed on the commonly paid users if there is an obvious rights infringement. licence fees.

Sonja Dürager [email protected]

Donau-City-Straße 11 Tel: +43 1 260 50 0 1120 Vienna Fax: +43 1 260 50 133 Austria www.bpv-huegel.com

www.gettingthedealthrough.com 15

47 How may copyright infringement be prevented? 49 What obligations are imposed by your country’s membership There is no failsafe method of preventing copyright infringement. It of international copyright conventions? depends on the circumstances of the case which measures can prevent Austria has transposed the provisions of the most important conventions or help to prevent copyright infringement. Hence, the respective strategy for copyright law (the Berne Convention, the TRIPS Agreement and the must always be a tailor-made solution that recognises the specific risks and WCT) into its own domestic law. As the National Assembly declared the understands the financial, technical and organisational circumstances of accession of these three treaties with no reservations under Austrian con- the right holder to provide the best protection. stitutional law, there was no necessity for the issuance of further implementing laws. Therefore, all these treaties are directly applicable. Relationship to foreign rights Austria is also member state of the European Union and hence, had to transpose a number of directives concerning copyright matters into the 48 Which international copyright conventions does your country national copyright law. The most important directives that are already belong to? transposed into national law are the Directive on the harmonisation of The most important international copyright-related treaties of which certain aspects of copyright and related rights in the information society, Austria is a member are the following: the Directive on the legal protection of databases, the Directive on satel- • the Berne Convention for the Protection of Literary and Artistic Works, lite broadcasting and cable retransmission and the Directive on collective • the Universal Copyright Convention; management of copyright and related rights and multi-territorial licensing. • the Agreement on Trade-related Aspects of Intellectual Property Rights (the TRIPS Agreement); • the World Intellectual Property Organization Copyright Treaty (WCT); • the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations; • the WIPO Performances and Phonograms Treaty (WPPT); and • the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled.

Further, Austria has been a member of the European Convention relating to questions on copyright law and neighbouring rights in the framework of transfrontier broadcasting by satellite since 11 May 1994.

Belgium

Karel Nijs and Vicky Bracke LMBD Prioux

Legislation and enforcement and the provision of means to circumvent such measures is tantamount to a copyright infringement and may be subject to criminal sanctions includ- 1 What is the relevant legislation? ing imprisonment of up to three years or a fine of between €600 and In Belgium, the main copyright statute is the Act of 30 June 1994 on copy- €600,000 (doubled in case of a repeat offence within five years of the right and related rights. With effect from 1 January 2015, the Act has been first infringement). integrated into the new Belgian Code of Economic Law (CEL). This inte- A recent Belgian case involves a claim brought before the Antwerp gration is part of the legislator’s aim to modernise Belgian economic law by Commercial Court by three Flemish broadcasters against RBI, the provider re-grouping all relevant laws into one national code, rather than having a of an internet-based DVR (digital video recording) service called Bhaalu. dispersed set of rules. Save for a limited number of changes, which mainly Bhaalu allows its users to record television programs shown on channels serve the purpose of rendering collective management of copyright more that are part of their television subscription with a Belgian distributor. transparent, the new text carries forward the provisions from the former Subscribers to the Bhaalu recording service must, in order to benefit from Copyright Act. this service, buy a receptor box. The recordings are stored in the cloud and The protection of computer programs and databases were initially gov- can be watched via streaming by subscribers. erned by two separate Acts: the Act of 30 June 1994 implementing Council According to the broadcasters, the service offered through Bhaalu boils Directive 91/250/EEC of 14 May 1991 on the legal protection of computer down, inter alia, to an illegal reproduction of their broadcasting signal and programs (the Computer Programs Act) and the Act of 31 August 1998 communication to the public (violation of article 44, paragraph 1, b and d, implementing Directive 96/9/EC of 11 March 1996 on the legal protection of the former Copyright Act – now article XI.215, b and d, CEL). The court of databases (the Database Act). Both Acts have also been integrated in the agreed that the Bhaalu service constitutes a reproduction which required new Code of Economic Law as Book XI, Titles VI (computer programs) and the broadcasters’ consent, but that the reproduction was made by the sub- VII (databases). scribers, rather than the Bhaalu service provider RBI. It added however that In addition to the provisions contained in the CEL, there are a consider- the Bhaalu devices could not function without the interventions made by able number of royal decrees, which include the following: RBI and that these were inextricably linked to the copyright infringement • Royal Decree of 6 April 1995 on collecting societies; (RBI used the private smartcard of subscribers to the Bhaalu service to • Royal Decree of 18 October 2013 on the remuneration payable in the decrypt the broadcasting signal, however, the making available of a televi- event of private copying; sion subscription to third parties is prohibited by the broadcasters’ general • Royal Decree of 15 October 2006 on the designation of the society terms and conditions). Since the reproduction was accordingly not lawfully charged with the collection and distribution of the remuneration pay- obtained, the private copy exception cannot be successfully relied upon. able in the event of private copying; Finally, the court held that by making the broadcasts available to sub- • Royal Decree of 13 December 2012 on the remuneration payable to scribers of the Bhaalu service at their convenience, in a place and time of authors in the event of public lending; their choosing, RBI violates the broadcasters’ right to communication to the • Royal Decree of 15 December 2006 on the designation of the society public of their broadcasting signal. In this respect, it noted that it is immate- charged with the collection and distribution of the remuneration pay- rial whether or not the communication reaches a new public. According to able in the event of public lending; the court, the requirement of a new public only applies under specific cir- • Royal Decree of 30 October 1997 on the remuneration payable in the cumstances. What counts is the fact that the technical means used by RBI event of reprography; and to communicate the broadcasts differs from the ones used for the original • Royal Decree of 15 October 2006 on the designation of the society broadcasts (Antwerp Commercial Court, 4 November 2014, IRDI, 2014/4, charged with the collection and distribution of the remuneration pay- 673). able in the event of reprography. 4 Do your copyright laws have extraterritorial application to The royal decrees have been adopted under the former Copyright Act, deal with foreign-owned or foreign-operated websites that Computer Act and Database Act but remain in force under the new infringe copyright? legal regime. The laws governing copyright do not contain any specific rules that address this particular issue, but there have been developments in cases regard- 2 Who enforces it? ing the role of intermediaries (internet service providers (ISPs)) that are Copyright enforcement mainly occurs through lawsuits initiated before the relied upon for online infringing activities. Whereas certain ISP services courts. For specific infringements relating notably to collecting societies, a fall within the scope of the so-called ‘safe-harbour’ provisions that limit the complaint may also be filed with the Directorate-General Enforcement and liability of ISPs in an online environment (mere conduit, caching and host- Mediation at the Federal Public Service Economy, SMEs, Self-employed ing services as set forth by the E-Commerce Directive 2000/31/EC), these and Energy. provisions are without prejudice to the right of injunction against an ISP. In a case brought before the Court of Justice of the European Union 3 Are there any specific provisions of your copyright laws that (CJEU) between the Belgian collecting society SABAM and Scarlet, an ISP, address the digital exploitation of works? Are there separate the CJEU reminded that article 15(1) of the E-Commerce Directive prohibits statutory provisions that do so? national authorities from adopting measures which would require an ISP to Article XI.291 of the CEL provides that the circumvention of technical pro- carry out general monitoring of the information that it transmits on its net- tection measures (eg, decoders, set-top boxes for digital television, techni- work. This includes national measures that would require ISPs to actively cal applications such as video-on-demand, and copy control mechanisms) monitor all the data of each of its customers in order to prevent any future www.gettingthedealthrough.com 17

© Law Business Research 2016 BELGIUM LMBD Prioux infringement of intellectual property rights. It also noted that the protection Appeal held that there was no material evidence to support the claim that of the fundamental right to property, which includes the rights linked to the cover of the Mexican classic song ‘La Malagueña’ made by Los Trios intellectual property, must be balanced against the protection of other fun- Paraguayos, and in particular the contribution to that cover by the band’s damental rights, such as the freedom to conduct business. The court con- harpist Digno Garcia, would be eligible for copyright protection. According cluded that an injunction, by virtue of which an ISP would be ordered to put to the court, the mere assertion that Mr Garcia’s typical ‘refined and strik- in place, as a preventive measure, at its sole expense and for an indefinite ing harp compositions’ would be immediately recognisable is insufficient period of time, an electronic communications filtering system with a view to to this end (Brussels Court of Appeal, 20 January 2015, general docket No. identifying the circulation of files containing allegedly copyright-protected 2011/AR/726). material and subsequently blocking the transfer of such files, would result in a serious infringement of the freedom of the ISP concerned to conduct 7 What types of rights are covered by copyright? its business. Any such injunction would accordingly not respect the require- The rights conferred by copyright are twofold and include both economic ment that a fair balance be struck between the fundamental rights at stake and moral rights. (CJEU, 24 November 2011, C-70/10, SABAM v Scarlet, see also CJEU, 12 July Economic rights relate to the exploitation of the work which, as a mat- 2011, C-324/09, L’Oréal v eBay, CJEU, 16 February 2012, C‑360/10, SABAM ter of principle, is the exclusive prerogative of the author. Economic rights v Netlog NV and CJEU, 29 January 2008, C-275/06, Promusicae). include (i) the right to reproduce the work, which entitles the author to pro- In its decision of 27 March 2014, the CJEU mitigates this view some- hibit direct or indirect, temporary or permanent, material or intellectual, what, by stating that an ISP that allows its customers to access protected reproduction or copying of the work by any means, in any form, in whole subject matter made available to the public on the internet by a third party or in part, in an identical manner or with differences, including translations may be ordered to block its customers’ access to such copyright-infringing and adaptations, (ii) the right to distribute the work, and (iii) the exclusive website. As in the previous case, the court recalls that, within the frame- right to broadcast or communicate the work to the public. work of such an injunction, copyrights and related rights primarily enter Authors of graphic and plastic work moreover have a so-called ‘tag into conflict with the freedom to conduct a business, which economic along’ or resale right. The purpose of this right is to ensure that these agents such as ISPs enjoy, and with the freedom of information of internet authors, or their heirs of beneficiaries, share in the economic success of users. Accordingly, it is for the courts of the member states to ensure that a their original works of art, by granting them a percentage of the resale price fair balance is struck between the injunction and its enforcement and those of a work each time it is sold on. With the entry into force of the CEL, the fundamental rights (CJEU, 27 March 2014, C-314/12, UPC Telekabel Wien legislator switched from a system of optional to a compulsory system of col- GmbH v Constantin Film Verleih GmbH and Wega Filmproduktionsgesellschaft lective management. As such, authors of a graphic or plastic work are no mbH). longer able to exercise their tag along right on an individual basis and resell- ers are no longer entitled to pay resale rights directly to the authors. The Agency intervening collecting society in Belgium will be either SABAM or SOFAM. 5 Is there a centralised copyright agency? What does this agency See also question 14 regarding moral rights. do? 8 What may not be protected by copyright? There is no centralised copyright agency. This can be explained by the fact that copyright protection is not subject to any particular formalities such According to article 2(2) of the Berne Convention, mere ideas or concepts as registration. cannot be protected by copyright. This is in line with, among other provisions, article 9(2) of the TRIPS Agreement, which states that ‘copyright pro- Subject matter and scope of copyright tection shall extend to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such.’ The news of the day or mis- 6 What types of works are copyrightable? cellaneous facts with the character of mere items of press information are Article XI.165 paragraph 1, CEL grants protection to the author of a ‘liter- equally excluded in accordance with article 2(8) of the Berne Convention. ary or artistic work’, which is to be interpreted broadly to include all types In a case brought by Dutch company Friesland Brands against the of works in the broadest sense. In its decision of 16 July 2009, the Court of Belgian manufacturer of, inter alia, whipped cream dispensers, the Brussels Justice of the European Union defined a work as any subject matter that is Court of Appeal held that the spraying nozzle of the dispenser marketed by original in the sense that it is the author’s own intellectual creation (CJEU, Friesland is not eligible for copyright protection. According to the court, the 16 July 2009, C-5/08, Infopaq). characterising element of the nozzle is determined solely by its technical The main criterion for copyright protection is, accordingly, originality. function. The other elements also lacked originality, whether taken sepa- A work must further be expressed in a particular form. Mere ideas, con- rately or as a whole (Brussels Court of Appeal, 4 November 2014, joined cepts or methods are not protected. According to the CJEU, the criterion cases 2011/AR/950 and 2012/AR/2401). of originality is satisfied when the author expresses his or her creative abil- In the same way, in a recent judgment concerning a dispute between ity by making free and creative choices and thus stamping his or her ‘per- Jean Cassegrain SAS (Longchamp) and a Belgian reseller of leather hand- sonal touch’ (CJEU, 1 December 2011, C-145/10, Painer and 1 March 2012, bags, the Ghent Court of Appeal denied copyright protection to Jean C-604/10, Football Dataco). Cassegrain’s handbag ‘Le Pliage’, on the basis that the characteristics of Artistic value or novelty are not a prerequisite for protection, but the a style or trend cannot be copyright protected, given that such protection absence of novelty may, in some circumstances, serve as an indication that could constitute an obstacle to the freedom of expression of other poten- the work lacks originality, particularly where it is based to a large extent on tial creators (Ghent Court of Appeal, 20 October 2014, Ing.-Cons., 2014, an already existing work. 739). The decision of the Ghent Court of Appeal runs counter, however, to Provided the conditions set out above are met, any production in the the position taken previously by Brussels and Liège Court of Appeal that literary, artistic or even scientific domain is eligible for copyright protec- handbags are eligible for copyright protection (Brussels Court of Appeal, 16 tion. Categories of protected works include writings, lectures, dramatic November 2004, RAGB, 2005, 1837; Liège Court of Appeal, 28 December or musical works, choreographic works, musical compositions, cinemato- 2006, IRDI, 2007, 26). graphic works, works of drawing, painting, architecture, sculpture, engraving and lithography, photographic works, works of applied art, illustrations, 9 Do the doctrines of ‘fair use’ or ‘fair dealing’ exist? maps and plans. The protection of advertising slogans and leaflets, book As is the case in most other continental EU member states, the Copyright titles and user manuals has also been accepted in case law to the extent that Act does not contain a general exception for fair dealing or use. The Brussels these items meet the requirement of originality. Court of Appeal recently confirmed that, in contrast with the Anglo-Saxon Models and designs, regardless of whether they are registered, can also legal system, there is no room for a general exception in the public inter- be protected under the Copyright Act. Computer programs are treated as est (Brussels Court of Appeal, 5 May 2011, Google News, IRDI, 2011/3, 265). literary works in accordance with the Computer Programs Act (now Book Instead, the balance between the interest of the author in having his or her XI, Title 6, CEL). The protection extends to preparatory design materials work protected and that of the public in using a copyright-protected work is and the expression of the program in any form, with the exclusion, however, achieved through a limited number of exceptions that prevent the author of the ideas and principles underlying the computer program. from opposing the use of his or her work by others. According to article It is for the party claiming copyright protection to demonstrate that the XI.190, CEL once the work has been (lawfully) disclosed for the first time, conditions are met. In its decision of 20 January 2015, the Brussels Court of the author may no longer prohibit:

• the reproduction and communication to the public, for the purposes of reproduction right are subject to the so-called three-step test. According to information, of short fragments of the work (eg, in news reports); this provision, the exceptions shall only be applied in certain special cases • short quotations for the purpose of criticism, polemic, teaching or sci- which do not conflict with a normal exploitation of the work or other sub- entific works, whereby the quotation shall not be longer that what is jus- ject matter and do not unreasonably prejudice the legitimate interests of tified by its purpose. The source and author should also be mentioned. the right holder). In a case brought by Belgian collecting society Copiepresse against Finally, the exclusive rights of performing artists and producers Google’s Google News and Google Cache services, the Brussels Court are limited by the so-called legal licence for secondary use, which pre- of Appeal reminded that, since Google News only consists of extracts vent performers or producers from objecting to any of the two following of press articles sorted automatically, without these articles being types of exploitation of a performance that has been lawfully reproduced subjected to any kind of criticism, polemic, review or other legitimate or broadcasted: purpose, Google could not rely on the quotation exception. Moreover, • public performance in a public space for purposes other than entertain- the quotation cannot form the main object of the comment, analysis or ment and on the condition that no entrance fee is charged; and critical review and must be ancillary (Brussels Court of Appeal, 5 May • any subsequent broadcasting of the performance. 2011, Google News, IRDI, 2011/3, 265) • the use of works exhibited in public places. This exception typically Secondary use does, however, give rise to payment to the competent col- covers the accidental use of copyright-protected works found in public lecting society of an equitable remuneration, the amount of which is areas, such as, for instance, taking a photo of a person near a protected determined by various royal decrees. building or statue, where that building or statue is not the actual subject of the image; 10 What are the standards used in determining whether a • the performance of a work in the family circle and for educational pur- particular use is fair? poses, whereby it is accepted that the term ‘family circle’ should not be See question 9. taken too literally and that it is sufficient that the performance takes place in an intimate, private setting (eg, a retirement home or, in some 11 Are architectural works protected by copyright? How? cases, even a closed workshop). The exception for use for educational Works of architecture and sculptures are protected by copyright like all purposes does not apply if the performance takes place in a different other works. The single condition that needs to be met is that of originality. context that is unrelated to teaching, the attainment of targets or peda- The scope of protection granted to architectural works is, however, limited gogic objectives, such as a school party; somewhat by the exception for the accidental use of works exhibited in a • the use of a work as parody, caricature or pastiche, provided that such public place, for instance, where a picture is taken in front of a protected use complies with fair trade practices and is accordingly limited to what building but the building itself is not as such the subject of the picture. A is necessary to allow or intend a humorous effect with no risk of confu- concrete assessment will, however, need to be made to assess whether the sion with the original work. The CJEU reminded the essential charac- exception may be lawfully relied upon. teristics to be met by a work of parody in the Deckmyn case. According to the Court, a parody shall (i) evoke an existing work, while being notice- 12 Are performance rights covered by copyright? How? ably different from it, and (ii) constitute an expression of humour or mockery. On the assumption that the essential requirements of parody Performance rights (also referred to as neighbouring rights) are granted are fulfilled, the Court noted that the application of the exception must to performing artists (singers, musicians, dancers, actors, etc), phono- still strike a fair balance between the interests and rights of both par- gram and film producers (the natural person or legal entity that financed ties (notably between the freedom of expression of the user relying on the realisation of and bears the risk in relation to the ‘master tape’, ie, the the parody exception and the holder of copyrights on the original work first fixation of the film or phonogram) and broadcasting organisations. (CJEU, 3 September 2014, C-201/13, Deckmyn). These principles have Their purpose is to protect an artistic contribution or financial investment been recently applied by the Antwerp Court of First Instance in respect in literary or artistic works by any of these three categories of performers. of a painting titled ‘A Belgian Politician’ made by a visual artist based Performance rights include: on a photograph of a Belgian politician. The painting formed a key • the exclusive right to authorise or prohibit the communication to the piece in the artist’s collection and was exhibited during an exposition public of their performance, phonogram, film or broadcasting, whether held in Nice and Las Vegas and subsequently sold to a private art collec- directly or indirectly and regardless of the technical means used (eg, tor. According to the photographer, the painting infringes his exclusive the internet); reproduction and moral rights to the original work. The court rejected • the right to reproduce their performance, master tape or broadcasting, the artist’s defence that his painting would constitute a form of ‘appro- whether permanently or temporarily, in whole or in part and regardless priation art’, has a different format and colour pattern than the original of the reproduction technique; and picture and that he could rely on the exception parody. According to the • the right to distribute, loan or rent (copies of) the protected perfor- court, the painting takes on the various original elements of the original mances, phonograms, films or broadcasting, in any form. picture, including the incomplete image of the politician’s face, position, angle, lighting and expression on the politician’s face. There is In addition to these exploitation rights, only performing artists are granted no indication that it would constitute a parody (Antwerp Court of First moral rights, particularly the right to paternity and integrity of their perfor- Instance, 15 January 2015, Juristenkrant 2015, 2); mance. Producers and broadcasting organisations are not. • the compilation of selected extracts from or fragments of works for Copyright and performers’ rights protection apply cumulatively, mean- teaching purposes, provided the compilation will not be used to pursue ing that authorisation of the copyright holder to communicate a work to the commercial gain; public does not excuse the user from also requesting the authorisation of • reproductions for the benefit of the disabled; the holder of any neighbouring rights, at least insofar as their performance • reproductions during public exams to evaluate the performer with a or fixation is used, and vice versa. view to granting or obtaining a certificate or diploma from an officially recognised educational institution. Private schools cannot rely on 13 Are other ‘neighbouring rights’ recognised? How? this exception; There are no specific neighbouring rights other than those mentioned in • the making of a limited number of copies of works by public libraries, question 12. museums and archives to preserve cultural or scientific heritage; • the use of a work for the purpose of promoting public exhibitions or 14 Are moral rights recognised? sales events of artistic works; and Moral rights are described in article XI.165, paragraph 2, CEL and include • the reproduction and communication of works for internal use by cer- the following: tain non-profit social institutions, such as hospitals, prisons and institu- • the right to disclose the work to the public for the first time; tions for juveniles and the disabled. • the right to be identified as the author of the work, known as the paternity right. This also includes the right of the author to refuse to have his Furthermore, and in accordance with article 5.5 of the Information Society or her name associated with a work and to remain anonymous; and Directive 2001/29/EC, all exceptions to the right holder’s exclusive www.gettingthedealthrough.com 19

• the right to preserve the integrity of the work, which entitles the author presumption only applies to the object and source code and not to docu- to object to any distortion, mutilation or other modification of the work mentation and manuals related to the computer program and computer that would be prejudicial to his or her honour or reputation. programs created by non-employees (eg, self-employed persons). Please see question 28 regarding the scope of assignment. There is a notable difference in the scope of such rights in respect of computer programs, which does not include the moral right to disclose the work 26 May a hiring party own a copyrighted work made by an to the public for computer programs. Also, the right to integrity is limited independent contractor? to the right to object to certain modifications and actions only to the extent The same rules apply to works made by an independent contractor as they are prejudicial to the developer’s honour and reputation, whereas this to those made by an employee (see question 25). Any assignment shall, is much broader for other copyright-protected works. accordingly, be expressly agreed upon between the parties.

Copyright formalities 27 May a copyrighted work be co-owned? 15 Is there a requirement of copyright notice? If several natural persons have collaborated on a copyright-protected work, It is not necessary to use a copyright notice for the work to enjoy protection. it is subject to co-ownership. According to article XI.169, CEL, where the However, using a copyright notice does offer certain advantages, as third contributions of each author can be individualised, these authors may parties are made aware of the fact that they may not freely use the work not, unless otherwise agreed, use their works with new collaborators. concerned. A copyright notice may also serve as a (rebuttable) presumption Nevertheless, they have the right to exploit their contribution separately, of ownership of copyright. provided that such exploitation does not prejudice the common work.

16 What are the consequences for failure to display a copyright 28 May rights be transferred? notice? Whereas economic rights may be freely transferred, this is not the case for There are no consequences if no copyright notice is displayed. moral rights. Their exercise may, however, be restricted or waived by contract, subject to the following restrictions: 17 Is there a requirement of copyright deposit? • a general waiver of the future exercise of these rights is not possible; and As is the case for the use of copyright notice, depositing a work is not a legal • the author shall at all times reserve the right to object to any mutilation, requirement but can be used to demonstrate that a work for which protec- distortion, or other modification of his or her work that would adversely tion is claimed already existed on a certain date. A deposit does not, how- affect his or her honour or reputation (article XI.165 paragraph 2, 1° and ever, give rise to the creation of copyright or offer legal protection. 7°, CEL). 18 What are the consequences for failure to make a copyright According to certain legal authors, the foregoing does not apply to com- deposit? puter programs, so that the developer may freely assign his or her moral There are no consequences if a deposit is not made. rights to the program. Express provision should be made for the assignment of these moral rights. For instance, where a computer program is created by 19 Is there a system for copyright registration? an employee in the performance of his or her duties or pursuant to instruc- No. tion given by the employer, moral rights shall in principle remain with the employee, unless they have been expressly assigned to the employer. The 20 Is copyright registration mandatory? majority of legal literature, however, is in favour of the general inalienabil- ity of software developers’ moral rights. As under the Copyright Act, devel- Since Belgium is a signatory of the Berne Convention, copyright protection opers should accordingly be able to waive the exercise of their rights under is not subject to any formalities. the same conditions as those that apply to other works, but they may not be assigned. 21 How do you apply for a copyright registration? As for the transfer of economic rights, this must in principle be agreed Not applicable. upon in writing. The duration and geographic scope, as well as the price to be paid, shall further be specified for each manner of use or exploitation. 22 What are the fees to apply for a copyright registration? Any right granted in respect of methods of exploitation unknown at the Not applicable. time the contract is entered into is invalid. The foregoing does not apply to an employer and employee or a customer and contractor in the non-cul- 23 What are the consequences for failure to register a tural sector. copyrighted work? Rights to future works may also be transferred, provided the nature of There are no consequences if no registration is made of a copyright pro- the work is specified and the transfer is limited in time. According to the tected work. The rights originate by the mere creation of an original work, if preparatory works to copyright legislation, this simply means that the expiry it fulfils the conditions for copyright protection. date of the transfer should be certain but not fixed and may, for instance, be linked to a future event. Ownership and transfer 29 May rights be licensed? 24 Who is the owner of a copyrighted work? Copyrights may be licensed subject to the same conditions as those that As a general rule, copyright inures to the author of the work. Article XI.170, apply to the transfer of rights (see question 28). CEL provides for a rebuttable presumption of ownership in favour of the person or company whose name or identifying sign is mentioned on the 30 Are there compulsory licences? What are they? work. The presumption also applies to legal persons but may be refuted by Under Belgian law, compulsory licences only exist in respect of neighbour- the natural person who created the work. ing rights of performing artists and producers (see the explanations in question 9 regarding the legal licence for secondary use). In all other cases, the 25 May an employer own a copyrighted work made by an exclusive rights of the author are limited mainly by those exceptions also employee? discussed in question 9. Article XI.167 paragraph 3, CEL provides that, for works other than computer programs developed by employees, there is no automatic trans- 31 Are licences administered by performing rights societies? fer of an employee’s copyright to the employer. This must be expressly How? agreed upon. Performing artists are free to adhere to any relevant performing rights soci- With regard to computer programs, there is a rebuttable presumption ety that will collectively manage their rights in respect of any public exploi- that the economic rights to the computer programs automatically vest in tation of their performance or work. the employer, unless explicitly agreed otherwise (article XI.296, CEL). The

32 Is there any provision for the termination of transfers of Copyright infringement and remedies rights? 39 What constitutes copyright infringement? See question 28. Copyright is infringed if a work is used in violation of the author or right holder’s exclusive rights. The Copyright Act does not provide for specific 33 Can documents evidencing transfers and other transactions rules on the assessment of copyright infringement by way of reproduction, be recorded with a government agency? but the following criteria can be distilled from case law: Contrary to other intellectual property rights such as trademarks, models • the allegedly infringing work should contain all or some of the original and designs and patents, no registration formalities apply in order for a and protected elements of the original work, thereby creating a similar licence granted in respect of copyright to be enforceable against third par- overall impression in the mind of the normal, non-technical and non- ties. In accordance with the general law of contract, third parties shall rec- artistically educated person; ognise their existence as a matter of pure fact. • likelihood of confusion is not a requirement as such but may be taken into consideration as an additional indication of copy- Duration of copyright right infringement; 34 When does copyright protection begin? • more attention is paid to the similarities than to the differences, however, if the differences outnumber the similarities and confer a differ- Copyright protection begins from the moment of creation of the work. ent overall impression, no infringement will be found; and • finally, the partial reproduction of an original work in a later work with 35 How long does copyright protection last? new, original elements not contained in the original work can also be Copyright protection extends for a period of 70 years from the author’s considered to be a copyright infringement if the copied elements are death. In case of multiple authors, protection expires 70 years after the original and protected. death of the last surviving author. For cinematographic or audiovisual works, the term of protection expires 70 years after the death of the last of In the Google News case referred to above, the Brussels Court of Appeal the following persons to survive: the principal director, the author of the considered that there was a digital reproduction from the moment that screenplay and the dialogue or the composer of music created specifically the material was stored and Google was the author of that reproduc- for the cinematographic or audiovisual work. tion. Google made that reproduction available on its own website via the With the new Code of Economic Law, the Belgian legislator also imple- ‘cached’ link. Unlike with hyperlinks that referred to the site of origin, mented Directive 2011/77/EU on the protection of copyright and certain by consulting the ‘cached’ link the user was consulting the document on related rights and extended copyright terms on recordings from 50 to 70 the Google website. Google’s role was consequently not limited simply to years. The purpose of the extension is to align the protection granted to cer- providing facilities but had reproduced and made available to the public a tain holders of neighbouring rights, particularly performing artists and pho- copy of the original documents stored in its own memory (Brussels Court nogram producers, with that already given to authors. According to article of Appeal, 5 May 2011, Google News, IRDI, 2011/3, p 265). XI.208, CEL the term of protection of a performance fixed on a phonogram However, in February 2014, the CJEU held that the provision on a is extended from 50 years to 70 years from the date of the first publication or website of clickable links to works freely available on another website does communication to the public, whichever event occurred first. not constitute an ‘act of communication to the public’ and therefore is not However, in case of fixation of the performance other than in a phono- a copyright infringement. This is different where a clickable link circum- gram, the duration of neighbouring rights remains limited to 50 years from vents restrictions on the site on which the protected work appears or where the date of first such publication or communication, as was the case before. the work is no longer available to the public on the site on which it was In the same way, the term of protection granted to phonogram producers is initially communicated. Users are considered a new public when the link equally extended from 50 to 70 years from the first lawful communication constitutes an intervention without which those users would not be able to to the public. The terms shall be calculated from 1 January of the year fol- access the works transmitted. The Court also held that EU member states lowing the event that triggers the term. The new, extended terms of protec- do not have the right to give wider protection to copyright holders by leg- tion to all fixations of performances and phonograms that are still protected islating that authorisation for hyperlinking to freely available content on a on 1 November 2013 and to those that come into being after that date. The website is required (CJEU, 13 February 2014, C‑466/12, Svensson; CJEU, 21 new legal regime is without prejudice to acquired rights of third parties by October 2014, C-348/13, BestWater). virtue of contract or the law prior to 1 November 2013. The Belgian Supreme Court came to a similar conclusion regarding For all other categories, the duration of neighbouring rights is limited the provision on a Facebook page of a download link for copyright pro- to 50 years from the first transmission of the broadcast, the first fixation of tected content, even for personal purposes, is a communication to the a film, etc. public. The Court held that this communication requires the authorisation of the copyright holder, except if the work is freely accessible on another 36 Does copyright duration depend on when a particular work website (Cass. 24 June 2015, AM 2015, liv. 3-4, 277). was created or published? Finally, reference is made to the decision of 19 November 2015 of the The duration of copyright protection is the same for all types of works, irre- CJEU following a request for a preliminary ruling regarding the defini- spective of when they have been created or made available to the public. tion of communication to the public. The request was filed by the Brussels The single exception to this rule relates to anonymous or pseudonymous Court of Appeal in the framework of proceedings brought by the Belgian works, for which the term of protection shall expire 70 years after the work collecting society SABAM against SBS Belgium, a Dutch language broad- is lawfully made available to the public. If the work has not been lawfully casting organisation. SBS Belgium broadcasts its programmes using the made available to the public within 70 years from their creation, protec- ‘direct injection’ technique, consisting of a two-step process by which tion shall also terminate. See also question 35 regarding fixations of perfor- SBS transmits its programme-carrying signals ‘point to point’ via a private mances and phonograms. line to its distributors. At that stage, those signals cannot be received by the general public. The distributors then send the signals, which may or 37 Do terms of copyright have to be renewed? How? may not be in encrypted form, to their subscribers so that they can view the programmes on their television sets, whether or not with the help of Copyright does not need to be renewed. a decoder made available by the distributor. SABAM takes the view that SBS makes a communication to the public by transmitting via the direct 38 Has your jurisdiction extended the term of copyright injection method and that accordingly, the authorisation of the copyright protection? holder is required. The CJEU reminded that the term ‘public’ refers to In 1994, the term of existing copyrights was extended from 50 years to 70 an indeterminate number of recipients, potential television viewers, and years through the application of Directive 93/98/EEC of 29 October 1993. implies, moreover, a fairly large number of persons. It concluded that SBS does not carry out a communication to the public as it only transmits the programme-carrying signals to specified individual distributors without potential viewers being able to have access to those signals. The actual communication is made by the distributors themselves. That said, the Court observed the subscribers of the distributors in question could be www.gettingthedealthrough.com 21

© Law Business Research 2016 BELGIUM LMBD Prioux considered to be the public in relation to the original transmission of the liability (eg, piracy) and three years for actions based on the author’s broadcasting organisation if the intervention of the distributors in question resale right. is just a technical means of ensuring or improving reception of the original broadcast in its catchment area. According to the Court, however, the 43 Are monetary damages available for copyright infringement? distribution of the work broadcast by a professional distributor amounts to Monetary damages are available for copyright infringement. These can, as the supply of an autonomous service performed with the aim of making a a matter of principle, not exceed the actual prejudice suffered and only to profit, the subscription fee being paid by those persons not to the broad- the extent proven by the injured party. The concept of punitive damages casting organisation but to that professional, and being payable not for any does not exist in Belgium. All appropriate aspects, such as the negative eco- technical services, but for access to the communication in question and, nomic consequences, including lost profits and the damage sustained by therefore, to the copyright-protected works. A transmission made in these the right holder, shall be taken into consideration. circumstances is not just a technical means of ensuring or improving recep- As regards the lost profits, the question that needs answering is tion of the original broadcast in its catchment area, unless the distributor whether the infringement had any impact on the products or services the finds itself in a position that is not independent in relation to the broad- injured party had otherwise been able to provide him or herself. If the right casting organisation and where its distribution service is purely technical holder does not commercialise the products, the damages for infringement in nature. This is for the national court to decide (CJEU, 19 November 2015, will consist of the royalties or fees the right holder should have received, C-325/14, SBS v SABAM). had there been a licence agreement in place with the infringer. Compensation for sustained damages may include elements other 40 Does secondary liability exist for indirect copyright than economic factors, such as the moral prejudice caused to the right infringement? What actions incur such liability? holder, his or her commercial image and repute. Secondary liability for copyright infringement is dealt with in articles In case of a bad faith infringement, the right holder may also claim the XVII.14 paragraph 3 and 4, XVII.18, XVII.19 and XVII.20, CEL. These pro- surrender of the profits generated by the infringing party. visions enable right holders to apply for an injunction against intermediar- The Belgian Supreme Court recently confirmed that if no concrete ies whose services are being used by a third party to infringe their industrial data is available to determine the magnitude of the damage sustained, the property rights or who are found to be providing, on a commercial scale, amount of compensation may be determined on an ex aequo et bono basis services used in infringing activities, regardless of whether a fault can be (ie, in equity, according to what is just and fair) (Cass., 24 June 2015, A&M imputed to the intermediary. It is generally understood and accepted that 2015, liv. 3-4, 277). the definition of intermediary covers both online service providers as well as providers of physical services, such as the carrier of counterfeit prod- 44 Can attorneys’ fees and costs be claimed in an action for ucts. Particularly as regards ISPs, reference is made to what is mentioned copyright infringement? in question 4 regarding the scope of an injunction and the need to strike a Under Belgian law, the injured party may claim compensation for the costs fair balance between the fundamental rights at stake. of the proceedings, including legal expenses, incurred to put an end to the infringement. The amount that may be claimed is fixed depending, inter 41 What remedies are available against a copyright infringer? alia, on the value of the claims made and the complexity of the case, with Remedies may include the following: a maximum of €33,000 for claims exceeding €1 million. As regards claims • compensation for the prejudice suffered as a result of the infringe- that cannot be expressed in monetary terms, the contribution is limited to ment. Compensation may consist of the award of monetary dam- €1,320, capped at €11,000. ages (see question 43) but also the surrender to the right holder of the infringing products as well as, in appropriate cases, the materials and 45 Are there criminal copyright provisions? What are they? implements principally used in the manufacture of those goods that Copyright infringement amounts to a criminal offence if it is committed are still in the infringing party’s possession; with malicious or fraudulent intent (article XI.293, CEL). Fraudulent intent • an injunction ordering the infringing party to cease the infringement is the intent to obtain for oneself or another an illicit advantage, even an and to refrain in future from infringing the rights at stake, subject indirect, non-pecuniary advantage, whereas malicious intent is the intent to penalties; to damage the right holder’s material interests. • an injunction ordering the infringing party to provide the right holder Punishment may consist of imprisonment for up to three years or a fine with all information available concerning the origin and distribution of at least €600, up to a maximum of €600,000. In certain cases, the sanc- networks of the goods and services which have infringed copyright and tions may be doubled in the event of a repeat offence within five years of to provide him or her with all the data relating thereto, insofar as this the first infringement. measure seems justified and proportionate. This order may be issued Finally, revenue generated through the illegal exploitation may against the actual infringing party as well as anyone who is in posses- be confiscated. sion of the infringing goods on a commercial scale, who has used the infringing services on a commercial scale or who has provided, on a 46 Are there any specific liabilities, remedies or defences for commercial scale, services used in infringing activities; online copyright infringement? • the recall from the channels of commerce, the definitive removal from Online copyright infringement is remedied in the same way as any other the channels of commerce or the destruction of the infringing goods, type of infringement, but differences may occur as regards the scope of as well as, in appropriate cases, materials and implements principally certain measures that can be taken, particularly injunctions against ISPs used in the manufacture of those goods. In considering this measure, (see question 4). the proportionality between the seriousness of the infringement and the remedies ordered, as well as the interests of third parties, shall be 47 How may copyright infringement be prevented? taken into account; • in case of bad faith infringement, the forfeiture of the infringing prod- Preventive measures may consist of using a copyright notice or implement- ucts and, where appropriate, all materials and tools principally used in ing technical protection measures. the manufacture of those goods that are still in the infringing party’s possession. If he or she no longer disposes of these goods, the copy- Relationship to foreign rights right holder may claim compensation equalling the price the defend- 48 Which international copyright conventions does your country ant received for said goods; and belong to? • publication of judgment. Belgium is a signatory to the following international copyright treaties 42 Is there a time limit for seeking remedies? and conventions: • Universal Copyright Convention of 6 September 1952 (UCC), ratified The statute of limitations for bringing a copyright claim depends on the by Belgium on 31 May 1960, with entry into force on 31 August 1960; type of claim and amounts to 30 years for actions in rem (eg, reclaiming • International Convention for the Protection of Performers, Producers ownership of copyright), 10 years for personal claims (recovery of royalties of Phonograms and Broadcasting Organizations of 26 October 1961 or other contractual claims), five years for claims based on non-contractual (the Rome Convention), with entry into force on 2 October 1999;

Update and trends Recovery of attorneys’ and expert fees which provides for a system of varying flat rates in respect of costs In Belgium, the successful party in legal proceedings is entitled to a for the assistance of a lawyer? lump sum amount that is deemed to cover the costs of the proceedings, including attorneys’ and expert fees. Currently, attorneys’ fees are only Do the terms ‘reasonable and proportionate legal costs and partially recoverable. The amount, which is payable by the party that is other expenses’ in Article 14 of the Enforcement Directive pre- put in the wrong, depends on the value of the main claim of the case, clude the case-law which states that the costs of a technical but may be lowered or increased depending on certain criteria relat- adviser are recoverable only in the event of fault (contractual or ing to the nature of the case. The fixed tariffs vary from a minimum of extra-contractual)? €165 (claim value of less than €250) to a maximum of €33,000 (claim (CJEU, C-57/15, United Video Properties Inc v Telenet) value exceeding €1 million). Expert fees are recoverable under certain circumstances. While the case before the referring court related to a patent infringe- Although Belgium is not the only member state to have introduced ment action, it follows from the wording chosen by the court and the a capped remuneration system, the system is highly debated, par- scope of the IPR Enforcement Directive that the questions extend to ticularly in proceedings relating to intellectual property rights (IPR). all forms of IPR litigation, including copyright litigation. It remains to According to article 14 of Directive 2004/48/EC on the enforcement be seen whether the CJEU will actually give a reply that may be applied of IPR, the successful party is entitled to reasonable and proportionate to all IPR litigation or rather answer the questions more narrowly. The legal costs and other expenses it incurs. On 26 January 2015 the Antwerp terms ‘reasonable and proportionate’ may indeed be interpreted differ- Court of Appeal accepted to refer the issue to the CJEU for a prelimi- ently in patent infringement cases than other IPR enforcement cases, nary ruling. The following questions were raised to determine whether bearing in mind, inter alia, the often highly complex and technical the capped remuneration leads to unreasonable and disproportionate nature of these proceedings and the shorter lifespan of patent rights results when it comes to recovering these fees: compared to other IPR. The case is still pending before the CJEU. If the Court were to rule Do the terms ‘reasonable and proportionate legal costs and other that the Belgian system is incompatible with EU law, this may well have expenses’ in Article 14 of the Enforcement Directive 1 preclude the a significant impact on IPR proceedings in Belgium and may even give Belgian legislation which offers courts the possibility of taking rise to new issues, such as the difference in treatment between IPR into account certain well-defined features specific to the case and litigation and other litigation, for which the current capped recovery system would remain in force.

• Berne Convention for the Protection of Literary and Artistic Works enshrined in article XI.289 CEL, which requires that the holders of foreign of 9 September 1886 (the Berne Convention), ratified by Belgium on copyright and related rights are put on an equal footing with Belgian copy- 5 September 1887, with entry into force on 5 December 1887 (latest right holders. This principle relates both to the duration as well as the scope amending act signed in Paris on 24 July 1971, ratified by Belgium on 29 of protection afforded under copyright. June 1999, with entry into force on 29 September 1999); As regards duration, the period of validity of foreign copyright shall, in • World Intellectual Property Organization (WIPO) Copyright Treaty of principle, not exceed 70 years from the author’s death. If, according to the 20 December 1996 (WCT), ratified by Belgium on 30 May 2006, with laws of the country of origin, the foreign rights expire earlier, the shorter entry into force on 30 August 2006; period will apply in Belgium as well. • WIPO Performances and Phonograms Treaty of 20 December 1996 Turning to the scope of protection granted to foreign copyright hold- (WPPT), ratified by Belgium on 30 May 2006, with entry into force on ers, this will be paired to the level of protection granted by the relevant 30 August 2006; and foreign law to Belgian copyright holders. If this level is inferior to what a • Agreement on Trade-related Aspects of Intellectual Property Rights Belgian copyright holder can claim under the Copyright Act, the scope (TRIPS) of 15 April 1994, with entry into force on 1 January 1995. of protection afforded to the foreign copyright holders in Belgium will be restricted accordingly. 49 What obligations are imposed by your country’s membership There is one exception to this principle, in that EU member states may of international copyright conventions? not adopt any legislation that would prevent a national of another member The main obligation imposed by the membership of the various inter- state from enforcing his or her rights under the same conditions as those national copyright conventions is to afford copyright protection to that apply to its own nationals, in accordance with the principle of non- non-Belgian nationals under the same conditions as those that apply to discrimination between nationals of the various EU member states (CJEU, Belgian nationals. This principle, known as the principle of reciprocity, is 20 October 1993, joined cases C-92/92 and C-326/92, Phil Collins v Imtrat).

Karel Nijs [email protected] Vicky Bracke [email protected]

Chaussée de la Hulpe/Terhulpsesteenweg 177/7 Tel: +32 2 663 28 71 1170 Brussels Fax: +32 2 566 28 01 Belgium www.lmbdprioux.be

www.gettingthedealthrough.com 23

Brazil

Rodrigo d’Avila Mariano, Talitha Correa Chaves and Cristina Zamarion Carretoni Chiarottino e Nicoletti – Advogados

Legislation and enforcement • crimes against the property of the union, federal districts, states, municipalities, public companies, mixed-capital companies, authori- 1 What is the relevant legislation? ties or foundations established by the government, which may The main statute on copyright in Brazil is Law No. 9,610 of 19 February include copyrights; 1998 (the Copyright Law). Other laws also regulate copyrights in specific • crimes that, by treaty or convention, Brazil has undertaken to fight; or situations, such as: • crimes perpetrated by Brazilian citizens outside of Brazil. • Law No. 9,609 of 19 February 1998, which regulates protection of intellectual property and commercialisation of computer programs Agency (the Software Law), along with the Copyright Law; • Law No. 6,533 of 24 May 1978, which provides for regulation on the pro- 5 Is there a centralised copyright agency? What does this fessions of artists and amusement show technicians (the Artists’ Law); agency do? • Law No. 6,615 of 16 December 1978, which provides for regulation on There is no centralised copyright agency in Brazil. As mentioned above the profession of radio broadcaster (the Broadcasters’ Law); (see question 3), the Ministry of Culture, by its different boards and bod- • Law No. 5,988 of 14 December 1973, article 17 of which regulates the ies, is the primary authority responsible for regulating and enforcing copy- registration of intellectual works. Law No. 5,988 was entirely replaced rights. Depending on its nature, the intellectual work involved shall be filed by the Copyright Law, except for article 17, which still remains in force; for registration before the relevant governmental entity, as follows: • Law No. 12,378 of 31 December 2010, which regulates architecture and • literary works should be filed before the Copyright Office of the urbanism practice (the Architecture and Urbanism Law); and National Library Foundation; • Decree-law No. 2,848 of 7 December 1940, which establishes the • musical works should be filed before the National School of Music of Brazilian Criminal Code and provides for sanctions upon the violation the Federal University of Rio de Janeiro; of copyrights. • visual art works should be filed before the School of Beaux-Arts of the Federal University of Rio de Janeiro; 2 Who enforces it? • audiovisual works should be filed before the National Cinema Agency According to article 7, item XIII of Decree No. 7,743 of 31 May 2012, the (ANCINE); and Board of Intellectual Rights of the Ministry of Culture is responsible for • projects, concepts and visual art works concerning geography, engi- overseeing compliance with the Copyright Law – as amended – by asso- neering, topography, architecture, landscaping, scenography and ciations of copyrights collective management, by collecting agents and science must be filed with the Council of Brazilian Architecture and by users. Urbanism (CAU). Any individual or legal entity that has claims under the Copyright Law may bring action before the Brazilian judicial system. As a general Collection and distribution of copyright royalties owed from the public rule, state courts have jurisdiction over copyright infringement actions. performance of national and foreign music are incumbent on the Central Federal courts will only become involved when the federal government is Bureau for Collection and Distribution (ECAD), a not-for-profit private the accused infringer. institution, known as the Brazilian copyright management organisation.

3 Are there any specific provisions of your copyright laws that Subject matter and scope of copyright address the digital exploitation of works? Are there separate 6 What types of works are copyrightable? statutory provisions that do so? The Copyright Law protects intellectual works stemming from the human There are no separate statutory provisions addressing digital exploita- creative spirit, expressed by any means and recorded in any form, whether tion of works. According to article 29, item VII of the Copyright Law, the tangible or intangible, currently known or to be invented in the future. author’s prior approval shall be required for: Article 7 of the Copyright Law sets an open list of copyrightable intellectual works, constantly expanded by case law, which includes: distribution for the purpose of offering works or productions by means • texts of literary, artistic or scientific works; of cable, optic fibre, satellite, electromagnetic waves or any other sys- • speeches, short talks, sermons and other works of a similar nature; tem which enables the user to select the work or production in order to • drama and musical-drama works; receive it at a time and place previously determined by whom demands • choreographic and pantomimic works, the scenic performances of it, and in situations in which access to the works or productions is made which are recorded in writing or in any other format; through any system which requires payment on the part of the user. • musical works, whether with lyrics or instrumental; • sound or soundless audiovisual works, including cinemato- 4 Do your copyright laws have extraterritorial application to graphic ones; deal with foreign-owned or foreign-operated websites that • photographic works and those produced by any process similar infringe copyright? to photography; There is no specific provision for extraterritoriality under the Copyright • drawings, paintings, engravings, sculptures, lithography and kinetic Law. However, the Brazilian Criminal Code states exceptions to the gen- art works; eral rule of no jurisdiction outside the territory and recognises extrater- • illustrations, geographical maps and other works of a similar nature; ritorial rights to apply Brazilian law to crimes committed abroad in cases • projects, drafts and visual works concerning geography, engineering, such as: topography, architecture, landscaping, scenography and science;

• adaptations, translations and other transformations of original works, • speeches given at public meetings of any kind, reproduced in daily or presented as new intellectual creations; periodic vehicles; • computer programs; and • portraits or other forms of representation of a likeness produced on • collections or compilations, anthologies, encyclopaedias, dictionaries, commission, reproduced by the owner of the commissioned work, and databases and other works that constitute an intellectual creation due provided that the person represented or his or her heirs have no objec- to their selection, organisation or placement of their content. tion thereto; • literary, artistic or scientific works reproduced for the exclusive use The Copyright Law also ensures protection of: of the visually handicapped, provided it is not for profit, either in • copies of the artistic work, made by the author him or herself, on the Braille or by means of another process on any medium designed for same basis of the protection granted to the original (article 9); and such users; • titles of intellectual works (including newspapers and other periodic • short extracts reproduced in a single copy for the private use of the publications), provided that the title is original and cannot be con- copier, as long as it is made by the latter and is not for profit; fused with the title of a work of a similar nature, previously published • quotation of parts of any work with a reference to the author and origin by another author. thereof, in books, newspapers, magazines or any other means of communication for study, review or debate purposes, to the extent justified 7 What types of rights are covered by copyright? by the intended aim; • notes taken in the course of lessons given in teaching establishments, The Copyright Law covers patrimonial rights (article 28) and moral rights by the persons for whom such lessons are intended (the full or partial (article 24). Patrimonial rights afford the owner the right to use, enjoy and publication of such notes being prohibited without the express prior dispose of his or her work; in other words, to obtain financial results from authorisation of the teacher or speaker); the economic use and exploitation thereof. Moral rights, in turn, are per- • literary, artistic or scientific works, phonograms and radio and televi- sonal non-economic rights, which stem from the author’s personality and sion broadcasts used in commercial establishments for the sole purpose belong exclusively to the creator of the copyrightable asset. Accordingly, of demonstration to customers of the relevant reproduction equip- except for those listed from (i) to (iv) below, which are inheritable by the ment (ie, radio, TV and other sets) marketed at such establishments; author’s successors upon his or her death, moral rights are non-transferra- • stage and musical performances carried out in the family circle or in ble and include the following privileges: educational establishments, for teaching purposes exclusively, and (i) claiming authorship at any time; without profit intent; (ii) having his or her name, pseudonym or conventional symbol indi- • literary, artistic or scientific works used as proof in judicial or adminis- cated or announced upon use of the work, as belonging to him trative proceedings; or her; • short extracts from existing works, regardless of their nature – or of (iii) keeping the work unpublished; the entire work in case of three-dimensional works of art – reproduced (iv) ensuring the integrity of the work by opposing to any modification on the condition that the reproduction is not itself the main subject of or act which may, by any means, harm the work or hurt his or her the new work and does not harm the normal exploitation of the repro- reputation or honour; duced work, nor causes unjustified loss to the legitimate interest of the (v) modifying the work before or after it is used; authors; and (vi) withdrawing the work from the market or suspending any previ- • paraphrases and parodies, as long as they are not reproductions of the ously authorised means of use, whenever the circulation or use original work and are not in any way derogatory thereto. implies offence to his or her reputation and image; and (vii) having access to a unique and rare issue of the work rightfully in As specifically regards computer programs, article 6 of the Software possession of someone else, with the purpose of preserving the Law provides that the following situations shall not characterise copy- memory thereof, by photographic or similar process, or audiovisual right infringement: means, so that the least inconvenience is caused to the holder of • reproduction of one single copy used as a backup or electronic stor- the work who, in any event, shall be indemnified for any damage or age copy; loss incurred. • partial quotes of the program, for teaching purposes; • similarity of the program with another pre-existing program, when this 8 What may not be protected by copyright? occurs by virtue of the functional characteristics of the application, Only concrete expressions are protectable; not ideas. According to arti- compliance with normative and technical precepts thereof, or alterna- cle 8 of the Copyright Law, the following shall be excluded from copy- tive limitation on the expressions of the pre-existing software; and right protection: • integration of a program, maintaining its essential characteristics, • ideas, normative procedures, systems, methods or mathematical pro- with an application or operational system technically indispensable for jects or concepts as such; the users’ needs, provided it be for the exclusive use of the person who • schemes, plans or rules for performing mental acts, playing games or performed the integration. conducting business; • blank forms intended to be filled out with any kind of information, 10 What are the standards used in determining whether a whether scientific or not, and the instructions appearing thereon; particular use is fair? • texts of treaties or conventions, laws, decrees, regulations, court deci- As mentioned above (see question 9), the Copyright Law and Software Law sions and other official enactments; list the events that may be considered ‘fair use’ of works protected by copy- • general use information such as those contained in calendars, diaries, right for Brazilian legal purposes. registers or legends; • names and titles per se; and • the industrial or commercial exploitation of ideas embodied in works. 11 Are architectural works protected by copyright? How? Architectural works are protected under the Copyright Law (see question 9 Do the doctrines of ‘fair use’ or ‘fair dealing’ exist? 6) pursuant to the same general protection principles afforded to other cop- Brazil has a civil law system and, as such, does not have ‘fair use’ and ‘fair yrightable creations. According to article 26, modifications in architecture, dealing’ doctrines as compared to common law jurisdictions. As a general urbanism and landscape design works shall be subject to the author’s prior rule, all forms of use of intellectual works are subject to the author’s prior authorisation. Pursuant to the Architecture and Urbanism Law – as well as written authorisation, unless the law permits otherwise. In this respect, the to relevant infra-legal regulations – architectural works are subject to man- Copyright Law, under articles 46, 47 and 48, expressly provides for situ- datory registration before the CAU. ations that are considered exceptions to copyright infringement and that might, mutatis mutandis, be considered ‘fair use’ events for Brazilian legal 12 Are performance rights covered by copyright? How? purposes, for example: Performance rights are covered by copyright. Article 68 of the Copyright • news or informative articles published in daily or periodic vehicles, Law provides that the use of theatrical works, music or literary-musical reproduced in the daily or periodical press with a reference to the compositions and phonograms in public representations and performances name of the author – if the piece of news or article is signed – and to the are subject to prior authorisation of the holder of the relevant rights. For the publications from which they were extracted; purposes of the Law: www.gettingthedealthrough.com 25

• public representations are the use of theatrical works in their various 17 Is there a requirement of copyright deposit? natures with the participation of artists, whether remunerated or not, Law No. 10,994 of 14 December 2004 regulates the mandatory legal fil- at public venues, or via broadcast or cinematographic transmission ing of literary works before the Copyright Office of the National Library or exhibition; Foundation. According to the Law (article 5), the legal deposit shall be done • public performances are the use of musical or literary-musical works by those responsible for printing the publication, within 30 days of the date with the participation of artists, whether remunerated or not, or the of publication. Foreign works that indicate an editor or seller domiciled in use of phonograms and audiovisual works at public venues, by any pro- Brazil shall also be subject to this obligation. cess, including broadcast or transmission by any means and cinematographic exhibition; and 18 What are the consequences for failure to make a copyright • public venues are theatres, cinemas, dance halls or concert halls, night deposit? clubs, bars, clubs or societies of any nature, stores, commercial and The legal deposit of literary works before the Copyright Office of the industrial establishments, sports arenas, circuses, fairs, restaurants, National Library Foundation aims at ensuring the registration and protec- hotels, motels, clinics, hospitals, public offices, rail stations, docks or tion of Brazilian intellectual productions, as well as enabling control, elabo- airports, or wherever literary, artistic or scientific works are presented, ration and propagation of the current Brazilian bibliography, and defence performed or transmitted. and preservation of the national language and culture. Failure to comply with the deposit obligation will be subject to a penalty of up to 100 times Any public venues where copyrighted works are represented or performed the market value of the respective work, and seizure of a number of issues – whether or not for profit – shall pay royalty fees to the holders of the rel- sufficient to meet the purposes of the legal deposit. evant rights. As mentioned in question 5, ECAD is the entity responsible for the collection and distribution of such royalties. 19 Is there a system for copyright registration? 13 Are other ‘neighbouring rights’ recognised? How? As mentioned above, there is no centralised agency in Brazil. As registration may be filed before different entities depending on the type of work, The Copyright Law recognises neighbouring rights, applying mutatis registration requirements and procedures vary. mutandis the same rights granted to authors, to phonograms’ producers and broadcasting organisations. Phonograms’ producers have the exclu- 20 Is copyright registration mandatory? sive right to authorise or prohibit: • the direct or indirect, total or partial, reproduction of the phonograms; According to the Copyright Law, protection of authorship rights shall not • the distribution by sale or rental of copies of phonograms; and depend on registration. Registration is optional for protection purposes and, • the communication of their phonograms to the public by public perfor- although not mandatory, is advisable as a means to evidence authorship. mance, including broadcasting. 21 How do you apply for a copyright registration? Broadcasting organisations shall have the exclusive right to authorise or As already mentioned there is no centralised agency to concentrate copy- prohibit the retransmission, fixation and reproduction of their broadcasts, rights in Brazil. Therefore, registration is filed before different entities and the communication of those broadcasts to the public by television in depending of the type of work. Also as a consequence of that, there is no uni- places attended by the public, without prejudice to the rights of the owners form rule for applying to such registration, and procedures vary from entity of the intellectual property embodied in the programmes. to entity. For registration at the National Library the applicant must file a form, pay a fee and provide certain documents. According to the National 14 Are moral rights recognised? Library a software for online registrations is to be yet implemented. Yes. See question 7. 22 What are the fees to apply for a copyright registration? Copyright formalities Amounts vary depending on the entity before which the work is to be registered. Registration fees at the National Library are approximately 50 reais. 15 Is there a requirement of copyright notice? The Copyright Law does not require the use of a copyright notice © to 23 What are the consequences for failure to register a protect such rights. As a general rule, however, the author has the right copyrighted work? to have his or her name, pseudonym or conventional symbol indicated or There is no specific consequence for failure to register a copyrighted work. announced upon use of the work, as belonging to him or her (see question 7). As also previously mentioned (see question 9), most of the events pro- Ownership and transfer vided in the Law as non-infringing to copyrights do require that reference to the author or publication, or both, be properly made. Notwithstanding 24 Who is the owner of a copyrighted work? the foregoing, it is worth noting that the Copyright Law (article 113) also As a general rule the owner of the copyrighted work is the individual who provides that ‘phonograms, books and audiovisual works shall bear a seal created it. According to the Copyright Law (article 28), ‘the author has the or any other identifying mark, which the producer, distributor or importer exclusive right to use his or her literary, artistic or scientific work, to derive shall be responsible for affixing, without additional cost to the consumer, benefit from it and to dispose of it.’ However, there are a few exceptions in order to attest compliance with the legal provisions in force, as provided to this rule. The Software Law contains a work for hire provision transfer- in the regulations.’ ring the rights to the employer or the person hiring the software development services. 16 What are the consequences for failure to display a copyright notice? 25 May an employer own a copyrighted work made by an Failure to mention the author’s or performer’s name, pseudonym or con- employee? ventional mark shall hold the infringer liable for moral damages and obli- As mentioned above, in the case of software the patrimonial rights of a gated to display the author’s or performer’s identity as follows (article 108): work created by the employee will belong to the employer. The Copyright (i) in the case of a broadcasting organisation, for three consecutive days Law does not contain a similar provision. Therefore, there will not be an at the same time as when the infringement occurred; automatic transfer of such rights and a written assignment must be exe- (ii) in the case of a graphic or phonographic publication, by the inclusion cuted to that effect. of an erratum in the copies not yet distributed, without prejudice to the conspicuous publication of a notice on three consecutive occasions in a 26 May a hiring party own a copyrighted work made by an major newspaper at the place of residence of the author, the performer independent contractor? and the publisher or producer; and (iii) in the case of any other form of use, in the press according to the proce- As mentioned above, in the case of software the patrimonial rights of a dure referred to in (ii) above. work created by the independent contractor will belong to the hiring party except if otherwise provided by the parties. The Copyright Law does not

© Law Business Research 2016 Chiarottino e Nicoletti – Advogados BRAZIL have such provision, therefore there will not be an automatic transfer of • performances shall be protected for 70 years counted from 1 January of such rights and a written assignment must be executed to that effect. the year following the public performance of execution.

27 May a copyrighted work be co-owned? 36 Does copyright duration depend on when a particular work A copyrighted work may be co-owned, whether by a person or entities, was created or published? provided that the moral rights shall only be vested in persons, not enti- See question 35. ties. Co-authors are all those who contributed to the creation of the works. Further, according to the Copyright Law those who merely assisted the 37 Do terms of copyright have to be renewed? How? author in producing the literary, artistic or scientific work by reviewing As protection under Brazilian law is not dependent upon registration, there it or bringing it up to date or by supervising or directing its publication is no requirement to renew the terms of copyright. or presentation in whatever form, shall not be considered co-authors. For audiovisual works the author of the scenario or literary, musical or 38 Has your jurisdiction extended the term of copyright dramatic-musical subject matter and the director shall be considered protection? co-authors. No. The term of protection remains unchanged. 28 May rights be transferred? Copyright infringement and remedies Rights, other than moral rights, may be assigned in whole or in part to third parties. Any assignment must be in writing. 39 What constitutes copyright infringement? The Copyright Law establishes the main events of copyright civil infraction 29 May rights be licensed? as follows: Rights may be licensed. • fraudulent reproduction, disclosure or use of copyrighted work; • publication of literary, artistic or scientific work without authorisation 30 Are there compulsory licences? What are they? of the copyright owner; There are no compulsory licences. However, as discussed in question 9 • transmission and retransmission by any means or process, and com- there are situations in which the use does not constitute infringement munication to the public of literary, artistic or scientific works, per- of copyrights. formances and phonograms, carried out in violation of the rights of the owners. 31 Are licences administered by performing rights societies? How? Other than civil sanctions, copyright infringement may also be punished as a crime. The Brazilian Criminal Code regulates crimes against copyrighted Licences for public performance are administered by performing rights works, and the Software Law also regulates crimes on the violation of soft- societies. ECAD, as mentioned above, is a not-for-profit private institu- ware rights. tion, responsible for the collection and distribution of royalties related to copyright and related rights from the public performance of national and foreign music. ECAD is formed by eight performing rights societies. The 40 Does secondary liability exist for indirect copyright owner of the music shall, once he or she becomes a member of one of those infringement? What actions incur such liability? societies, indicate his or her works to allow further distribution of royalties. According to the Copyright Law (article 104), secondary civil liability applies to: 32 Is there any provision for the termination of transfers of rights? any person who, for the purposes of sale or the securing of direct or According to the Copyright Law, in the absence of a contractual provision indirect gains, advantages or profits for himself or for another, sells, in writing stipulating the term of the assignment, the assignment will be displays for sale, receives and conceals, acquires, distributes, keeps on valid for a maximum period of five years (article 49, item III). deposit or uses a fraudulently reproduced work or phonogram shall be jointly liable with the infringer in terms of the foregoing Articles; if the 33 Can documents evidencing transfers and other transactions reproduction has been carried out abroad, the importer and the dis- be recorded with a government agency? tributor shall answer for the infringement. Documents evidencing the assignment or licensing may be recorded with From a criminal standpoint, the Criminal Code provides that the same competent authorities before which the relevant work was registered. If penalties that apply to those who infringe copyrights will also apply to: such work is not registered, it is also possible to record the transaction documents before the applicable notary of deeds and documents. those who, with direct or indirect profit intent, distribute, sell, offer for sale, rent, introduce in the country, acquire, hide, hold in deposit, orig- Duration of copyright inal or copy of intellectual work or phonogram reproduced in violation 34 When does copyright protection begin? of author’s right, of interpreter’s or performer’s right, or of phonogram The Copyright Law provides that protection is independent of registration producer’s right or, still, rent the original or copy of intellectual work or (article 18) and, as a general rule, starts upon creation of the work. phonogram without the express permission of the holder of the rights or the representatives thereof. 35 How long does copyright protection last? The Software Law, in turn, contains similar provisions with respect to crim- The length of the protection varies depending on the type of work as follows: inal secondary liability. • literary, dramatic, musical, artistic, typographical arrangements and databases shall be protected for 70 years from 1 January of the year 41 What remedies are available against a copyright infringer? following the death of the author or of the last-surviving co-author, as applicable; It is possible to file a lawsuit against a copyright infringer requesting a pre- • audiovisual and photographic works shall be protected for 70 years liminary injunction for faster protection. counted from 1 January of the year following publication; • sound recordings shall be protected for 70 years counted from 42 Is there a time limit for seeking remedies? 1 January of the year following fixation; The Copyright Law does not specify a time limit for seeking copyright • broadcasting shall be protected for 70 years counted from 1 January of infringement remedies. In the absence of such, general Civil Code provi- the year following transmission; sions shall apply (ie, three years). • titles of periodicals shall be protected for one year counted from publication of the last issue of the periodical; 43 Are monetary damages available for copyright infringement? • titles of annual periodicals shall be protected for two years counted Yes, the owner of the infringed copyrighted work may claim monetary com- from the publication of the last issue of the periodical; and pensation for such infringement. The Copyright Law expressly indicates www.gettingthedealthrough.com 27

46 Are there any specific liabilities, remedies or defences for Update and trends online copyright infringement? There are some bills currently being discussed in Congress regard- No. So far there are no specific provisions under Brazilian law to deal with ing copyrights. In 2013, the Copyright Law was amended as one of online copyright infringement per se. General rules shall apply in such such bills was approved by Congress. It is not possible to predict, cases. In 2012, Brazil enacted the Cybercrime Law and included as a crime however, when or if the other proposed bills will be enacted. the act of invasion of third parties’ IT apparel, connected or not to the inter- At the beginning of 2016 the Ministry of Culture launched net, with the aim of obtaining, altering or destroying data or information for public comments a Regulatory Instruction aiming to regulate without authorisation of the owner. the collection and distribution of copyright-related royalties for exploitation in the digital environment. It is questionable whether 47 How may copyright infringement be prevented? the Ministry of Culture has authority to do so through a Regulatory Instruction or whether such a topic must be introduced by means of It is very difficult to prevent copyright infringement. While Brazilian law an amendment to the Copyright Law. does provide for ex post mechanisms to combat infringement once the As Brazil does not yet have clear provisions on exploitation of actual or potential breach is identified (cease and desist notices, seizure of copyrights in digital environment, courts have been pushed to deal infringing material, among others), and case law has recognised relevant with this issue. At the end of 2015, the Superior Court of Justice spon- damages on copyright infringers, other preventive measures are not neces- sored a public hearing to discuss the use of streaming to transmit sarily as effective as might be desired in creating an efficient disincentive to music over the internet, and whether such transmission should be violations ex ante. That notwithstanding, there still are some measures that considered public performance that would give rise to collection of public performance fees by ECAD. may that may discourage the infringement and also facilitate an efficient The Superior Court of Justice is analysing the issue as ECAD and fast reaction, such as: filed an appeal against a decision handed by the Court of Appeals • including notice of copyrights in all materials, which although not in Rio de Janeiro ruling that the transmission through the internet mandatory by law, allows third parties to be aware of the poten- by webcasting systems does not constitute a public performance. A tial infringement; decision from the Superior Court of Justice is still pending. • having the work registered before the competent authority in order to facilitate evidence of authorship; and • employing technical measures and tools to try to monitor and prevent the amounts to be compensated in case of unauthorised publication of lit- potential infraction. erary, artistic or scientific works as follows: Working with authorities to react quickly and also reacting strongly (eg, Art. 103. Any person who publishes a literary, artistic or scientific work by filing lawsuits and criminal charges) may also help to prevent fur- without the authorization of the owner of the copyright shall forfeit to ther infractions. the latter the copies that are seized and shall pay him the price of those that have been sold. Relationship to foreign rights Sole Paragraph. Where the number of copies constituting the 48 Which international copyright conventions does your country fraudulent edition is unknown, the offender shall pay the value of belong to? 3,000 copies in addition to the copies seized. The following international treaties and conventions on copyright were 44 Can attorneys’ fees and costs be claimed in an action for ratified by Brazil and incorporated into the Brazilian legal system: copyright infringement? • Decree No. 1,355 of 30 December 1994 – Promulgation of the Final Act of the Uruguay Round (Agreement on Trade-Related Aspects of General civil procedure rules shall apply for copyright infringement cases. Intellectual Property Rights); According to Brazilian law, the losing party will be responsible for attor- • Decree No. 76,905 of 24 December 1975 – promulgation of the neys’ fees and costs in the amount varying from 10 to 20 per cent of the Universal Convention on Copyright; lawsuit value or the reward amount. • Decree No. 76,906 of 24 December 1975 – Promulgation of the Phonograms Convention; 45 Are there criminal copyright provisions? What are they? • Decree No. 75,699 of 6 May 1975 – Promulgation of the Yes. According to article 184 of the Brazilian Criminal Code, violating Bern Convention; authors’ and neighbouring rights is a crime subject to penalties of impris- • Decree No. 75,572 of 8 April 1975 – Promulgation of the Paris Convention; onment ranging from three months to four years plus a fine. The Software • Decree No. 75,541 of 31 March 1975 – Promulgation of the Law also describes violation of computer program copyright as a crime WIPO Convention; subject to imprisonment ranging from six months to four years plus a fine. • Decree No. 57,125 of 19 October 1965 – Promulgation of the Rome Convention; and

Rodrigo d’Avila Mariano [email protected] Talitha Correa Chaves [email protected] Cristina Zamarion Carretoni [email protected]

Avenida Juscelino Kubitschek, 1700, 11º andar Tel: + 55 11 2163 8989 Edifício Plaza JK, Vila Olímpia Fax: + 55 11 2163 8990 04543-000 São Paulo Brazil

• Decree No. 26,675 of 18 May 1949 – Promulgation of the Inter- American Copyright Convention.

49 What obligations are imposed by your country’s membership of international copyright conventions? The obligations imposed by the treaties vary and each provide for different requirements. Nevertheless, it is possible to say that a usual requirement found in such treaties is to ensure reciprocity (ie, grating the same copyright protection to non-Brazilians as those granted to its citizens). Treaties also usually set the limitations and minimum protection. The TRIPS Agreement as well as setting the framework for copyright protection, requests member states to ensure that enforcement procedures are available under their law. The Berne Convention sets out that all the member states undertake to adopt, in accordance with its constitution, the measures necessary to ensure the application of the Convention.

www.gettingthedealthrough.com 29

Chile

Claudio Magliona, Nicolás Yuraszeck and Carlos Araya García Magliona Abogados

Legislation and enforcement • musical compositions, with or without lyrics; • radio or television adaptations of any literary production, the works What is the relevant legislation? 1 originally produced by radio or television, and the corresponding The relevant legislation is Law No. 17,336 on Intellectual Property (the librettos and scripts; Law). The Law regulates (among other matters): the nature, duration, • newspapers, magazines or other publications of the same kind; ownership and exceptions of copyrighted works, permitted acts in rela- • photographs, engravings and lithography; tion to such works, including moral rights, and provides for civil remedies • cinematographic works; and criminal offences for copyright infringement; neighbouring rights of • architectural projects, sketches and models and mapping systems; artists, interpreters and performers, of phonogram producers and broad- • geographical or armillary spheres, as well as plastic works related to casters; and digital rights management and internet service provider (ISP) geography, topography or any other science and, in general, audiovis- limitation of liability. ual material; • paintings, drawings, illustrations and similar works; 2 Who enforces it? • sculptures and similar figurative works of art, even though they may Civil and criminal courts are in charge of copyright enforcement, depend- be applied to industry, provided their art value may be assessed ing on the nature of the infringement. separately from the industrial character of the object to which they are incorporated; 3 Are there any specific provisions of your copyright laws that • scenographic sketches and the respective sceneries, if the author is the address the digital exploitation of works? Are there separate sketch artist; statutory provisions that do so? • adaptations, translations and other transformations, if they have been authorised by the author of the original work if it does not belong to the The digital exploitation of copyrighted works is addressed not in a separate public domain; section but throughout the Law, for example when dealing with exceptions • videograms and slide shows; and limitations, infringements, digital rights management information vio- • computer programs, whatever their mode or form of expression, and lations and ISP limitation of liability. source programs or object programs, including their preparatory documents, technical descriptions and user manuals; 4 Do your copyright laws have extraterritorial application to • data collection or collection of other materials, in typewritten form deal with foreign-owned or foreign-operated websites that or any other form, which, due to the selection or disposition of their infringe copyright? contents, constitute creations of an intellectual nature. This protection There is no special rule in the Law dealing with foreign-owned or foreign- does not include the data or materials themselves, and is to be under- operated websites that infringe copyright, therefore general rules shall stood as notwithstanding any subsisting copyright in connection with be applied. the data or material included in the collection; and • textile designs or models. Agency 5 Is there a centralised copyright agency? What does this agency 7 What types of rights are covered by copyright? do? Copyright comprises patrimonial and moral rights, which protect the use, The Department of Intellectual Rights has fairly limited competencies. It authorship and integrity of the work. is mainly limited to managing the Intellectual Property Registry, which is a public registry where copyrights and neighbouring rights are recorded, in Moral rights addition to the assignment of said rights. The author, as the exclusive holder of the moral right, has for life the following powers: Subject matter and scope of copyright • to claim the authorship of the work, associating it with his or her name or known pseudonym; 6 What types of works are copyrightable? • to oppose any deformation, mutilation or any other modification per- The Law protects the rights that the authors of intellectual works of the lit- formed without his or her express and previous consent. Works of erary, artistic and scientific domains acquire through the sole fact of their preservation, reconstitution or restoration of works that have suffered creation, whatever their form of expression, and the neighbouring rights damages that may alter or reduce their artistic value will not be consid- it establishes. ered as such; The following, among others, are especially protected: • to maintain the work unpublished; • books, brochures, articles and written documents, whatever their • to authorise third parties to finish the unfinished work, with the prior form and nature, including encyclopaedias, guidebooks, dictionaries, consent of the publisher or assignee, if any; and anthologies and compilations of all kinds; • to demand that his or her wish that the creator of the work remains • conferences, speeches, lectures, memoirs, comments and works anonymous or pseudonymous be respected, provided the work does of the same kind, both in their oral as well as in their written or not belong to the public domain. recorded versions; • dramatic, dramatic-musical and theatrical work in general, and likewise choreographic and pantomimic works, whose development has been set down in writing or in another form;

Patrimonial rights • the recording, reproduction, transmission or re-transmission by broad- The copyright holder, or whoever is expressly authorised by him or her, will casting or television companies, or the use by any other means, for be entitled to use the work in any of the following forms: profit, of said interpretations or performances; • to publish (public offer of a work) by editing, recording or broadcast- • non-established interpretations or performances being recorded in a ing it on radio or television, performing, executing, reading, reciting, phonogram and reproduction of said recordings; exhibiting and, generally, through any other public communication • broadcasting through wireless media or public communication of their means that is currently known or may be known in the future; live interpretations or performances; and • to reproduce it through any process; • public distribution through sale or any other property transfer of the • to adapt it to another genre, or to use it in any other way implying a original or copies of their interpretation or performance that have not variation, adaptation or transformation of the original work, including been the object of a sale or other property transfer authorised by the its translation; artist, or his or her assignee, in accordance with this Law. • to perform it publicly by means of radio or television broadcasting, phonographic records, cinematographic films, tape recordings or any other 13 Are other ‘neighbouring rights’ recognised? How? material support that may be used on sound and voice reproduction Together with the neighbouring rights of artists, interpreters and perform- apparatus, with or without images, or through any other means; and ers over their interpretations and performances, the Law acknowledges • to distribute tangible copies to the public by means of its sale, or any neighbouring rights to phonogram producers and to broadcasters. other property transfer of the original work or the copies that have not Phonogram producers are entitled to authorise or prohibit the repro- been the object of a sale or any other property transfer authorised by duction, renting, loan and other uses of their phonograms, including their him or her or pursuant to this law. broadcasting through wireless media or on demand modalities. With regard to broadcasters, radio and television companies have the exclusive right to 8 What may not be protected by copyright? authorise or prohibit the recording of their broadcasts and their reproduc- The following are excluded from the Law’s scope of protection: tion, and also the right to fees for the retransmission of said broadcasts or • Ideas without formal expression. Generally, although it is not expressly their public communication in places of free access. indicated in the Law, said rule stems from international treaties ratified Likewise, broadcasters may perform ephemeral recordings of interpre- by Chile whose essential regulations are incorporated into domestic tations or performances of an artist to simplify their transmission, which laws (see questions 47 and 48). Thus, in accordance with article 2 of constitutes a right, from the point of view of the broadcaster, and from the the WIPO Copyright Treaty, copyright protection includes expressions point of view of the artist, of an exception to, or limitation of, his or her but not ideas, procedures, operating methods or mathematical con- exclusive right to authorise the reproduction of his or her interpretation cepts themselves. or performance. • Works in the public domain. Public domain works include works where the protection term has expired; the work of an unknown author; works 14 Are moral rights recognised? whose holders have disclaimed protection; works by foreign authors See question 7. who live outside the country and are not protected by international treaties ratified by Chile; and works that have been expropriated by the Copyright formalities state, unless the Law specifies a beneficiary. 15 Is there a requirement of copyright notice? Public domain works may be used by anyone, provided the work’s author- Copyright notice is not a requirement for copyright holders to enjoy protec- ship and integrity are respected (moral rights). tion. As has been previously stated in question 6, copyright holders enjoy protection by the mere fact of having created the work. 9 Do the doctrines of ‘fair use’ or ‘fair dealing’ exist? There is a similar exception to the doctrine of fair use in the Chilean Law. 16 What are the consequences for failure to display a copyright It was introduced by the 2010 copyright amendment. This exception allows notice? the incidental and exceptional use of copyrighted works for the purpose of As previously stated, copyright notice is not a requirement for copyright critic, commentary, caricature, teaching, academic interest or research, as protection. Nevertheless, if the copyright notice is not displayed, the copy- long as such use does not constitute an exploitation of the work. right holder will not qualify for the copyright presumption granted by the Law when the copyright notice is used. 10 What are the standards used in determining whether a particular use is fair? 17 Is there a requirement of copyright deposit? There is a three-prong test: incidental and exceptional use; purpose of No, the deposit of a copy of the work is likewise not necessary for the hold- critic, commentary, caricature, teaching, academic interest or research; ers to enjoy the protection assigned by the Law. However, it is a require- and no exploitation of the work. This is a provision that has yet to be tested ment for the recording of the work, exclusively for the purposes stated in in court. question 19.

11 Are architectural works protected by copyright? How? 18 What are the consequences for failure to make a copyright The Law provides that such works are protected by copyright, however the deposit? Law includes a series of exceptions related to these kind of works. Thus, The Department of Intellectual Property Rights will not process the regis- their reproduction and publication are permitted by means of photogra- tration according to the terms indicated in question 19. phy, cinema, television and any other similar procedure, without the copyright holder’s previous authorisation and without having to pay for it. The 19 Is there a system for copyright registration? owner may make any modification to the works, and the architect may only Yes, there is a registration system managed by the Department of oppose his or her name being mentioned as author of the project. Intellectual Property Rights where copyrights and neighbouring rights can be registered. Registration is performed by simply supplying a deposit 12 Are performance rights covered by copyright? How? copy of the work without involving third parties – there are no publication The Law acknowledges a series of neighbouring rights to copyright to art- or opposition proceedings – and its function is an essentially probative one ists, interpreters and performers (actors, singers, dancers and musicians, and administrative acknowledgement of the creative fact. Notwithstanding among others), empowering them to authorise or forbid their broadcasting the aforesaid, the registration administrator, who is the head of the and to receive payment for their public use, notwithstanding copyrights. Department of Intellectual Property Rights, may oppose the registration With regard to the interpretations and performances of artists, the fol- of a work when, due to its nature, it is not, in his or her opinion, within the lowing acts are prohibited without their express authorisation, or that of framework of the works protected by copyright, notwithstanding the right their heirs or assignees: of the affected party to file a claim before the competent civil court.

www.gettingthedealthrough.com 31

20 Is copyright registration mandatory? • in the case of works produced by employees of a newspaper company, No, copyright registration is not mandatory. However, a work’s registration radio and TV stations, and information agencies, the company holds establishes a presumption of ownership of the rights with respect to the per- the right to publish in the newspaper, review, periodical, radio or TV son to whom, according to the respective registration, the copy being regis- station in which the authors provides their services, the articles, draw- tered belongs; it is therefore, advisable to register it and to make reference ings, photographs, or other productions provided by the staff under a to the number assigned by the Department of Intellectual Property Rights labour agreement, ensuring the authors the other rights as those pro- when making the work known to the public. tected by the Law.

21 How do you apply for a copyright registration? 26 May a hiring party own a copyrighted work made by an independent contractor? Registration is carried out by simply supplying a deposit copy of the work and is automatic, with no publication or a period of opposition by third Both the Law and general provisions concerning contracts say nothing with parties being required. The application may be filed through the form main- respect to works commissioned by a third party, and therefore, following tained for said purpose by the Department of Intellectual Property Rights, general rules, the respective rights are not considered as assigned to the in accordance with the Law and its regulations. party commissioning the works. Notwithstanding the aforesaid, there are some presumptions of trans- 22 What are the fees to apply for a copyright registration? fer of rights established in the Law: • cinematographic films – the contract between the authors of the literal The registration of a work is subject to the payment of a fee calculated in elements of the film and the producer, provided they have agreed on percentages of a monthly tax unit (UTM), which is an account unit used their exclusive use for the film production, entails all the rights over the for tax payments as well as for certain administrative fines, and its value is work to the producer, including all of its elements, and authorises him updated according to inflation levels. Its value, to date, is around US$50. or her to broadcast it to the public, show it on television, reproduce it in The following fees are applied according to each work: copies, rent and transfer it; • engineering and architecture projects and computer programs – 35 per • computer programs – in the case of software produced by commission cent UTM (approximately US$23.40); of a third party, the rights of the developer to whom the work has been • cinematographic films – 40 per cent UTM (approximately US$26.97); commissioned are considered as assigned; and • photographs – the photographer has the exclusive right to reproduce, • any other registration – 10 per cent UTM (approximately US$6.75). exhibit, publish and sell his or her photographs, except those done by virtue of a contract, in which case the publication right belongs to the 23 What are the consequences for failure to register a party commissioning said work; and copyrighted work? • productions commissioned by a newspaper company, radio and TV Failure to register a copyrighted work does not deprive the holder of the stations, and information agencies – the company holds the exclusive acknowledgement of his or her rights. right to the publication in the first edition published following their delivery, unless they have been expressly commissioned for a later edi- Ownership and transfer tion. Once the corresponding period has expired, the author shall be free to dispose of them as he or she chooses. 24 Who is the owner of a copyrighted work? The author of the work is the primary owner of the copyrights, and the 27 May a copyrighted work be co-owned? person acquiring said rights, in any capacity, is the secondary owner. The Law considers the existence of ‘works in collaboration’ (ie, jointly pro- Notwithstanding the aforesaid, the Law has certain special rules about duced by two or more natural persons whose contributions may not be sep- rights’ ownership regarding certain works, some of which are: arated). The powers inherent to proprietary equity and pecuniary benefits • anthologies and compilations – the organiser is the copyright holder, of the work in collaboration correspond to their co-authors as a whole, and but he or she is obligated to obtain authorisation and to pay the may be published at the request of any one of them. copyright holders of the works being used; Concerning cinematographic films, notwithstanding the producer’s • cinematographic films – the producer is considered the holder of the rights, to whom the respective rights have been assigned (see question 24), copyright of the film itself and the authors of the plot, music, lyrics the authors of the plot, staging, adaptation, script and music especially of the songs and dubbing are holders of the rights over the literal ele- composed for the work, and the director, are considered as co-authors of ments of said work, which are independently considered for protec- the film made in collaboration. tion purposes, maintaining the right to use, separately, their respective contributions, provided they have not agreed their exclusive use for the 28 May rights be transferred? film’s production, in which case the rights are considered as assigned to the producer (see question 26); The Law expressly authorises the authors, and copyright and neighbouring • public entities – works produced by public officials while performing right holders, to transfer the total or a part of their rights over the work. The their duties belong, accordingly, to the state, municipalities, official party acquiring said rights, in any capacity, is called a ‘secondary holder’ corporations, semi-public or autonomous institutions and other gov- of the copyright. Transfer is only possible in the case of patrimonial rights ernment entities for which they are working; and (reproduction, publication, etc), and is not possible in the case of moral • computer programs – there are special regulations concerning their rights (authorship, rights over unpublished material, etc), which are only ownership; see question 25. transferable through succession in the case of death. The total or partial transfer of copyrights or neighbouring rights, in any 25 May an employer own a copyrighted work made by an capacity, must be done through a contract executed in a public instrument employee? or private instrument authorised by a notary public, which must be registered in the Intellectual Property Registry within a term of 60 days, as of the There is no work for hire regulation in Chile. Rights over the works created date of execution of said act or contract. by employees while performing the duties resulting from a work relationship belong to the employees. 29 May rights be licensed? Only in special circumstances will the employer own a copyright work made by an employee: Yes. The permit granted by the copyright holder is the authorisation granted • in the case of computer programs, the Law makes an exception by stat- by him or her, in any contractual manner, to use the work in accordance ing that the holders of the respective copyright are the natural persons with the manner and through the media established by law. or legal entities whose employees, while performing their duties, have The authorisation or licence must specify the rights granted to the produced them, unless it is otherwise stipulated in writing; authorised party, stating the period of duration, the remuneration and • in the case of works produced by public officials while performing their form of payment, the minimum or maximum number of authorised shows duties, which belong, accordingly, to the state, municipalities, official or copies or, if they are unlimited, the territory of application and all other corporations, semi-public or autonomous institutions and other gov- limiting clauses imposed by the copyright holder. The licence holder is not ernment entities for which they are working; and

© Law Business Research 2016 García Magliona Abogados CHILE granted any rights other than those stated in the authorisation, except for 35 How long does copyright protection last? those inherent to the same according to their nature. The protection granted by the Law lasts for the life of the author and extends itself for another 70 years, from the date of his or her death. In the 30 Are there compulsory licences? What are they? case of works in collaboration, the term of 70 years is to be counted from The Law considers the existence of certain licences of a mandatory nature the death of the last co-author. in matters of collective management. Please see question 31. With respect to the following works, certain special rules have been established regarding the beginning of the terms of duration of 31 Are licences administered by performing rights societies? the protection: How? • anonymous or pseudonymous works – 70 years from the first publica- Collective management of copyrights and neighbouring rights may be tion and in the event of there being no such publication, within a term conducted in Chile by non-profit corporations that have the sole purpose of 50 years from its creation; the term is 70 years following the end of of managing collectively copyrights and neighbouring rights, and that the civil year in which the work was created; • computer programs – if the holder is a legal entity, the protection lasts have obtained authorisation to operate from the Ministry of Education. 70 years as of the first publication; Said entities are obliged to accept the management of copyrights and other • phonograms – 70 years starting from 31 December of the year of its intellectual property rights that have been entrusted to them. publication, and should there be no such publication, within a term of There are a series of licences of a mandatory nature associated with 50 years since its recording; the protection is for 70 years following the the work carried out by performing right societies, which must always be end of the civil year of its recording; granted by said entities. The licence holder may also receive the respective • interpretations and performances – 70 years from its publication, and authorisation directly from the copyright holder. should there be no such publication, within a term of 50 years since its Thus, every owner, concessionaire, user, entrepreneur, lessee or per- recording; the protection will be for 70 years following the end of the son operating any showroom, public premises, or broadcasting or television civil year of its recording. In the case of non-recorded interpretations station in which plays, films or musical shows are performed or repre- or performances, the term of 70 years will start to count from the date sented, or phonograms or videograms containing said works, of national of said performance; and or foreign authors, may obtain the authorisation through a non-exclusive • radio and television broadcasts – 50 years from 31 December of the year licence from the corresponding performing right society. Performing right of the broadcast. societies are obliged to contract, with whoever requests it, the concession of non-exclusive authorisations of copyrights and related rights they man- 36 Does copyright duration depend on when a particular work age, and may only refuse to grant said authorisations if the applicant does was created or published? not offer sufficient guarantees for the payment of the corresponding fee. In the case of use of phonograms or their reproduction for radio or tel- Duration rules are very straightforward without transitory rules to apply. evision broadcasts, or any other public form of communication, the user Any extension of time applies automatically to copyright works that are not is obliged to pay a remuneration to the artists, interpreters or performers already in the public domain. and to the producers of phonograms, and the collection of the phonogram performance rights must be carried out by the performing right society 37 Do terms of copyright have to be renewed? How? representing them, but in no event may the authorisations granted by said No. performing right society limit the power of the copyright holders to manage their works individually in the case of single uses. 38 Has your jurisdiction extended the term of copyright The Law establishes that the fees for licences granted by performing protection? right societies are established by the entities through the management Yes; in 2003 the Law was amended to increase the term of protection from body envisaged in their by-laws and will govern as of the date of its publi- life plus 50 years to life plus 70 years; in all other cases, protection has cation in the Official Gazette. Notwithstanding the aforesaid, performing changed from 50 years to 70 years. right societies may enter into contracts of special fees with user associations, which will be applicable to the members of said organisations, and Copyright infringement and remedies any user requesting it may be entitled to said special fees. The 2010 copyright amendment introduced a mandatory mediation and arbitration panel 39 What constitutes copyright infringement? on royalties to resolve controversies arising due to the royalties set by per- Copyright infringement is the public use of a work belonging to the private formance right organisations for the use of their works. Only a legal entity domain, without having obtained the express authorisation of the copyright or association with legal status may act as counterpart of a performance holder, giving rise to civil liability and, in certain cases, criminal liability. right organisation in these proceedings, which is not individually available Infringement may likewise be, in certain cases, the use of works belong- to companies. ing to the public domain, whenever they are published or exhibited under a name that is not that of the real author. 32 Is there any provision for the termination of transfers of rights? 40 Does secondary liability exist for indirect copyright No, there is no provision for the termination of transfers of rights. infringement? What actions incur such liability? There is no secondary liability, but the 2010 copyright amendment intro- 33 Can documents evidencing transfers and other transactions duced a new chapter to the Law, by which internet service providers will be recorded with a government agency? not be obliged to compensate the damage derived from third-party copyright infringements committed through systems or networks controlled or As has been previously mentioned in questions 28 and 32, total or partial operated by a service provider, provided that the service provider complies transfer of copyrights or related rights, in any capacity, must be recorded in with the specific conditions requested (internet service providers may only the Registry of the Department of Intellectual Property within a term of 60 be subject to the remedies established in the Law, which in all cases will days as of the date of execution of the respective act or contract. The reso- require a previous resolution issued by a court); and internet service provid- lution of the contract that gave rise to the transfer must also be recorded ers must forward to their users the infringement notices sent by copyright within the same period. holders (forward of infringement notice system). Service providers fulfil their obligation by simply forwarding infringement notices, without being Duration of copyright compelled to take content down or authorised to provide personal data 34 When does copyright protection begin? from their users to copyright holders without a court resolution. This sys- As previously stated, the protection assigned by copyright begins with the tem establishes requirements that infringement notices of copyright hold- sole fact of the work’s creation. There are special rules concerning com- ers must comply with to guarantee that they are sent by responsible entities, puter programs and related rights of phonogram producers, and also those with representation in Chile. In this way, the new provision deprives legal validity of infringement notices sent automatically from different parts of of artists and interpreters, which will be analysed in question 36. the world.

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exercise of the criminal action (see question 44), according to the penalty Update and trends established for copyright crimes, prescribes five years in the case of simple offences (the majority of cases) and 10 years in the case of crimes (only with On 4 February 2016, Chile along with other countries signed the respect to fraud committed in connection with the publishing contract). Trans-Pacific Partnership Agreement (TPP), which has a particular chapter dedicated to intellectual property, and within this, there is some discussion on the scope of certain rules regarding, for exam- 43 Are monetary damages available for copyright infringement? ple, technological protection measures (TPMs). Yes, there are monetary damages available for copyright infringement, The circumvention of TPMs is punishable in Chile, not only including statutory damages introduced by the 2010 copyright amend- under the Law but also under Law No. 19,223 on Cybercrime. ment. In determining property damages, the court shall consider, among The TPP established that each party shall provide that a viola- other factors, the legitimate retail value of the goods that are the subject tion of a TPM is independent of any infringement that might occur matter of the infringement. The court may, likewise, order the infringer under the party’s law on copyright and related rights. So according to the TPP, Chile has to punish the violation of a TPM even if there is to pay any profits that are attributable to the infringement and not already no copyright infringment. taken into account in determining the damages. In addition to property There was some discussion regarding that matter. However, damage, the court may impose moral damages and in these cases, the the same TPP rule has a footnote that provides that a party is not court shall consider the circumstances of the infringement, the gravity of required to consider the circumvention of an TPM as a separate the injury, the impairment caused to the author’s reputation and the extent offence, if that country criminally punishes said act through other to which the work has been unlawfully made available, from an objective means (such as Law No. 19, 223 on Cybercrime in the case of Chile). point of view. So, the rule should not change our copyright law. The TPP introduced some changes in trademark law and 44 Can attorneys’ fees and costs be claimed in an action for telecommunication law, but the copyright law remains with no modification. However, the TPP has yet to be ratified by the Chilean copyright infringement? Congress, so there is still some doubt regarding how this treaty will If the defendant is convicted he or she must pay the costs, both of the pro- be implemented in Chilean legislation. cess (court costs) and personal costs (lawyers’ fees), pursuant to general rules. The court may exempt him or her from said payment by means of a substantiated resolution. 41 What remedies are available against a copyright infringer? Within the framework of proceedings for copyright infringement, the court 45 Are there criminal copyright provisions? What are they? may, at the plaintiff’s request, decree one of the following measures. Unauthorised use A fault or offence is committed against intellectual property by any person Injunctions who, without being expressly empowered for such purpose, uses some- The court may, at any stage during the proceedings, order the follow- body else’s works protected by the Law, either unpublished or published, or ing injunctions: uses the protected performances, productions and broadcasts of the hold- • immediately suspend the sale, circulation, display, performance, rep- ers of related rights. Periods of imprisonment and fines (or both) will vary resentation or any other form of allegedly infringing exploitation; depending on the range of damages, from one day to 540 days and from • prohibit executing or performing any acts and contracts on certain US$353 to US$70,500. properties, including the prohibition to advertise or promote the products or services that are the subject matter of the alleged infringement; Counterfeiting • retain allegedly unlawful copies; Any person who forges a work protected by the Law, or whoever edits, • retain or seize any materials, machinery and implements that have been reproduces or distributes it by falsely showing the name of the authorised used for the production of allegedly unlawful copies or for the allegedly editor, by deleting or changing the name of the author or the title of the infringing activity, where necessary to prevent further infringement; work, or by maliciously altering its text, shall be subject to imprisonment • remove or dispose of any devices used in the unauthorised public com- from 61 days to 540 days and fines of US$7,000 to US$70,500. munication, unless the alleged infringer guarantees that he or she shall not resume the infringing activity; Piracy • appoint one or more inspectors; or Any person who, for profit, manufactures, imports, brings into the country, • attach the product of recitation, representation, reproduction or per- has or acquires for their commercial distribution illegal copies of copyright formance, until reaching such applicable copyright amount as reason- material, shall be subject to imprisonment from 541 days to five years and ably established by the court. fines of US$7,000 to US$70,500.

Damages Repeat offenders The court may sentence the infringer to pay damages. In cases of repeat offenders, the maximum penalties contemplated for each of the offences shall apply. In these cases, the fine may not be lower than Additional penalties twice the prior fine, and for an amount of up to US$140,000. Additional The court, upon making effective the payment for damages, may order, at penalties are applied when the infringements are committed by people the request of the affected party, the delivery, sale or destruction of the cop- who are part of an association or group of persons engaged in committing ies of the work that have been manufactured or put into circulation infring- such offences. ing his or her rights, and likewise that of the material that serves exclusively for the illegal manufacture of copies of the work and the seizure of the prod- 46 Are there any specific liabilities, remedies or defences for uct of the recitation, representation, reproduction or performance. online copyright infringement? See question 40 for internet service providers’ limitation of liability. Publication On remedies and defences for online copyright infringements, the The court may order, at the request of the affected party, the publication of Law sets forth special preliminary and permanent injunctions. Regarding the decision, with or without stating the grounds for it, in a newspaper of the functions of transmission, routing or supply, the court may order the the affected party’s choice, at the expense of the infringer. adoption of reasonable measures to disable access to a particular illegal content clearly identified by the petitioner, provided that the blocking does Criminal actions not disable access to other legal content. Regarding the functions of cach- Copyright infringement can also be pursued with criminal actions being ing carried out through an automatic process, storage at the direction of a sanctioned with imprisonment and fines. user of material residing on a system or network controlled or operated by or for a provider, or referring or linking users to an online location by using 42 Is there a time limit for seeking remedies? information location tools (including hyperlinks and directories), the court The exercise of the respective actions prescribes, according to general may order the removal of or the disabling of access to the infringing mate- proceedings rules, five years, in the case of civil action for damages. The rial clearly identified by the petitioner; and terminating specified accounts

© Law Business Research 2016 García Magliona Abogados CHILE of repeat infringers, clearly identified by the petitioner, whose holders are 49 What obligations are imposed by your country’s membership using the system or network to perform an activity infringing copyrights of international copyright conventions? and related rights. The Berne Convention sets a basic framework for the protection of copy- When the injunctions are requested before the lawsuit is served (pre- right ownership, which must be considered by member states, and also the judicial) and when there are serious motives for it, the injunctions may be suggestion of a regime of copyright exceptions and limitations, principally ordered by the court without hearing the other party, but in this case the based on the three-step rule, with respect to reproduction rights. petitioner must post a bond to secure the outcome of the injunction. The The TRIPS Agreement sets an updated framework of copyright protec- court will order the removal or disabling of the infringing contents without tion according to the standards established for the states that become mem- further delay. The respective service provider will be notified of the resolu- bers of the World Trade Organization. Thus, for instance, it is expressly tion by letter and the petitioner will be notified through a public publication established that computer programs, both expressed in source code and in board at the court. The affected content provider may, notwithstanding object code, will be protected by copyright (a situation that continued to be other rights, request that the court issuing the order disregard the measure a matter for debate at the beginning of the 1990s). of restraining access or removing the material. The WIPO Treaties establish requirements for protection of the works, interpretations, performances and phonograms protected by copyright 47 How may copyright infringement be prevented? and neighbouring rights, in the digital and online environment, regulating It is not possible to prevent copyright infringement, but the following meas- for the first time the level of protection that must be provided not only to ures may be taken to diminish or control infringement: the works, but also to the technological measures of protection and digital • clearly identifying in the works the author or copyright holder who rights management information with which the holders have endowed their enjoys said presumption; works to limit their access and reproduction, and also to control their use. • recording the works in the Intellectual Property Registry to facilitate Finally, Chile has signed several free trade agreements that have the evidence in cases of infringements; and strengthened, to a certain point, the commitment of the country to adapt- • monitoring the market and being prepared to deliver a strong message ing copyright regulations concerning the aforesaid matters. to the market to the infringers, using and filing all available remedies against them.

Relationship to foreign rights 48 Which international copyright conventions does your country belong to? The principal international treaties ratified by Chile regarding intellectual property matters are the Berne Convention, the Trade-Related Aspects of Intellectual Property (TRIPS) Agreement, and the World Intellectual Property Organization (WIPO) Treaties concerning Copyrights (WCC), and Performances and Phonograms (WPPT), known as the WIPO Treaties. In addition, on 4 February 2016, Chile signed the Trans-Pacific Partnership Agreement (TPP), which has a particular chapter dedicated to intellectual property.

Claudio Magliona [email protected] Nicolás Yuraszeck [email protected] Carlos Araya [email protected]

La Bolsa 81, 6th floor Tel: +56 2 2377 9450 Santiago Fax: +56 2 2377 9451 Chile www.garciamagliona.cl

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China

Xie Guanbin, Zhang Bin and Che Luping Lifang & Partners

Legislation and enforcement form. The Copyright Law offers a non-exhaustive list of ‘works’ and enu- merates some examples such as: 1 What is the relevant legislation? • written works; The primary legislation is the Copyright Law of the People’s Republic • oral works; of China. Other important statutes include the Implementation of the • musical, dramatic, quyi , choreographic and acrobatic works; Copyright Law of the People’s Republic of China, the Regulations on • fine art and architectural works; Protection of Information Network Transmission Right, the Regulations • photographic works; on Collective Administration of Copyrights and the Regulations on the • cinematographic works and works created by a process analogous Protection of Computer Software. Also important are the Interpretation of to cinematography; the Supreme People’s Court Concerning Several Issues on the Application • graphic works such as drawings of engineering designs and product of Law in Adjudication of Civil Cases Involving Copyright (2002) and the designs, maps and sketches, and model works; Interpretation of the Supreme People’s Court Concerning Several Issues • computer software. on the Application of Law in Adjudication of Internet Copyright Disputes (2006). 7 What types of rights are covered by copyright? Copyrights are divided into personal rights and property rights. Personal 2 Who enforces it? rights, also known as moral rights, are composed of: The copyright administrative authorities of the State Council are responsible • the right of publication, that is, the right to decide whether to make a for administration of copyright nationwide; and the copyright administra- work available to the public; tive authorities of the People’s Governments of all provinces, autonomous • the right of authorship, that is, the right to claim authorship in respect regions and centrally administered municipalities are responsible for of, and to have the author’s name mentioned in connection with, administration of copyright matters within their administrative region. a work; The copyright law is also enforced by certain courts that have jurisdic- • the right of revision, that is, the right to revise or authorise others to tion over copyrights. revise a work; • the right of integrity, that is, the right to protect a work against distor- 3 Are there any specific provisions of your copyright laws that tion and mutilation; address the digital exploitation of works? Are there separate statutory provisions that do so? Property rights include: Information network transmission right is provided in the Copyright • the right of reproduction, that is, the right to produce one or more cop- Law. Moreover, the Regulation on Protection of Information Network ies of a work by printing, photocopying, lithographing, making a sound Transmission Right specifically addresses the issue. recording or video recording, duplicating a recording, or duplicating a photographic work, or by other means; 4 Do your copyright laws have extraterritorial application to deal • the right of distribution, that is, the right to sell or donate the original with foreign-owned or foreign-operated websites that infringe copy or reproductions of a work to the public; copyright? • the right of rental, that is, the right to authorise others to use temporarily a cinematographic work or a work created by a similar process, or Yes, so long as the place where infringements or the results of infringement computer software, except where the software itself is not the essential take place is in China. object of the rental; • the right of exhibition, that is, the right to publicly display the original Agency copy or reproductions of fine art or photographic work; 5 Is there a centralised copyright agency? What does this agency • the right of performance, that is, the right to publicly perform a work, do? and to publicly communicate the performance of a work by any means The National Copyright Administration of China (NCAC) provides the fol- or process; lowing services: • the right of presentation, that is, the right to publicly present a work of • manages the use of works belong to the nation; fine art, a photographic work, a cinematographic work and work cre- • supervises the copyright registration and statutory licence; ated by a similar process, or other works, by projector, slide projector or • handles the copyright issues abroad or with Hong Kong, Macao any other technology or instrument; and Taiwan; • the right of broadcasting, that is, the right to broadcast a work or dis- • investigates serious illegal conduct, or foreign illegal conduct in copy- seminate it to the public by any wireless means, to communicate the right; and broadcast of a work to the public by wire or by rebroadcasting, and to • enhances the protection of copyrighted software. publicly communicate the broadcast of a work by loudspeaker or any other similar instrument transmitting signs, sounds or images; Subject matter and scope of copyright • the right of communication through information network, that is, the right to make a work available to the public by wire or by wireless 6 What types of works are copyrightable? means, so that people may have access to the work at a place and time The Implementation of the Copyright Law defines the ‘works’ as original chosen by them; intellectual creations capable of being reproduced in a certain tangible

• the right of cinematography, that is, the right to make a cinematic adap- ‘architectural works are aesthetic works, which are, and can be, expressed tation of a work using cinematography or a similar process; in architectural or constructional form’. • the right of adaptation, that is, the right to change a work into a new one Since the Copyright Law lists ‘architecture’ and ‘graphic works and with originality; model works’ as two different kinds of works, only three-dimensional build- • the right of translation, that is, the right to change the language in ings and structures rather than graphic construction designs or architec- which the work is written; and tural model could be regarded as architecture. Moreover, the originality test • the right of compilation, that is, the right to compile, by selection or might be stricter than that for other works. Architecture is not only an intel- arrangement, pre-existing works or passages into a new work. lectual creation but may also be appreciated with a certain aesthetic sense. However, when the function and the aesthetic of the architectural design 8 What may not be protected by copyright? cannot be separated, then ‘architecture’ cannot be protected. Copyright protects the original expression of ideas, but not the ideas. Further subjects excluded from copyright protection are: 12 Are performance rights covered by copyright? How? • laws and regulations, resolutions, decisions and orders of state organs, The right of performance enjoys copyright protection as ‘the right to publicly other documents of a legislative, administrative or judicial nature and perform a work, and to publicly communicate the performance of a work by their official translations; any means or processes’. Based on this definition, performance rights might • current affairs news; and be considered in two scenarios: live performance and broadcasting per- • calendars, numerical tables and forms of general use, and formulas. formance by varied means. Performing the work live, with no permission from the copyright owner, could infringe the owner’s performance rights, 9 Do the doctrines of ‘fair use’ or ‘fair dealing’ exist? except the gratuitous live performance defined in the limitations clause. A The following use would be legally permitted without the copyright owner’s typical broadcasting performance would be classed as background music consent or payment of remuneration, provided that the personal rights and in places of business such as supermarkets, clubs, restaurants, airports, etc, other rights of the copyright owner are not jeopardised: for which the consent of the copyright owner must be obtained with a view • use of another person’s published work for purposes of the user’s own to remuneration. personal study, research or appreciation; • appropriate quotation from another person’s published work in one’s 13 Are other ‘neighbouring rights’ recognised? How? own work for the purpose of introducing or commenting on a certain Neighbouring rights include the rights of publishers on typographical work, or explaining a certain point; design, the rights of performers, producers of sound recordings or video • unavoidable inclusion or quotation of a published work in the media, recordings and radio stations or television stations. Neighbouring rights such as in a newspaper, periodical or radio or television program, for owners are expected to refrain from jeopardising the statutory interests of the purpose of reporting current events; copyright owners. For instance, the copyright owner shall be remunerated • publishing or rebroadcasting by the media, such as a newspaper, peri- when their works are performed, recorded or broadcasted. The neighbour- odical, radio station and television station, of an article published by ing rights owners have similar property rights, while only the performer has another newspaper or periodical, or broadcast by another radio station personal rights. or television station, etc on current political, economic or religious top- Integrated circuit layouts are not protected as neighbouring rights ics, except where the author declares that such publishing or rebroad- under the Copyright Law, but by the Regulations for the Protection of casting is not permitted; the Layout Design of Integrated Circuits and administrated by the State • publishing or broadcasting by the media, such as a newspaper, periodi- Intellectual Property Office (SIPO). cal, radio station and television station of a speech delivered at a public gathering, except where the author declares that such publishing or 14 Are moral rights recognised? broadcasting is not permitted; Yes. Authors’ personal rights include: • translation, or reproduction in a small quantity of copies of a published • the right of publication, that is, the right to decide whether to make a work by teachers or scientific researchers for use in classroom teaching work available to the public; or scientific research, provided that the translation or the reproductions • the right of authorship, that is, the right to claim authorship in respect are not published for distribution; of, and to have the author’s name mentioned in connection with, • use of a published work by a state organ to a justifiable extent for the a work; purpose of fulfilling its official duties; • the right of revision, that is , the right to revise or authorise others to • reproduction of a work in its collections by a library, archive, memorial revise a work; and hall, museum, art gallery, etc for the purpose of display, or preservation • the right of integrity, that is, the right to protect a work against distor- of a copy, of the work; tion and mutilation. • gratuitous live performance of a published work, for which no fees are charged to the public, nor payments are made to the performers; For the neighbouring rights, only the performers have personal rights: • copying, drawing, photographing or video-recording of a work of art • to claim performership; and put up or displayed in an outdoor public place; • to protect the image inherent in his performance from distortion. • translation of a published work of a Chinese citizen, legal entity or other organisation from Chinese into languages of minority ethnic groups for Copyright formalities publication and distribution in the country; and • transliteration of a published work into Braille for publication. 15 Is there a requirement of copyright notice? There is no requirement of notice under copyright laws, even though copy- 10 What are the standards used in determining whether a right notice is often used by right holders. In practice, the courts would particular use is fair? protect an author’s rights regardless of any formality, as long as the citizen, Under the Copyright Law there are two criteria for use to be fair. The use legal entity or other organisation whose name is mentioned in connection shall satisfy certain scenarios declared in the detailed and exhaustive list with a work shall, in the absence of proof to the contrary, be deemed to be of statutory limitations on copyright. Moreover, the use shall not jeopardise the author of the work. the personal and other legitimate rights of the copyright owner. For example, the name of the author and the title of the work shall be mentioned 16 What are the consequences for failure to display a copyright when it is used; otherwise, the user would infringe the right of authorship. notice? Also, the use shall not jeopardise the market value of the works. It is not necessary to display a copyright notice since the author’s right to protection is triggered automatically by a work’s creation. However, copy- 11 Are architectural works protected by copyright? How? right notice is often an easy proof of ownership, especially in litigation. Architecture is specifically protected under the Copyright Law. The Implementation of the Copyright Law further provides its definition that

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17 Is there a requirement of copyright deposit? However, in any of the following cases, the author of a work created There is no requirement of copyright deposit in China. As an optional in the course of employment shall enjoy the right of authorship, while the approach to evidence authorship, a works deposit is available at the employer shall enjoy the other rights included in the copyright and may Copyright Protection Centre of China. In keeping with the needs of works reward the author: creation and commercial operation and in order to secure and deposit evi- • drawings of engineering designs and product designs, maps, computer dence, the Centre provides the applicants with creation certificates by seal- software and other works which are created in the course of employing off their works, semi-finished works or creative designs. Works deposit ment, mainly with the material and technical resources of the employer is not subject to any censorship or any restriction. and for which the employer bears responsibility. In this scenario, no written contract is required; and 18 What are the consequences for failure to make a copyright • works created in the course of employment the copyright in which is deposit? vested in the employer in accordance with laws, administrative regulations or contracts. Copyright deposit is neither mandatory nor the only approach for authors to protect copyrights actively and in timely fashion. However, copyright 26 May a hiring party own a copyrighted work made by an deposit is often an easy proof of copyright. independent contractor? 19 Is there a system for copyright registration? Yes. Normally, the ownership of the copyright in a commissioned work shall be agreed upon in a contract between the commissioning and the commis- Yes. The registration service is provided by the Copyright Protection Centre sioned parties. In the absence of such a contract or of an explicit agreement of China. Specifically, the Centre provides professional services in the fields in such a contract, the copyright in the work shall belong to the commis- of copyright-related social services, including computer software registra- sioned party. tion, works copyright registration, copyright transfer, exclusive licensing contract registration and filing, pledge contract registration, copyright law 27 May a copyrighted work be co-owned? publicity and consulting, copyright authentication, copyright certification, third-party investigation and evidence collection, works deposit, copyright Yes. Where a work is created jointly by two or more authors, the copyright in dispute mediation, and other copyright public services and tasks assigned the work shall be enjoyed jointly by the co-authors. No co-authorship may by the National Copyright Administration of China. be claimed by anyone who has not participated in the creation of the work. Where a work of joint authorship can be separated into parts and 20 Is copyright registration mandatory? exploited separately, each co-author may be entitled to independent copyright in the part that he or she creates, provided that the exercise of such Copyright registration is not mandatory. Nonetheless, it is always advis- copyright does not prejudice the copyright in the joint work as a whole. able for authors to register their works with the Copyright Protection Centre of China to earn royalties. This registration process provides a legal 28 May rights be transferred? record of copyright ownership as well as additional legal benefits in cases of infringement. Property rights may be transferred in full or in part with a written contract.

21 How do you apply for a copyright registration? 29 May rights be licensed? To register a work, right holders should submit a completed application Yes. Anyone who exploits another person’s work shall conclude a copyright form, a non-returnable copy or copies of the work to be registered and licensing contract with the copyright owner, except where no permission related documentary evidence, such as identification of the applicant and need be obtained under this Law. the agent, proof of copyright attribution, etc. 30 Are there compulsory licences? What are they? 22 What are the fees to apply for a copyright registration? Yes. A user might defend its use by compulsory licences when the use sat- The fee for copyright registration of one work varies from 100 yuan to 2,000 isfies certain situations; then the user does not need the author’s permis- yuan depending on the kind of work. For the registration of several works, sion but must remunerate him or her. There are five kinds of statutory the fee ranges from 50 yuan to 400 yuan from the second work. licences designated in the Copyright Law and two kinds in the Regulation on Protection of the Right to Network Dissemination of Information: 23 What are the consequences for failure to register a copyrighted • a newspaper or periodical publisher reprints work that is published by work? other newspaper or periodical, prints an abstract of it or prints it as reference material; Usually, there are no consequences since copyright registration is not • a producer of sound recordings, in making a sound recording, exploits mandatory. However, a copyright registration certificate is an easy proof musical work of which a lawful sound recording has already been made; of copyright. • a radio station or television station broadcasts a published work; • a radio station or television station broadcasts a published Ownership and transfer sound recording; 24 Who is the owner of a copyrighted work? • a short extract from published works is compiled in textbooks for the nine-year compulsory education and for national education planning; The initial owner is the author, which may be a natural person, a legal entity • a short extract from published works is used to produce courseware or an organisation. The author’s heirs or assignees may also own the prop- for nine-year compulsory education or the plan of national education erty rights to a work. However, personal rights can only belong to the author through the information network; and because they cannot be assigned or even inherited (for exceptions see ques- • for the purpose of aiding poverty-stricken areas, a published work is tion 28). available, free of charge, to the public in rural areas through the infor- If the identity of the author of a work is unclear, the legal bearer of the mation network. original work shall have the right to exercise all copyright claims, except the author’s right of acknowledgement. Upon establishment of the author’s 31 Are licences administered by performing rights societies? identity, the author or his inheritor shall exercise the copyright claims. How? 25 May an employer own a copyrighted work made by an Yes. Licences of varied copyright and related rights would be adminis- employee? tered by five performing rights societies – the Music Copyright Society of China (MCSC), China Audio-Video Copyright Association, China Written Yes, although not all works made by an employee during the period of Works Copyright Society, Images Copyright Society of China and China employment are owned by the employer. Usually, a work created by an Film Copyright Association (Collective). Their administrative systems for employee in the fulfilment of tasks assigned to him or her by his or her licensing are similar. The MCSC, for example, would negotiate with poten- employer is a work created in the course of employment. The copyright in tial users of registered musical works on rates of royalties for the purpose such work shall be enjoyed by the author; however, the employer shall have of collective administration; then issue licences to the users. MCSC must priority to exploit the work within the scope of its professional activities. collect royalties from users to remunerate the music copyright owners. The

MCSC would also take legal action against infringement of music copy- judging a direct infringement, whether: the acts committed are controlled right, administered by the MCSC if necessary. under copyright; the acts are not allowed by the right holder; and the acts cannot be admitted as exceptions and limitations by the Copyright 32 Is there any provision for the termination of transfers of Law. The infringement would be actionable if these three elements are rights? all established. The Copyright Law does not stipulate any right of termination, so any ter- Whether the acts are committed on purpose or not shall only influ- mination must be contractually agreed in writing. Normally, without any ence the amount of the damages rather than the determination of termination clause in a transfer contract, the duration of the transfer shall the infringement. be equal to the protective period of the rights. 40 Does secondary liability exist for indirect copyright 33 Can documents evidencing transfers and other transactions infringement? What actions incur such liability? be recorded with a government agency? Although there is no secondary liability for indirect copyright infringement Yes. The Copyright Protection Centre of China can provide such services. clearly laid down in the Copyright Law, the Interpretation of the Supreme The applicant shall complete the online application form first and then sub- People’s Court Concerning Several Issues on Hearing Cases in Internet mit the materials requested for recording to the Centre personally or by its Copyright Dispute provides for secondary liability for indirect infringement hired agent. Materials include the application form, the transfer contract, in network. In addition, this secondary liability shall also be actionable the identification certificate of the applicant, the registration certificate of under China’s Tort Law. Article 9 of the Tort Law regulates that ‘One who the rights and the search results of the registration of the rights, if avail- abets or assists another person in committing a tort shall be liable jointly able. After the application fee is paid, the applicant receives a receipt. The and severally with the tortfeasor.’ Thus, secondary liability for indirect cop- process lasts 10 working days during which the applicant may be requested yright infringement would be incurred when one abets or assists in a direct to supply further supporting documents. Details of the transfer record may copyright infringement. then be tracked online and the applicant should receive the certificate of the In practice, courts seem to believe a preparatory act that would lead record after three working days. to a direct infringement or an act that would expand the damages of the infringement may also incur secondary liability. Duration of copyright 41 What remedies are available against a copyright infringer? 34 When does copyright protection begin? China has a two-track protection system. In one approach, the copyright Copyright protection begins automatically at the moment when works owner may file a complaint to the local copyright regulatory and enforce- are created. ment department, requesting the enforcement of regulatory measures against the infringer, including an order to stop infringement and imposi- 35 How long does copyright protection last? tion of a fine. Alternatively, the injured party may bring a suit against the The protection term of the rights of authorship, revision and integrity is per- copyright infringer with requirement of ceasing the infringement, eliminat- manent. For the right of publication and property rights, the duration is the ing the adverse effects of the act, making an apology and/or paying com- author’s lifetime and 50 years after the death. The following points should pensation for damages. be noted: The right owner may, before taking legal proceedings, apply to a court • The term of a work of joint authorship shall expire on 31 December of for measures to order discontinuation of the infringement and to preserve the 50th year after the death of the last surviving author. property where he or she can present evidence to prove that another per- • In respect of the work of a legal entity or other organisation or a work son is committing, or is about to commit, an infringement of his or her right which is created in the course of employment and the copyright (except which, unless prevented promptly, is likely to cause irreparable harm to his the right of authorship) of which is enjoyed by a legal entity or other or her legitimate rights and interests. organisation, the term of protection for the right of publication and the Further, if criminal liability is involved, the infringed party may also property rights shall be 50 years, expiring on 31 December of the 50th report it to the police for criminal investigation. year after the first publication of such work. • In respect of a cinematographic work or work created by a similar 42 Is there a time limit for seeking remedies? process, or a photographic work, the term of protection for the right Yes. The Supreme People’s Court interpretation announces that the time of publication and the property rights shall be 50 years, expiring on 31 limit for actions of copyright infringement is two years, starting from the December of the 50th year after the first publication of such work. date when a copyright holder knows or should have known of the infringement. In cases where the copyright holder initiates a lawsuit after two years Neighbouring rights have the same duration as copyrights. and the infringement still continues when the lawsuit is initiated, the court shall, within the protection period of the copyright, order the defendant to 36 Does copyright duration depend on when a particular work stop the infringements, and the compensation amount for infringement was created or published? shall be calculated two years from the date when the copyright holder initi- In respect of the work of a legal entity, organisation or work which is created ated the lawsuit with the court. in the course of employment, the copyright (except the right of authorship) which is enjoyed by a legal entity or other organisation such work shall no 43 Are monetary damages available for copyright infringement? longer be protected under copyright if it is not published within 50 years Yes. Article 49 of the Copyright Law stipulates that monetary damages after the completion of its creation. It is the same with the rights to films or shall be paid in terms of the actual losses suffered by the right owner, or the motion pictures, works created using a process similar to films and photo- amount of the unlawful gains of the infringer when the actual losses are dif- graphic works. ficult to calculate. Where the actual losses of the right owner or the unlawful gains of the infringer cannot be determined, the court shall, in light of the 37 Do terms of copyright have to be renewed? How? circumstances of the infringement, decide on compensation amounting to No. not more than 500,000 yuan.

38 Has your jurisdiction extended the term of copyright 44 Can attorneys’ fees and costs be claimed in an action for protection? copyright infringement? No. Yes. Compensation shall include the reasonable expenses that the right owner has paid for putting a stop to the infringement, which would include Copyright infringement and remedies reasonable attorneys’ fees and costs such as notarisation fees. The court usually exercises discretion on how much is deemed reasonable to cover 39 What constitutes copyright infringement? attorneys’ fees. The Copyright Law offers a non-exhaustive list of specific acts of infringement. In practice, the court would consider the following elements when www.gettingthedealthrough.com 39

Update and trends In the past year, China has strengthened judicial and administrative pro- by publishing guidelines for trial, regarding new problems emerging tection of copyright holders’ rights. Two pieces of proposed legislation into the market. For example, legal disputes surrounding entertain- have been released for public comments with the intent to procedurally ment TV shows in China have increased gradually in recent years. ensure copyright enforcement. Therefore, Beijing High Court issued in April 2015 the Answers to First, on 26 February 2015 China’s Supreme Court released a draft Several Questions regarding the Trial of Copyright Disputes relating Interpretation Concerning Several Issues on the Application of Law to Entertainment TV Shows (the Answers). While excluding the TV in the Examination of Behaviour Preservation Requests Involved in show format (deemed in the realm of ideas) from copyright protec- Intellectual Property and Competition Disputes to the public for com- tion, the Answers treats entertainment show video as a work (similar to ments and reviews. The draft covers various issues relating to the system film shooting), thus it is protected under copyright law. Moreover, the where a claimant (intellectual property right owners or stakeholders) Answers stated that the original script, stage design and music are pro- may request a court to order the other party to perform certain acts or to tected works. And the format licence is a contract involving a copyright prohibit the other party from committing certain acts before the court licence and technical services. issues damages or injunctive action to the winning party. Interim meas- Responding to another hot topic in recent years, on 13 April 2016 ures such as these will provide copyright owners with timely, easy and Beijing Higher People’s Court released Guidelines for the Trial of effective remedies. Internet Related Intellectual Property Disputes (the Guidelines), cov- Secondly, on 9 September 2015 the National Copyright ering internet copyright and other issues that are on the rise both in Administration released a revised draft of Measures for the Imposing of number and in complexity. The Guidelines request courts to follow Sanctions by the Copyright Administration. In addition to streamlining the principle of the balance of interests and of reasonable preventive the procedure, this draft also includes a new set of provisions regulating measures when deciding on issues such as the burden of proof, effective administrative penalties for copyright infringement in the context of notification, what constitutes ‘known’ to the internet service providers, the internet. and how to determine similar goods or services for application software. In judicial practice last year, apart from strengthening the procedural protection, the courts also provided more explicit explanation,

45 Are there criminal copyright provisions? What are they? 46 Are there any specific liabilities, remedies or defences for Yes. Article 48 of the Copyright Law states that criminal liabilities shall be online copyright infringement? investigated in accordance with law where a crime is constituted. In the Yes. The Regulation on Protection of Information Network Transmission Criminal Law, article 217 declares that whoever, for the purpose of mak- Right focuses on the online copyright infringement issue. Specifically, ing profits, commits any of the following acts of infringement on copyright notice-takedown procedure has been introduced into this Regulation. shall, if the amount of illegal gains is relatively large, or if there are other Where a rights holder is of the opinion there has been an infringement, serious circumstances, be sentenced to fixed-term imprisonment of not he or she may notify the network service provider in writing and request more than three years or criminal detention and shall also, or shall only, be the network service provider to delete his or her copyrighted works, per- fined; if the amount of illegal gains is huge or if there are other especially formances, audio and video products or to remove the links to such works, serious circumstances, he or she shall be sentenced to fixed-term imprison- performances, audio and video products. Upon receipt of the notice from ment of not less than three years but not more than seven years and shall the rights holder, the network service provider shall forthwith delete the also be fined: allegedly infringing content or remove the links to the allegedly infringing • reproducing and distributing a written work, musical work, motion pic- content and would not then bear the compensation liability. ture, television programme or other visual works, computer software or other works without permission of the copyright owner; 47 How may copyright infringement be prevented? • publication of books for which another party has exclusive publica- Rights holders may legally be allowed to adopt technical measures to pre- tion rights; vent their information network transmission rights from being infringed. • reproducing and distributing an audio or video recording produced by Any organisation or individual shall not intentionally avoid or destroy tech- another person without permission of the producer; or nical measures and shall not intentionally manufacture, import or provide • producing or selling a work of fine art with the forged signature of devices or parts used principally for the avoidance or destruction of techni- another painter. cal measures and shall not provide technical services for others to avoid or destroy technical measures.

Xie Guanbin [email protected] Zhang Bin [email protected] Che Luping [email protected]

A1105, Nanxincang Business Building Tel: +86 10 6409 6099 A22, Dongsi Shitiao St Fax: +86 10 6409 6260 / 6261 Beijing 100007 www.lifanglaw.com China en.lifanglaw.com

Relationship to foreign rights • the Convention on the Rights of Persons with Disabilities; • the Convention on the Protection and Promotion of the Diversity of 48 Which international copyright conventions does your country Cultural Expressions 2005; belong to? • the Convention for the Safeguarding of the Intangible Cultural WIPO-administered treaties include: Heritage; • the Beijing Treaty on Audiovisual Performances; • the Agreement establishing the World Trade Organization (WTO); • the Marrakesh Treaty to Facilitate Access to Published Works for • the World Trade Organization (WTO) – Agreement on Trade-Related Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled; Aspects of Intellectual Property Rights (TRIPS Agreement) (1994); • the WIPO Copyright Treaty (9 June 2007); and • the WIPO Performances and Phonograms Treaty (9 June 2007); • the Convention for the Protection of Cultural Property in the Event of • the Convention for the Protection of Producers of Phonograms Against Armed Conflict (5 April 2000). Unauthorized Duplication of Their Phonograms (30 April 1993); • the Berne Convention for the Protection of Literary and Artistic Works Universal Copyright Convention: (15 October 1992); and • the Convention on the Means of Prohibiting and Preventing the Illicit • the Convention Establishing the World Intellectual Property Import, Export and Transfer of Ownership of Cultural Property; Organization (3 June 1980). • the United Nations Convention on Contracts for the International Sale of Goods; and Copyright-related multilateral treaties include: • the Convention concerning the Protection of the World Cultural and • the Agreement on the Importation of Educational, Scientific and Natural Heritage. Cultural Materials; • the Convention and Statute on Freedom of Transit; 49 What obligations are imposed by your country’s membership • the Convention relating to the Status of Stateless Persons; of international copyright conventions? • the United Nations Convention on Jurisdictional Immunities of States China accords national treatment to nationals from other member states and Their Property; with regard to protection of copyright. • the United Nations Convention on the Use of Electronic Communications in International Contracts;

www.gettingthedealthrough.com 41

France

Olivia Bernardeau-Paupe Hogan Lovells LLP

Legislation and enforcement the IPC, defining the edition contract now specifically reads that: ‘A publishing contract is a contract by which the author of a work of the mind or 1 What is the relevant legislation? his successors in title assign under specified conditions to a person referred Copyright in France is mainly governed by two laws: the Law of 11 March to as the publisher the right to manufacture or have manufactured a num- 1957 and the Law of 3 July 1985. These laws and all other relevant legisla- ber of copies of the work, or to create it or have it created in a digital form.’ tion are codified in the first part of the French Intellectual Property Code Once completed, the Digital Single Market reform currently ongoing (from articles L 111-1 to L 343-7) (IPC). at the EU level will have a great impact on French provisions relating to the The copyright law applicable in France also derives from international digital exploitation of works (see ‘Update and trends’). conventions to which France is a party, such as: • the Berne Convention for the Protection of Literary and Artistic Works 4 Do your copyright laws have extraterritorial application to of 1886; deal with foreign-owned or foreign-operated websites that • the Rome Convention for the Protection of Performers, Producers of infringe copyright? Phonograms and Broadcasting Organisations of 1961; Copyright provisions per se do not provide for extraterritorial applica- • WIPO Performances and Phonograms Treaty of 20 December 1996 tion of French copyright law. However, further to article 7.2 of the Council (WPPT); Regulation (EC) No. 1215/2012, ‘a person domiciled in a Member State • the TRIPS Agreement of 1995, notably on copyrights and related may, in another Member State, be sued: in matters relating to tort, delict rights; and or quasi-delict, in the courts of the place where the harmful event occurred • the WIPO Copyright Treaty of 1996. or may occur.’ Based on this article, and in three different decisions handed down The law of the European Union is also part of the French copyright law on 22 January 2014, the French Supreme Court ruled that the mere acces- when it is implemented into national law. In particular, the 2006 DADVSI sibility of the website from the French territory was sufficient to consider law, on authors’ rights and related rights in the information society, was that French courts have jurisdiction to hear of online copyright infringe- adopted in France in order to implement EU Directive 2001/29/EC, which ment cases. itself implemented the WIPO Copyright Treaty of 1996. Also, Law No. 2015-195 dated 20 February 2015 results from the imple- Agency mentation into French law of EU Directive 2011/77 relating to the term of protection of copyright and certain related rights. 5 Is there a centralised copyright agency? What does this agency do? 2 Who enforces it? There is no centralised copyright agency in France. Civil courts Only a few specifically designated courts throughout France have jurisdic- Subject matter and scope of copyright tion to hear copyright cases. 6 What types of works are copyrightable?

Criminal courts As a matter of principle, all creations are protected by copyright provided Copyright infringement may also be a criminal offence, so that criminal they are original. Considerations such as the merit of the author or the pur- courts also have jurisdiction to hear copyright cases. pose of the work, the type of work or the form of expression are irrelevant. Originality has been defined by French case law as the expression of the personality of the author. This definition is in line with European French Customs case law, which has validated the French broad conception of originality. Copyright owners may request French Customs to detain goods that Therefore, the mere display of skill, labour and judgement is not sufficient; infringe their copyright. French Customs detain allegedly infringing goods creativity on the part of the author is required. for up to 10 days. After that deadline, the goods are released unless legal Article L 112-2 of the IPC provides for a non-exhaustive list of the proceedings are brought by the copyright owner. works that may be protected by copyright law: books and other writings, speeches, musical works, works of fine art such as paintings, drawings The HADOPI or sculptures, photographic and cinematographic works, plans, maps The HADOPI is a French governmental agency that also participates in and sketches. enforcing copyright law in France. The agency was created in 2009 in order to protect the interests of intellectual property right owners on the internet 7 What types of rights are covered by copyright? and implements the method of gradual response to copyright infringement. Copyright covers both economic and moral rights. 3 Are there any specific provisions of your copyright laws that Pursuant to article L 122-1 of the IPC, economic rights relate to repre- address the digital exploitation of works? Are there separate sentation rights as well as reproduction rights. statutory provisions that do so? Representation rights consist of the communication of the work to the public by any means and reproduction rights consist of the physical fixation The Order of 12 November 2014 has adapted the IPC to the digital era. of a work by any process permitting it to be communicated to the public in Indeed, the digital aspects of the exploitation of a work have been taken an indirect way. into consideration and introduced to the Code. Notably, article L 132-1 of

Acts of representation or reproduction of the work carried out without authorship. It should be noted, however, that the author is entitled to the authorisation of the owner of the rights constitute acts of infringement. remain anonymous or to use a pseudonym; and • the right for the author to reconsider or to withdraw his or her work 8 What may not be protected by copyright? from the market even after publication provided that he or she indem- Mere ideas or concepts cannot be the subject of copyright protection and nifies the assignee for any harm suffered as a result of the reconsidera- thus may be used freely. It is only the form in which the idea is expressed tion or the withdrawal. that can be protected. Any violation of the moral right of the author constitutes an act 9 Do the doctrines of ‘fair use’ or ‘fair dealing’ exist? of infringement. There is no doctrine of fair use or any equivalent general open norm Copyright formalities in France. However, article L 122-5 of the IPC lists exceptions to the exclusive 15 Is there a requirement of copyright notice? right of the author to reproduce his or her work. There is no requirement of copyright notice in France. The protection Indeed, once a work has been disclosed, the author may not prohibit, afforded by copyright is granted automatically from the date of creation for instance, ‘private and gratuitous performances carried out exclusively of the work. within the family circle, parody, pastiche and caricature, observing the rules of the genre or acts necessary to access the contents of an electronic 16 What are the consequences for failure to display a copyright database for the purposes of and within the limits of the use provided notice? by contract.’ See question 15. 10 What are the standards used in determining whether a 17 Is there a requirement of copyright deposit? particular use is fair? Every publisher, printer, producer, distributor or importer of documents See question 9. must deposit copies of all published materials in one of the following institutions: 11 Are architectural works protected by copyright? How? • the French National Library (BNF); As long as their work is original, architects own copyrights. Indeed article • the National Audiovisual Institute (INA), which manages radio L 112-2 12 of the IPC expressly mentions the plans, sketches and three- and television; dimensional works relative to architecture. • the National Cinema Centre (CNC), which is responsible for films; and For instance, reproduction of a plan without authorisation, in order to • any library authorised by order of the Ministry of Culture. build a new building constitutes infringement. 18 What are the consequences for failure to make a copyright 12 Are performance rights covered by copyright? How? deposit? Performance rights are the rights granted to a performer such as a musi- Pursuant to article L 133-1 of the French Heritage Code, the fine for not cian, a dancer or any other person who acts, sings, recites or otherwise per- complying with the legal deposit is €75, 000. forms. In France those rights are referred to as ‘neighbouring rights’. Pursuant to article L 212-3 of the IPC, performers have the exclusive 19 Is there a system for copyright registration? right to authorise all recording, reproduction or communication to the There is no system for copyright registration in France. public of their performance. Furthermore, the performer’s permission is required in case of any separate use of the sounds or images of his perfor- 20 Is copyright registration mandatory? mance where both the sounds and images have been fixed. There is, however, an exception concerning audiovisual works: the See question 19. contract concluded between a performer and a producer for the performance of an audiovisual work implies authorisation by the performer to 21 How do you apply for a copyright registration? fix, eproducer and communicate this performance to the public. See question 19.

13 Are other ‘neighbouring rights’ recognised? How? 22 What are the fees to apply for a copyright registration? The IPC lists two other ‘neighbouring rights’ that are only economic rights: See question 19. • the rights of the phonogram producers; and • the rights of the videogram producers. 23 What are the consequences for failure to register a copyrighted work? Alongside those ‘neighbouring rights’, producers of databases benefit See question 19. from a sui generis right. Databases are protected for 15 years following their establishment. Ownership and transfer 14 Are moral rights recognised? 24 Who is the owner of a copyrighted work? Moral rights are recognised in France. They are perpetual, inalienable The owner of a copyrighted work is its author, in other words the person and imprescriptible, and therefore may not be transferred, may not be who created the work. However, the economic rights may be transferred renounced by the author and must be respected even after the work has either through inheritance or by a contract, in which cases the beneficiary entered the public domain. After the death of the author, moral rights are or the assignee becomes the owner of the copyright. transferred to his or her heirs. Under a French legal presumption, the name of the person under As a result, moral rights belong to the author, even though he or she which the work was published is deemed to be its author. may have transferred the economic rights to someone else. Moral rights cover the following prerogatives: 25 May an employer own a copyrighted work made by an • the right for the author to divulge his or her work; employee? • the right for the author to have the integrity of his or her work Under French law, without regard to the employment contract that may respected. This right allows the author to oppose any modification of be in force between an employer and his or her employee, the employee his or her work (cuts, for instance) as well as to oppose any modifica- remains the author of his or her work and therefore the owner of tions that would alter the spirit of his or her work; the copyright. • the right for the author to have his or her name indicated on any The exception to this rule is the collective work. A collective work is representation or reproduction of his work. It is called the right of defined by article L 113-2 subsection 3 of the IPC as:

www.gettingthedealthrough.com 43

In compensation, the same provision confers the performer and pro- Update and trends ducers a right to remuneration.

The Advocate General’s opinion in the CJEU GS Media case 31 Are licences administered by performing rights societies? C-160/15 was made public on 7 April 2016. Converse to existing case How? law, he considered hyperlinking to be lawful regardless of whether the content was uploaded with or without permission. Performers are free to adhere to any performing rights societies but are The digital single market reform ongoing at the EU level con- under no obligation. In France various societies exist, such as: tains 16 initiatives in a variety of fields such as telecommunications, • SACEM for musical works; consumer rights and Big Data, each of which is intended to bring • SACD for drama and audiovisual works; and France one step closer to the European digital single market. One of • SCAM, for multimedia works. the 16 initiatives focuses on copyright reform. A draft bill on the Freedom of the Creation, Architecture and Property was introduced before the French National Assembly on 32 Is there any provision for the termination of transfers of 8 July 2015. The draft bill contains, among others, provisions on the rights? promotion of artistic creation, performers and phonograms produc- Under French law, perpetual agreements are prohibited. Therefore, copy- ers’ rights and the copyright levy system. Discussions are ongoing right transfer can only be temporary. The transfer agreement has to specify regarding, among other things, whether cloud computing services precisely whether the transfer is valid for the whole legal duration of the shall be subject to the copyright levy. protection of the copyrighted work or a shorter period.

33 Can documents evidencing transfers and other transactions a work created at the initiative of a natural or legal person who edits it, be recorded with a government agency? publishes it and discloses it under its direction and name and in which There is no agency specific to copyright formalities in France. the personal contributions of the various authors who participated in its production are merged in the overall work for which they were con- Duration of copyright ceived, without it being possible to attribute to each author a separate right in the work as created. 34 When does copyright protection begin? Copyright protection starts from the date of creation of the work. Therefore, the name under which the collective work is published being that of the employer, the employer becomes the owner of the copyright 35 How long does copyright protection last? even though he or she is not the author of the work. The employees will be vested of the moral rights that ensue from the individual part of Moral rights have no time limit. their creations. Economic rights last for the whole life of the author and shall subsist for his or her successors in title for 70 years. The starting point is 1 January 26 May a hiring party own a copyrighted work made by an of the calendar year following the death of the author. independent contractor? In the case of collaboration works, protection is provided for the authors’ entire lives plus 70 years from the death of the last contributor. Under French law, without regard to the employment contract that may Published pseudonymous, anonymous or collective works are pro- be in force between an employer and an independent contractor, the crea- tected for 70 years from 1 January of the calendar year following that in tor of a work remains the author and therefore the owner of the copyright, which the work was published. without having to comply with any further formality. When the protection expires the work is said to enter the public domain, which means that it can be freely used. 27 May a copyrighted work be co-owned? A work may be co-owned whenever it results from the collaboration 36 Does copyright duration depend on when a particular work between two persons. was created or published? Article L 113-2 subsection 1 of the IPC defines works of collaboration as Copyright protection is identical for all types of work and starts from the works ‘in the creation of which more than one natural person has partici- date of creation of the work. pated’. In this case, the copyright is co-owned by several natural persons. Article L 113-3 of the IPC provides that a work of collaboration shall be 37 Do terms of copyright have to be renewed? How? the joint property of its authors. The authors shall exercise their rights by common accord. Terms of copyright do not have to be renewed.

28 May rights be transferred? 38 Has your jurisdiction extended the term of copyright protection? Moral rights are inalienable and may not be transferred. However, the economic rights of a copyright are transferable either Act No. 2015-195 of 20 February 2015, aiming at the implementation into through inheritance or contract. French law of various provisions of the Directive 2011/77/EU on the term of protection of copyright and certain related rights, increased the duration 29 May rights be licensed? of performers’ rights to 70 years after the communication of the performance to the public or from the publication of the performance. The economic rights of copyrights may be licensed under French law. Under French contract law, licence may not be concluded for a perpetual Copyright infringement and remedies term and licences with an indefinite duration have been cancelled by French courts. 39 What constitutes copyright infringement? Whenever the contract is not clear, it will be interpreted in favour of Copyright is infringed by a person who, without the authorisation of the the author by French courts. author or the right holder, represents or reproduces the work partially or totally. 30 Are there compulsory licences? What are they? The same applies to the translation, adaptation or transformation, The IPC provides for compulsory licences where a phonogram has been arrangement or reproduction by any technique or process. published for commercial purposes. Neither the performer nor the pro- Copyright may be infringed when the moral right of the author is ducer may oppose its broadcasting or the simultaneous and integral cable altered (disclosure, integrity, paternity, withdrawal – see question 14). distribution of such broadcast, as well as the reproduction of such phono- Civil liability is strict; there is no requirement for the infringer to have gram strictly reserved for those purposes, carried out for or on behalf of any knowledge or intent to commit the infringement. an audiovisual communication enterprise with a view to inclusion in the soundtrack of its own programme broadcast on its own channel and/or on any channels of audiovisual communication enterprises which pay equitable remuneration (article L 214-1 of the IPC).

40 Does secondary liability exist for indirect copyright right that was infringed. This amount is not exclusive of compensation for infringement? What actions incur such liability? the moral prejudice caused to the injured party. The provision that most closely approximates contributory liability is article L 335-2-1 of the IPC. Thus, the editing, making available to the public 44 Can attorneys’ fees and costs be claimed in an action for or communicating to the public of a piece of software obviously intended copyright infringement? to make sound recordings available to the public without authorisation is Attorneys’ fees and costs may be claimed in an action for copyright prohibited and is a criminal offence. infringement. Usually, the attorney will provide the court with an affidavit The Criminal Code also includes the concept of complicity, which is of the fees invoiced for the whole proceedings. However, in practice and equivalent to the figure of contributory infringement. The accomplice of despite the aforementioned affidavit, the sums allocated by French courts a criminal offence (including felonies against copyright) stands for any- are low. one who knowingly abets, facilitates or by means of a promise, threats or abuses of authority, provokes the offence or gives instructions to commit 45 Are there criminal copyright provisions? What are they? the offence. Copyright infringement amounts to a criminal offence when committed with malice. 41 What remedies are available against a copyright infringer? In addition, specific criminal offences exist. For instance, the follow- Several remedies are available against a copyright infringer, including ing are criminal offences: in particular: • for the owner of an access to online public communication services • award of monetary damages (see question 43); not to have implemented security measures to ensure that such access • injunction (final or preliminary) to refrain from infringing; is not used for the reproduction or communication to the public of • precautionary seizure order of the capital assets and real estate of the works protected by copyright without the consent of the copyright alleged infringer (at the pretrial stage); owners, provided that the owner of such access has been advised by • injunction to disclose all the information regarding the distribution the HADOPI to implement a security system following a first infringe- networks and the quantities of infringing products; ment having taken place less than one year before (articles L 336-3 and • recall from the trade circuits, destruction or confiscation for the ben- R 335-5 of the IPC); efit of the victim, of the following elements: the objects made or manu- • the editing, making available to the public or communicating to factured in breach of the rights of the victim, the media used to extract the public of a piece of software obviously intended to make sound unlawfully data from a database, and the equipment predominantly recordings available to the public without authorisation (see question used for the manufacture; 40); and • publication of the judgment (in whole or in part) at the defendant’s • to hold for private use or use a technological application, device or costs; and service aimed at infringing a useful DRM (digital right management) • award of legal costs. which protects a work (article R 335-3 of the IPC).

42 Is there a time limit for seeking remedies? 46 Are there any specific liabilities, remedies or defences for The statute of limitations for bringing a copyright infringement claim is online copyright infringement? five years from the date on which the claimant became aware or ought rea- Several provisions were created to deal with online copyright infringement. sonably to have become aware of the infringing act. In this respect we can mention, for example, the following:

43 Are monetary damages available for copyright infringement? The graduated response regime from the HADOPI Monetary damages are available for copyright infringement. The court The HADOPI Laws No. 2009-669 of 12 June 2009 and No. 2009-1311 must take into account, separately: of 28 October 2009 and Decree No. 2013-596 of 8 July 2013 define the • the negative economic consequences of the infringement, including mission of the HADOPI authority and provide, inter alia, a graduated loss of profits and loss suffered by the injured party; response regime. • the moral prejudice caused to the rightholder; and It is a criminal offence for the owner of the access to online public • the profits made by the infringer, including savings in intellectual communication services not to have implemented security measures to investment, equipment and promotion, which the infringer made ensure that such access is not used for the reproduction or communication through the infringing acts. of works protected by copyright to the public, without the consent of the copyright owners, provided that the owner of such access has been advised French law also offers an alternative to the assessment of the damages. by the HADOPI to implement a security system following a first infringe- Indeed, upon request of the claimant, the court may award damages in a ment having taken place less than one year before (articles L 336-3 and lump sum. This amount shall exceed the amount of royalties that would R 335-5 of the IPC). have been due if the infringer had requested the authorisation to use the

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17 avenue Matignon Tel: +33 1 53 67 47 47 75008 Paris Fax: +33 1 53 67 47 48 France www.hoganlovells.com

www.gettingthedealthrough.com 45

For internet users who continue to show evidence of infringing activ- Relationship to foreign rights ity, the HADOPI then selects the files to be reviewed and may ask the rel- 48 Which international copyright conventions does your country evant internet user to participate in a hearing. Only professionals and legal belong to? entities are required to attend said hearing. The HADOPI then renders its decision. It can also send files to the France is signatory of the following international copyright conventions: public prosecutor for sanctions if the graduated response regime has not • the Berne Convention for the Protection of Literary and Artistic Works led the illicit acts to be put to an end (fine of up to €1,500). of 1886; • the Rome Convention for the Protection of Performers, Producers of Prevention of illegal downloading and offer Phonograms and Broadcasting Organisations of 1961; The presiding judge of the court of first instance can order, under penalty, • WIPO Performances and Phonograms Treaty of 20 December 1996 any measure necessary for the protection of copyright where software is (WPPT); being used mainly to offer copyright protected works illegally (article • the TRIPS Agreement of 1995, notably on copyrights and related L 336-1 of the IPC). rights; and Article L 336-2 of the IPC also provides that, in case of copyright and • the WIPO Copyright Treaty of 1996. related rights infringement occasioned by the content of an online communication service to the public, right holders can ask courts to order 49 What obligations are imposed by your country’s membership ‘all appropriate measures to prevent or stop a copyright infringement of international copyright conventions? against any person who may be likely to contribute to such prevention or International copyright conventions impose the obligation of national termination’. treatment, which is a rule of non-discrimination requiring France to extend copyright protection to non-French nationals on the same terms as 47 How may copyright infringement be prevented? it does to its nationals. Copyright infringement may be prevented by using a copyright notice or The Berne Convention provides that the enjoyment and the exercise implementing technical protection measures. of copyrights shall not be subject to any formality; such enjoyment and Article L 331-5 of the IPC provides that DRM consists in technical tech- such exercise shall be independent of the existence of protection in the nologies or devices aiming at preventing or limiting the unauthorised uses. country of origin of the work. DRM must not prevent the users from benefiting from the exception for There are also consequences in terms of duration of protection. private copying and users shall be informed of their use. Indeed, pursuant to the Berne Convention, if a contracting state provides Moreover, it is a criminal offence to hold for private use or use a tech- for a longer term than the minimum prescribed by the Convention and nological application, device or service aimed at infringing a useful DRM the work ceases to be protected in the country of origin, protection may be which protects a work (fine of up to €750) (article R 335-3 of the IPC). denied once protection in the country of origin ceases.

Germany

Jasper Hagenberg and Christine Nitschke Buse Heberer Fromm Rechtsanwälte Steuerberater Partnerschaftsgesellschaft mbB

Legislation and enforcement Subject matter and scope of copyright 1 What is the relevant legislation? 6 What types of works are copyrightable? The Act on Copyright and Related Rights (the Copyright Act) serves as The Copyright Act generally includes works of literature, science and art the main source regarding statutory legal regulations in Germany. Further as copyrightable works (section 1 of the Copyright Act). Section 2 of the legislation includes the Publishing Act as well as the German Art Copyright Copyright Act provides a list of examples including literary works (writ- Act regarding copyrights of the arts and photography. With respect to the ings, computer programs), musical, pantomime, artistic works (including collection of licensing fees the Collecting Societies Act has been passed. architectural and applied arts) and their drafts, photographical, film works and representations of a scientific or technical nature (including drawings, 2 Who enforces it? blueprints, maps, drafts, tables and three-dimensional presentations). Generally, the civil courts enforce the rights of the author. Identically, Any copyright protection always requires a personal intellectual crea- cases with respect to all legal disputes of a licensee on account of a legal tion, having been developed personally by one or more human individuals. relationship regulated under the Copyright Act will be enforced by the civil courts. Copyright litigation matters with respect to claims for payment 7 What types of rights are covered by copyright? of remuneration standing in connection with or resulting out of employ- Exploitation rights and moral rights are covered by copyright. Exploitation ment or service relationships are enforced by labour courts or administra- rights are the rights to exploit the work in material form which especially tive courts. includes the right of reproduction, the right of distribution and the right of In cases where criminal Copyright Acts statutes are affected, the crim- exhibition. The exploitation rights also encompass the right to communi- inal prosecution authorities and the criminal courts are responsible for the cate the work to the public in non-material form, which especially includes respective enforcement. the right of recitation, performance and presentation, the rights of making the work available to the public, broadcasting, communication by video or 3 Are there any specific provisions of your copyright laws that sound carrier and communication of broadcasts and works made available address the digital exploitation of works? Are there separate to the public. statutory provisions that do so? Furthermore, the Copyright Act grants moral rights (see question Generally, the provisions of the Copyright Act cover digital as well as 14) to the author, according to which, among others, the creator is to be non-digital works. Specific provisions that address the digital exploitation recognised and identified as the author of the work. Under the Copyright of works are, for example, contained in section 19a of the Copyright Act, Act copyright owners are protected against the unauthorised use of their which relates to the right of making works available to the public, especially works. Provided certain criteria are met, measures in case of infringement via the internet. of a copyright establish various types of claims for the owner, including forbearance, information, and damage claims. In addition, infringers of 4 Do your copyright laws have extraterritorial application to copyright may be charged under criminal law if certain prerequisites are deal with foreign-owned or foreign-operated websites that fulfilled and if the infringer has acted wilfully and knowingly. infringe copyright? 8 What may not be protected by copyright? The Copyright Act is also applicable with respect to foreign-owned or foreign-operated websites that infringe copyright, provided that the website’s Protection under copyright law only covers creations that are in a tangible content is available in Germany and intentionally addressed to German medium of expression. Ideas, findings, and methods are not copyrightable. users. Indications for the intention to address German users might be the The work does not have to be developed in its entirety, a creation to the domain, the language of content, the website’s design or links to other extent that will allow it to be individually recognised will suffice. websites in German language or addressed to German recipients. In addition, official works such as statutes, decrees, and ordinances, as well as official head notes of court decisions and any other official works Agency published in the public interest, are not protected by copyright.

5 Is there a centralised copyright agency? What does this 9 Do the doctrines of ‘fair use’ or ‘fair dealing’ exist? agency do? Despite the fair use doctrine not having been adopted as such, the Currently, no centralised copyright agency exists. Copyright protection Copyright Act contains numerous sections on limitations. Accordingly, begins with the creation of the work. In order to obtain copyright protec- statutory provisions in sections 44a to 63a of the Copyright Act allow for tion an entry of the work in a register is neither necessary nor possible. the use of copyrighted works in enumerated cases – provided the specific Notwithstanding the above, the German Patent and Trademark Office criteria expressly outlined are met. The limitations comparable to a fair maintains a register of anonymous and pseudonymous works. This data- use doctrine encompass the following examples: the duplication of works base does not serve to register all existing copyright works but is used to in specific cases of educational, scientific or private use; the distribution extend the term of protection of published anonymous or pseudonymous or reproduction of public speeches by broadcasting companies or newspa- works. Besides, a total of currently 13 collecting agencies exist for the col- pers; and the display of works in public libraries. lection of licence fees and protection of rights of authors, such as the society for musical performing or mechanical reproduction rights (GEMA) or VG Wort.

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10 What are the standards used in determining whether a Section 13 of the Copyright Act grants any author the right to be named particular use is fair? as the author of his or her work. Accordingly, the author has to be named in The standards regarding the threshold of a fair use differ and are laid down the customary manner each time his or her work is used. as specific criteria in the section 44a et seq of the Copyright Act. Among other requirements, standards may broadly be outlined as follows: 16 What are the consequences for failure to display a copyright • private and personal use: a duplication within the private use requires notice? that copies will exclusively be used within the personal sphere and are An author will not benefit from the rebuttable presumption outlined in sec- not related to commercial use; tion 10 of the Copyright Act in case of failure to display a copyright notice. • citations: quotations require that only parts of the work be used. Should a third party have failed to name the author, the author can Citations may be more extensive within scientific works as opposed to claim that his or her work must no longer be used without its rightful name, citations within musical or literary works; even if he or she permitted the use in principle. In case further require- • freedom of report: public speech, publications, and broadcasted comments are met the author can demand for payment of damages as well. mentary and reports on daily news may be used (partly subject to payment of fees) in the interest of informatory rights and the public 17 Is there a requirement of copyright deposit? interest in communication; No requirement for copyright deposit exists. • cultural industry: recordings if used by broadcasting organisations for preparatory or demonstrating purposes; and 18 What are the consequences for failure to make a copyright • education and science: duplication, collection of and making available deposit? to the public parts of works, if restricted to educational use in educa- Owing to the lack of a respective legal requirement, the failure of copyright tional or ecclesiastical institutions with no commercial intention. deposit remains without consequence. 11 Are architectural works protected by copyright? How? 19 Is there a system for copyright registration? Architectural works are protected as a type of art as expressly itemised In Germany a system for copyright registration does not exist. One excep- under section 2, No. 4 of the Copyright Act. Provided the threshold of tion consists of the German Patent and Trademark Office’s register of individuality has been met, copyright protection may encompass family anonymous and pseudonymous works (see question 5). houses as well as, for example, factory or office buildings, churches, museums, bridges, memorials, places, gardens or interior design. Sketches, 20 Is copyright registration mandatory? blueprints, and drafts of such architectural works are protected if they have been developed to an extent of individual creation. Should such Copyright registration is not mandatory. sketches overcome the threshold of individual character in terms of drafting, a copyright protection may additionally come into play in view of the 21 How do you apply for a copyright registration? example rule of section 2, No. 7 of the Copyright Act (scientific or techni- In order to apply for registration in the register of anonymous and pseudon- cal presentation). ymous works an author has to file a written application with the German Patent and Trademark Office indicating the author’s name, place and date 12 Are performance rights covered by copyright? How? of author’s birth and the title of the work or other designation. In addition, Performance rights are part of related rights. Performers are protected the application must encompass the date and nature of the first publica- by moral rights and exploitation rights (section 73 et seq of the Copyright tion of the work. If applicable, the application has to include the date of Act). The moral rights encompass the right to be recognised as performer author’s death, the pseudonym under which the work was published, and and to determine whether and how to be named as well as to interdict any the publishing company. detriment of the performance which might jeopardise the performer’s reputation, to record the performance on a picture or sound carrier, to 22 What are the fees to apply for a copyright registration? reproduce and distribute those records, and the right of communication to The fee for registration in the register of anonymous and pseudonymous the public in different manners. Furthermore, the performer is granted the works is €12 for one single work, €5 for the second to tenth work, and €2 for right to be remunerated. the eleventh and following works, if filed simultaneously.

13 Are other ‘neighbouring rights’ recognised? How? 23 What are the consequences for failure to register a The Copyright Act recognises as neighbouring rights the protection of edi- copyrighted work? tions of non-copyrighted works or texts, photographs, performing artists, As no requirement for copyright registration exists, failure of registration producer of sound carriers, broadcasting organisations, database produc- does not lead to any legal consequences. For purposes regarding the future ers, press publishing companies or in connection with films or other types protection in a potential dispute, it is, however, helpful to consider means of moving images. of establishing evidence at the time of creation of the work. In case of anonymous and pseudonymous works a registration in the 14 Are moral rights recognised? respective register leads to an extension of the term of copyright protection Moral rights, which are not subject to transfer, are focused in sections 12 to to 70 years after the death of the author. Should the author decide against 14 of the Copyright Act. The author of a work is protected with respect to registration, the term of protection will expire 70 years after the publica- the right of disclosure, namely, the right to decide when and in what form tion of the work or, if not published, after its creation. the work will be presented to the public. Further, the author holds the right to be acknowledged as the author of the work and to prevent others from Ownership and transfer naming anyone else as the creator (right of attribution) and the right to 24 Who is the owner of a copyrighted work? insist that the work not be mutilated or distorted (right of integrity). The creator of a work is the owner of the copyright. As the creation of a cop- Copyright formalities yrighted work is required to be a personal intellectual creation of a human individual, only natural persons may be authors. 15 Is there a requirement of copyright notice? Copyright protection as such does not require any formal act such as 25 May an employer own a copyrighted work made by an copyright notice. For purposes regarding the future protection in a poten- employee? tial dispute, it is, however, helpful to consider means of establishing evi- German law does not permit the assignment or transfer of a copyright dence at the time of creation of the work. Section 10 of the Copyright Act itself. Accordingly, an author is limited to the granting of exploitation rights stipulates a rebuttable presumption that the person identified as the copy- with respect to the copyrights owned by him or her. Therefore, an employer right owner is to be regarded as the author of a work, until evidence is pre- does not automatically own a copyrighted work made by an employee. But sented otherwise. an employee is obliged to grant exploitation rights to the employer if this is agreed in the employment contract or – in case of the lack of such an

© Law Business Research 2016 Buse Heberer Fromm Rechtsanwälte Steuerberater Partnerschaftsgesellschaft mbB GERMANY agreement – if such an obligation results out of the employment’s nature or 34), the obligation to establish tariffs on remuneration which it demands purpose. Within an employment relationship – whether under a public, pri- in return for the grant of exploitation rights (section 38), the distribution vate or freelance employment relationship – generally, the creator principle of revenues to the authors according to a fixed distribution plan (section is applicable. The relations between authors and their employers or clients 27), and the settlement of rate disputes (section 92 et seq). The performing are guided by the contractual provisions agreed. rights societies are required to hold an official licence and are supervised If a respective contract contains no provision regarding copyrights, by the German Patent and Trademark Office. German courts will presume that the rights to exploit the work within the boundaries of the purpose of the contract have been granted by the 32 Is there any provision for the termination of transfers of employee or contractor. Beyond that, an employer will be forced to con- rights? tractually acquire and respectively agree with the author to be granted fur- Not applicable as the copyright is not transferrable itself (see question 28). ther exploitation rights. With respect to exploitation rights the author and the holder of the Courts distinguish between ‘compulsory works’, which are created in exploitation rights may agree on the duration of time for which the exploi- carrying out the employment duties and ‘free works’, which are created ‘on tation rights are granted. occasion’ of employment or completely outside the same. The distinction An author is generally entitled to revoke an exploitation right in case may have an impact on remuneration. the holder of an exclusive exploitation right either does not exercise the Section 69b of the Copyright Act provides special provisions for right at all or exercises it inadequately and thereby affects the author’s employed authors of computer programs who create the program, in either legitimate interests detrimentally. The author is further entitled to carrying out the duties or following the employer’s instructions. Unless oth- revocation if his or her conviction is no longer represented by the work and erwise agreed, the employer is exclusively entitled to exercise all economic thus a further exploitation cannot be expected. The revocation is subject rights in the computer program. The German Federal Court of Justice held to certain prerequisites and the author normally has to adequately com- that section 69b excludes the additional remuneration of the author. pensate the exploitation rights holder. The Publishing Act contains special provisions relating to the termination of exploitation rights. 26 May a hiring party own a copyrighted work made by an independent contractor? 33 Can documents evidencing transfers and other transactions A hiring party will not own a copyright in the work of the author as the be recorded with a government agency? copyright itself is not transferrable. The scope of usage rights held by the This is not possible. hiring party is subject to the agreement between the hiring party and the independent contractor. In order to avoid uncertainties about the scope of Duration of copyright exploitation rights, and for evidentiary purposes, it is advisable to stipulate respective details between the parties in writing. 34 When does copyright protection begin? Copyright protection begins with the creation of the work by the author. 27 May a copyrighted work be co-owned? Copyrights in a work are held by various authors as a joint ownership if cre- 35 How long does copyright protection last? ated mutually and not exploitable in divided parts. However, as dissolu- Copyright protection lasts for the lifetime of the author and 70 years tion of such joint ownership is not possible the co-authors may stipulate thereafter (section 64, Copyright Act). In case of anonymous and the legal relationship between them in a respective agreement. Term of the pseudonymous works, which are not registered, copyright protection will co-owned copyright is calculated on the basis of the longest living author. expire 70 years after the publication of the work or, if not published, after its creation (see question 23). 28 May rights be transferred? Different statutory law protection periods are applicable with respect Copyright itself always stays with the author and cannot be transferred, to related rights. The terms range from 1 year up to 70 years depending on with the exception of legal succession at the time of the death of the author the nature of the related right; the calculation is always based upon certain because the copyright is inheritable. events specified in the respective provisions such as release or publication. In order for the work to be used, authors may grant exploitation rights, For example, the protection for a photograph generally expires 50 years which are transferable and licensable. after the photograph was first released.

29 May rights be licensed? 36 Does copyright duration depend on when a particular work was created or published? Copyrights may be licensed either for particular forms of exploitation or for all usage rights. The grant may be exclusive or non-exclusive and may The copyright term begins with the creation of the work by the author. As be limited in respect of territory, time or content. The holder of a non- no registration process is required the time of creation is decisive for the exclusive exploitation right is entitled to use the work within the authorised duration. The publication of the work might be relevant for anonymous scope without excluding third parties, whereas the holder of an exclusive and pseudonymous works, as well as related rights. For example, the rights exploitation right is not only entitled to prevent third parties and the author of a database’s producer generally expire 15 years after its publication. himself from the use of the work but also to grant exploitation rights. 37 Do terms of copyright have to be renewed? How? 30 Are there compulsory licences? What are they? No renewal of copyright protection exists once the initial time period for Under special circumstances which are laid down in section 42a of the protection has lapsed. Copyright Act, an author who has granted an exploitation right in a musical work to a producer of sound carriers, is obliged to grant an exploitation 38 Has your jurisdiction extended the term of copyright right to the same extent on reasonable conditions to any other producer of protection? sound carriers. The copyright term of 70 years after the death of the author was established in 1965 and since then has not been extended. The terms of the related 31 Are licences administered by performing rights societies? rights of performers and producers of audio recordings were recently par- How? tially extended to 70 years. Some types of exploitation rights, as well as claims for remunerations, are administered by performing rights societies upon the request of authors Copyright infringement and remedies and holders of related rights. It is applicable where collective exploitation 39 What constitutes copyright infringement? is practical or prescribed by statutory law. The activities of the performing rights societies are subject to the Collecting Societies Act. The most impor- Briefly summarised, any exploitation of a copyrighted work which is car- tant principles with regard to activities of the performing rights societies ried out without the prior consent of the author constitutes an infringe- include, among others, the obligation to administer the author’s rights ment, provided it does not fall under the limitations of copyright. Besides, upon his or her request (section 9), the obligation to grant to anyone upon if a holder of an exploitation right exceeds the rights granted to him or her request exploitation rights on reasonable terms and conditions (section by the author, he or she also infringes copyright unless the use falls under www.gettingthedealthrough.com 49

42 Is there a time limit for seeking remedies? Update and trends Generally, the time limit for civil remedies in cases of copyright infringe- On 1 June 2016 a new Collecting Society Act came into effect and ment is subject to the provisions of the German Civil Code. Accordingly, replaced the former Law on the Administration of Copyright and claims are normally time-barred within the standard statute of limitations Related Rights. The new Collecting Society Act serves to imple- of the German Civil Code stipulating a time period of three years. ment Directive 2014/26/EU. While some parts of the provisions An application for a preliminary injunction needs to be filed within a preserve the previous system, some parts led to changes. New provi- certain time period after having acquired knowledge of the infringement sions deal, inter alia, with straddling procurement of online rights and the identity of the infringer. Statutory law does not provide a time in musical works by collecting societies. The debated question of limit; it is subject to the jurisdiction of the courts and may differ from dis- the publisher’s participation in the dividends is not regulated in the trict to district. Some courts will not allow the preliminary injunction to be new Collecting Societies Act. The lack of implementation has been filed aterl than one month after having acquired knowledge. highly criticised. The Federal Court of Justice held in April 2016 that only authors shall benefit from the dividend and the Collection Criminal prosecution which is not in the public interest requires the Society ‘VG Wort’ is not entitled to pay a lump sum of principally infringed party to file a respective application within three months of half of their revenue to publishers since publishers are not holders obtaining knowledge of the infringement and the identity of the infringer. of neighbouring rights. The fact that publishers enable authors to generate revenue from the exploitation of the published works does 43 Are monetary damages available for copyright infringement? not, in the court’s opinion, justify a financial participation of publish- Section 97, paragraph 2 of the Copyright Act provides a claim for mone- ers. As a consequence, publishers will have to make repayments of significant amounts. tary damages. The injured party is entitled to choose between three types of calculation. • Type 1: The damages are calculated based on a fictive licence analogy. Accordingly, the infringer is obligated to pay a royalty which reasona- the limitations of copyright. The violation of ‘absolute rights’, which are ble parties would have agreed upon, being aware of the true legal situ- effective against anyone, is penalised – such absolute rights are the author’s ation and the circumstances of the individual case. Whether or not the exploitation rights and moral rights. injured party had been willing to grant a licence and whether or not the infringer would have acquired such a licence is irrelevant. If no licence 40 Does secondary liability exist for indirect copyright practice of the author has been established (which would prevail), the infringement? What actions incur such liability? damages are calculated on the basis of branch or industry tariffs. Under German Copyright law not only the offender is liable but also insti- • Type 2: The party whose rights have been infringed is entitled to claim gators and accomplices. Further, the principle of Stoererhaftung (which any profit generated by the infringer as a result of the infringement. constitutes a form of liability for a breach of duty of care) is acknowledged: Whether the injured party would have generated this amount of profit if someone who – without being an offender, instigator or accomplice – has is irrelevant. The infringer cannot argue that the profit exceeds the been involved in the unlawful interference in a deliberate and appropri- usual royalties. ately causal manner, he or she may be held liable for the infringement, pro- • Type 3: The party whose rights have been infringed is entitled to claim vided it was legally and practically possible and reasonable to prevent the the actual loss caused by the infringement such as incurred sales violation of the law. decrease or verifiable loss of profit.

41 What remedies are available against a copyright infringer? As long as the claim is not extinct by performance or has not been subject Provided certain criteria are met, measures in case of infringement of a to a final judgment the calculation basis is subject to determination by the copyright establish various types of claims for the owner, including for- injured party. bearance, disclosure of information, and damage claims as well as destruction of the unlawfully produced or distributed copies and the recall of these 44 Can attorneys’ fees and costs be claimed in an action for copies from the channels of commercial distribution (sections 97, 98 and copyright infringement? 101 of the Copyright Act). Yes, the Copyright Act (section 97a) and section 91 et seq of the German The author or, under certain circumstances the holder of an exclu- Code of Civil Procedure provide a claim for reimbursement, especially of sive exploitation right, is entitled to send a cease and desist letter to the attorneys’ fees. The fees will only be reimbursed in accordance with the infringer requesting a declaration regarding forbearance of the infringing calculation standards under specific German statutory law. behaviour possibly accompanied by additional claims (eg, declaration to provide detailed information with respect to the infringing use and the 45 Are there criminal copyright provisions? What are they? obligation to reimburse damages and attorneys’ fees) stipulating an equi- The Copyright Act contains criminal and regulatory fine provisions. table contractual penalty for any further breach. The entitlement to send a Section 106 of the Copyright Act stipulates that the reproduction, dis- cease and desist letter requires that the threat of repetition of the infringe- tribution or communication to the public of a work or an adaptation of a ment exists. work without the consent of the author in a way other than approved by law Instead, or following such a cease and desist letter the infringed party is punished by imprisonment of up to three years or a fine. Any attempt is may file an application for a preliminary injunction at court requesting the punishable. The same is applicable in similar cases such as the event of the forbearance of the infringing behaviour. Such application is restricted to affixing of a designation of the author to the original artistic work without being filed within a certain time after the right holder has received knowl- the author’s consent. edge about the infringement and the identity of the infringer. Section 108 of the Copyright Act criminalises the infringement of Instead of a preliminary injunction the infringed party may bring an related rights, for example, special kinds of exploitation of a photograph action to court, requesting forbearance. Such action may further encom- without the right holder’s consent in a way other than approved by law. Any pass claims with respect to the provision of detailed information, damages, attempt is punishable. destruction and recall of the unlawfully produced copies. Further, the Copyright Act stipulates an enhancement of imprison- A damage claim requires, among others, that the infringer has acted ment in case of the acts having been committed on a commercial scale or intentionally or negligently. when circumventing technological measures without the consent of the The claim may further be extended to reimbursement for the legal right holder in order to get access to the copyright protected work. costs of the proceedings such as court fees and attorney’s fees calculated on the basis of respective statutory law. 46 Are there any specific liabilities, remedies or defences for Upon report of the infringed party, the criminal prosecution authori- online copyright infringement? ties will commence criminal investigation and possibly prosecution in case criminal statutes are applicable. Criminal copyright prosecution partially In cases of online copyright infringement the party whose rights have been requires application of the infringed party, unless the criminal prosecu- infringed is entitled to claim disclosure of information about the identity tion authorities regard it to be necessary on account of a particular pub- of the infringer including the traffic data from the access provider. With lic interest. regard to the principle of data protection, the disclosure requires a prior judicial order, which must be applied for by the infringed party.

47 How may copyright infringement be prevented? 49 What obligations are imposed by your country’s membership The author or right holder can use either technical measures in order to of international copyright conventions? prevent third parties from infringing his or her rights, for example, protec- The most important obligations include: tion systems which prevent the reproduction of a DVD, or provide elec- • the obligation to grant protection to foreign authors to the same extent tronic information which identify works or their authors or the conditions that German authors are protected; for use in order to serve the rights’ management. • minimum standards of duration of copyright protection; • the provision of certain exploitation rights; Relationship to foreign rights • the so-called ‘three-step test’ to determine limitations and exceptions; and 48 Which international copyright conventions does your country • to provide legal remedies against the circumvention of technologi- belong to? cal measures. Germany is a signatory to, among others, the Trade Related Aspects of Intellectual Property Agreement, the Berne Convention for the Protection of Literary and Artistic works, the Copyright Treaty and the Universal Copyright Convention.

Jasper Hagenberg [email protected] Christine Nitschke

Kurfürstendamm 237 Tel: +49 30 3279420 10719 Berlin Fax: +49 30 327942 22 Germany www.buse.de

www.gettingthedealthrough.com 51

Greece

Alkisti-Irene Malamis Malamis & Associates

Legislation and enforcement The OPI keeps a list of mediators for copyright disputes and intervenes in the following cases: 1 What is the relevant legislation? • to determine, by its own decision, the collection and payment method, • Law No. 2121/1993 on copyright, related rights and cultural issues, as as well as any other relevant details, for the allocation of equitable amended by Laws No. 2173/1993 (article 4), No. 2218/1994 (article remuneration among various collecting societies of each category, if 59), No. 2435/1996 (articles 3 and 10), No. 2557/1997 (article 8), No. the interested parties fail to reach an agreement; 2819/2000 (article 7), No. 3049/2002 (article 14), No. 3057/2002 (arti- • if so requested, to collect statements made by importers or producers cle 81), No. 3207/2003 (article 10, paragraph 33), No. 3524/2007 (arti- regarding the total value of the audio, video or audio and video media, cles 1 and 2), No. 3905/2010 (article 46) and No. 4212/2013 (article 7); reproduction materials, photocopiers, photocopying paper, computers • Law No. 988/1943 regarding writers’ rights on dramatic works; or other equipment which are subject to the copyright levy according to • the Code of Civil Procedure, which sets out the basic rules of procedure article 18 of Law No. 2121/93 and in order to appoint chartered account- regarding cases subject to the jurisdiction of civil courts; ants to examine the accuracy of such statements; and • Law No. 2479/1997 on the Supreme Special Court, expedition of pro- • to recommend to the Minister of Culture provisional or permanent ceedings, procedural simplifications and other provisions, which con- revocation of a collecting society’s operation, according to law. tains special provisions regarding the composition of courts before which copyright cases are brought (article 3, paragraph 26); and Subject matter and scope of copyright • Council Regulation (EU) No. 608/2013, concerning customs actions against goods suspected of infringing certain intellectual property 6 What types of works are copyrightable? rights and the measures to be taken against goods found to have In Greek law, any original intellectual literary, artistic or scientific creation, infringed such rights. expressed in any form, can be protected by copyright. As such, Greek law refers by way of indication to: written or oral texts; musical compositions 2 Who enforces it? with or without lyrics; theatrical works accompanied or unaccompanied by Copyright is primarily enforced in civil courts. Law No. 2479/1997 pro- music; choreographies and pantomimes; audiovisual works; works of fine vides that the courts of first instance of Athens, Piraeus and Thessaloniki art, including drawings, works of painting and sculpture, engravings and include a special chamber that tries copyright cases (article 3, paragraph lithographs; works of architecture and photographs; works of applied art; 26). However, injunctions are not heard by specialised judges, but rather by illustrations; and maps and three-dimensional works relative to geography, judges who hear all types of disputes. topography, architecture or science. ‘Works’ are also defined as translations, Criminal courts, the Greek police (economic crime and property pro- adaptations, arrangements and other alterations of works or of expressions tection units), the economic crime unit of the Ministry of Finance (SDOE) of folklore, as well as collections of works or collections of expressions of and customs authorities also enforce copyright law. folklore or of simple facts and data, such as encyclopaedias and anthologies, provided that the selection or the arrangement of their contents is original. 3 Are there any specific provisions of your copyright laws that In addition, special categories of works are protected by copyright: address the digital exploitation of works? Are there separate • computer programs, together with their preparatory design material, statutory provisions that do so? on the condition that they are original, in the sense that they are their author’s personal intellectual creation; and The general copyright legal provisions equally apply to the digital exploita- • databases, which are subject to copyright protection if, by reason tion of works. of the selection or arrangement of their contents, they constitute their author’s intellectual creation. Furthermore, a sui generis right 4 Do your copyright laws have extraterritorial application to deal is awarded to the maker of a database, irrespective of its protection with foreign-owned or foreign-operated websites that infringe by copyright. copyright? Greek copyright laws do not offer extraterritorial application. One can apply Official texts through which state authority is expressed – notably legisla- Greek law if it can be shown that the copyright infringement, or substantial tive, administrative or judicial texts and expressions of folklore, news, infor- preparation for the infringement, took place in Greece. mation or simple facts and data – are excluded from copyright protection.

Agency 7 What types of rights are covered by copyright? 5 Is there a centralised copyright agency? What does this agency Copyright covers economic and moral rights for right holders. do? 8 What may not be protected by copyright? The only centralised copyright agency provided under Greek law is the Hellenic Copyright Organisation (OPI), which is a legal entity established Copyright protection is not recognised if the requirements provided by law under private law and subject to the supervision of the Ministry of Culture. are not met. The criteria for granting copyright protection are the work’s Among the OPI’s competencies are: the protection of copyright holders; individuality and originality (a work is protected when it constitutes its the implementation of Greek copyright legislation (Law No. 2121/1993) author’s personal creation). Technical features are excluded if no artistic and international copyright conventions; the supervision of Greek col- character can be found. lecting societies; and consultation and preparation of legislation relating to copyright.

9 Do the doctrines of ‘fair use’ or ‘fair dealing’ exist? 14 Are moral rights recognised? Greek law provides an exhaustive list of limitations to copyright. Therefore, Moral rights are recognised for authors of all works protected by copyright. the doctrines of ‘fair use’ or ‘fair dealing’ are not applied. The limitations Moral rights include the author’s power to decide on the time, place and provided by law expressly provide for and permit (under certain condi- manner in which its work is made accessible to the public (publication); to tions in each case) the following: reproduction for private use; quotation of demand acknowledgement of authorship and the right to have his or her extracts; reproduction in school textbooks and anthologies; reproduction name referred to in every public use of the work, or the right to present for teaching purposes; use by non-profit making libraries and archives; use the work anonymously or under a pseudonym (attribution/paternity); to by the National Cinematographic Archive; use for judicial or administra- prohibit any distortion, mutilation or other modification of the work and tive purposes; use for information purposes; use and display by mass media any offence due to the conditions of the presentation of the work in public of works located in public spaces; public performances during official cer- (integrity); to have access to the work, even when the economic right or the emonies or within the activities of schools or universities; public display in physical embodiment of the work belongs to another person; and in the case museums; reproduction in catalogues for promoting sales of works of fine of literary or scientific works, to rescind any contract transferring the eco- art; reproduction for the benefit of blind and deaf-mute people; and tempo- nomic right or an exploitation contract or licence agreement, subject to pay- rary acts of reproduction which are transient or incidental and constitute an ment of material damage to the other contracting party, because of changes integral and essential part of a technological process, having as a sole pur- in authors’ beliefs or circumstances. pose transmission in a network between third parties by an intermediary, or a lawful use of a work which has no independent economic significance. Copyright formalities All the above limitations apply only on the condition that they do not 15 Is there a requirement of copyright notice? conflict with the normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the right holder. There is no requirement of copyright notice. A copyright owner usually puts his or her name on the work, but this is not required by law. However, it is 10 What are the standards used in determining whether a useful for reasons of evidence of ownership. particular use is fair? 16 What are the consequences for failure to display a copyright Not applicable. notice? 11 Are architectural works protected by copyright? How? If the copyright owner’s name is displayed on a work, the person referred to in the notice is presumed by law to be the copyright owner (a rebuttable Greek law refers by way of indication to works of architecture as works pro- presumption). In order to contest this presumption of ownership, one must tected by copyright. Authors of architectural works have both economic and start an action in the civil courts. moral rights. Jurisprudence recognises that architectural designs are pro- If no copyright notice is displayed, then the person who claims to be the tected by copyright when they have individual character and may qualify copyright owner has the burden of proving it. as intellectual creations. 17 Is there a requirement of copyright deposit? 12 Are performance rights covered by copyright? How? There is no requirement of copyright deposit. However, it is useful to deposit The protection of performers falls under the ‘neighbouring rights’ pro- copyright for use as evidence in respect of the time of creation of the work. visions. They have the economic right to object to certain acts that are Such a deposit may be done before a notary public, who certifies the date enumerated by Greek law and can prohibit (or license) the recording, repro- the document is submitted to him or her and verifies the signature of the duction and distribution of their performance, the presentation of their person submitting it, or by certifying the signature on a document in front of live performance to the public (radio broadcasts excluded), and the mak- a competent authority (at a police station or citizens’ support centre (KEP)). ing available to the public of their performance by wired or wireless means. They can also prohibit radio and TV broadcasting of their performance by 18 What are the consequences for failure to make a copyright any means, as well as its presentation to the public through an unauthorised deposit? recording. Greek law also recognises performers’ rights to equitable remuneration when a genuine recording (sound or audiovisual) that includes There are no adverse consequences for failure to make a copyright deposit, their performance is broadcast or presented to the public. Performers have as long as the creation of the work and the identity of its author may be limited moral rights, including the right to acknowledgment of their perfor- proved by other means. mance, reference to their name, and the right to prohibit any form of distortion of their performances. 19 Is there a system for copyright registration? There is no system for copyright registration. 13 Are other ‘neighbouring rights’ recognised? How? In addition to performers’ neighbouring rights, Greek law recognises neigh- 20 Is copyright registration mandatory? bouring rights for phonogram producers, producers of audiovisual works, Copyright registration is not mandatory. radio and TV broadcasters and publishers of printed material. Phonogram producers and producers of audiovisual works can prohibit 21 How do you apply for a copyright registration? some acts relating to the unauthorised use of their recordings. Only phono- Not applicable. gram producers have an equitable remuneration right. Radio and TV broadcasters have the right to prohibit (or license): 22 What are the fees to apply for a copyright registration? • rebroadcasting of their broadcasts; • communication of their broadcasts to the public in places where an Not applicable. entrance fee is charged; • recording of their broadcasts; 23 What are the consequences for failure to register a copyrighted • reproduction of fixation of their broadcasts; work? • distribution of their recordings to the public; Not applicable. • rental of their recording; and • making their recordings available to the public on demand by wired or Ownership and transfer wireless means. 24 Who is the owner of a copyrighted work? Greece is one of the few countries that recognises neighbouring rights for Under the basic rule, the owner and initial beneficiary of a copyrighted work publishers of printed material. They have the right to prohibit (or license) is the natural person who created that work. any commercial reproduction of the composition and layout of a published work. They also have an equitable remuneration right. 25 May an employer own a copyrighted work made by an employee? An employer can own a copyrighted work through transfer from its creator. www.gettingthedealthrough.com 53

The basic rule is that the employee is the initial beneficiary of the eco- screenplay, the author of the dialogue, or the composer of the music espe- nomic and moral rights of a work created under an employment agreement. cially created for use in the audiovisual work in question. Unless there is a written agreement to the contrary, there is an automatic Performers’ rights expire 50 years after the date of the performance, transfer of restricted rights, namely of only those economic rights that are but cannot last less than the duration of the performer’s life. If a fixation essential for the achievement of the purpose of the employment agree- of the performance is lawfully published or lawfully communicated to the ment. The moral rights remain with the creator. public within this period, the rights shall expire 50 years after the date of the first publication or first communication to the public, whichever is earliest. 26 May a hiring party own a copyrighted work made by an Related rights of phonogram producers expire 50 years after the fixa- independent contractor? tion is made. If the phonogram has been lawfully published within this A hiring party may own a copyrighted work made by an independent con- period, the rights shall expire 50 years from the date of the first lawful tractor, but this does not happen automatically. publication. If no lawful publication has taken place within this period but The moral rights remain with the creator; transfer of economic rights the phonogram has been lawfully communicated to the public within this is never automatic and depends on the agreement between the parties. period, the rights shall expire 50 years from the date of the first lawful com- Transfer of copyright may be proved against the creator only if such a trans- munication to the public. fer agreement is made in writing. Related rights of producers of audiovisual works shall expire 50 years after the fixation is made. However, if lawful publication or lawful commu- 27 May a copyrighted work be co-owned? nication of the device is made to the public within such period, the rights shall expire 50 years from the date of first publication or first communica- Yes. In collaborative works, the contributors own the copyright equally and tion to the public, whichever comes first. mutually unless it is otherwise agreed. Related rights of broadcasting organisations expire 50 years after the In collective works (eg, audiovisual works), the natural person who date of first transmission of a broadcast, whether this broadcast is trans- coordinates the creation is the beneficiary and the other contributors are mitted by wire or wireless, including cable, satellite or any other means the owners of their contributions, if these are transferable. of transmission. In composite works (works that have value only when contributions are Related rights of publishers expire 50 years after the last publication of joined), the contributors are also co-owners of the work as a whole. the work. The sui generis right provided in favour of database makers shall run 28 May rights be transferred? from the date of completion of the database and expires 15 years after 1 Economic rights are freely transferable, but moral rights cannot be trans- January of the year following that date. ferred. The creator can only acquiesce in some acts that would otherwise For collaborative works, copyright lasts for 70 years after 1 January of infringe his or her moral rights. It is only after the creator’s death that the the year following the death of the last surviving co-creator. This provision moral rights can be transferred to the creator’s heirs. A transfer agreement applies for musical compositions with lyrics, provided that the contribu- must always be in writing in order for it to be claimed against the creator. tions of the composer and the songwriter have been created for the spe- However, the creator may claim and prove transfer even if the agreement cific composition. for such was not made in writing. Copyright for orphan and pseudonym works lasts for 70 years after 1 January of the year following the year in which the work became available to 29 May rights be licensed? the public, unless the creator revealed his or her identity before that period Economic rights can be freely licensed, but moral rights cannot. A licence of time expired or the creator’s pseudonym leaves no doubt as to his or her agreement must be in writing. Licence agreements for the entirety of the identity. In this case, general rules are applied. creator’s future works are explicitly prohibited by law. 36 Does copyright duration depend on when a particular work 30 Are there compulsory licences? What are they? was created or published? There are no provisions for compulsory licensing, but provisions do exist that Yes; it depends on the type of right holder and type of artistic work, see permit some use of copyrighted works, in the form of copyright exceptions. question 35.

31 Are licences administered by performing rights societies? 37 Do terms of copyright have to be renewed? How? How? No. No, performing rights societies are, by law, responsible only for collection of the equitable remuneration. 38 Has your jurisdiction extended the term of copyright protection? 32 Is there any provision for the termination of transfers of No. rights? Yes. If the duration of a transfer agreement is not stipulated in the transfer Copyright infringement and remedies agreement itself or by common practice, it is considered to be five years. 39 What constitutes copyright infringement? 33 Can documents evidencing transfers and other transactions As a general rule, copyright is infringed by any act that has the same object- be recorded with a government agency? matter and content as copyright, to the extent that copyright is protected by law and on the condition that the act is not made by the right holder or with There is no such requirement. In practice, it is useful to have signatures his consent. certified by a notary public on the document, in order to avoid objections Besides actual copying, under certain conditions copyright is infringed concerning the date of the agreement. in cases of unauthorised use of variants of works protected by copyright. Duration of copyright 40 Does secondary liability exist for indirect copyright 34 When does copyright protection begin? infringement? What actions incur such liability? As a general rule, copyright protection begins when the work is created and There is no explicit provision in Greek copyright law for secondary (civil there are no other formalities for claiming or exercising it. or criminal) liability. However, under the scope of protection of the right holder’s right to prohibit the making available of his or her work on demand 35 How long does copyright protection last? by wired or wireless means, such liability may be justified. Moreover, such liability can be justified under general Greek civil and penal code provisions. Copyright protection lasts for the author’s life plus 70 years after his or her death. 41 What remedies are available against a copyright infringer? Protection of audiovisual works expires 70 years after the death of the last of the following contributors: the principal director, the author of the In the case of infringement, authors or related right holders are entitled to demand that their rights are recognised by the court and that the

© Law Business Research 2016 Malamis & Associates GREECE infringer is ordered to cease and desist the infringement. It is also possible to ask for compensation for the economic and moral damages incurred. Update and trends Administrative penalties and penal sanctions are also available. During 2016 it is expected that legislation will be introduced in the Greek parliament concerning the collective management of copy- 42 Is there a time limit for seeking remedies? right and related rights and multi-territorial licensing of rights in The time limit for bringing an infringement action is the general rule on pre- musical works for online use in the internal market. This legislation scription – 20 years from the occurrence of the illicit act. will incorporate Directive 2014/26/EU into Greek national law.

43 Are monetary damages available for copyright infringement? Monetary damages are available to cover any economic and moral losses 47 How may copyright infringement be prevented? incurred. The courts may grant only the monetary remedies provided for For infringement of present or upcoming copyright or related rights, or of by law, which are plaintiff’s lost profits, account of profits by the defendant, the sui generis right of a database creator, it is possible to seek preliminary or moral damages. relief either on condition of urgency or in order to deter imminent risk of In order to facilitate proof of damages, the law provides that pecuniary damage. The petition for an injunction may also include a request for a compensation may not be less than twice the fee that would be due under preliminary injunction. Among the preliminary measures available are the law or common practice for the form of exploitation carried out by the the following: infringing party without authorisation. Instead of seeking damages, and (i) precautionary seizure or detailed description (including photos) of regardless of whether the infringement was committed with intent or neg- objects which constitute the means, product or proof of the infringe- ligence, authors or related right holders may demand the recovery of profits ment, in order to preserve evidence; gained from such exploitation by the infringing party. (ii) recurring penalty payments in order to provisionally forbid infringe- Punitive damages are available only if agreed in advance between con- ments or to prevent imminent infringements or the continuation tracting parties in the form of a penalty clause included in the licence or of them; other copyright exploitation or non-infringement agreement. (iii) lodging of guarantees intended to ensure the compensation of the right holder; 44 Can attorneys’ fees and costs be claimed in an action for (iv) precautionary seizure or sequestration of the goods suspected of copyright infringement? infringing copyright in order to prevent their entry into, or circulation Attorneys’ fees and costs may be claimed but cannot always be recovered in within, commerce channels; and full in an action for copyright infringement. (v) precautionary seizure of the moveable and immoveable property of the The defeated party is ordered by the court to pay the costs that are alleged infringer, including the blocking of bank accounts and other requested, including investigation costs, etc. assets and of bank, financial or commercial documents in the event of In addition, the court has the right to declare that each party is to bear infringements committed on a commercial scale. its own costs when the outcome of the dispute is uncertain. The preliminary measures provided under paragraphs (ii), (iii), (iv) and (v) 45 Are there criminal copyright provisions? What are they? above may, if necessary, be taken without the other party having been heard, particularly where any delay is likely to cause irreparable harm to the right Criminal proceedings against copyright infringers may lead to imprison- holder or where there is a demonstrable risk of evidence being destroyed. In ment of not less than one year and to a fine of between €2,900 and €15,000. that event, a notice shall be served on the adverse party on the first working The term of imprisonment and the fine may rise to 10 years and €58,000 day following execution; otherwise all acts of execution are invalid. under certain circumstances and for severe infringements, repeated Also, the copyright owner is entitled to ask for an order for precaution- offences and offences that are made in collaboration with others and in the ary seizure or a detailed description (including photos) of objects which form of an organisation. In such cases, withdrawal of the infringer’s trading constitute the means, product or proof of the infringement, in order to pre- licence is also provided as a penal sanction. serve evidence. The court is compelled to order a preliminary injunction if so requested 46 Are there any specific liabilities, remedies or defences for by the applicant in cases where there has been a precautionary seizure or a online copyright infringement? detailed description of infringing products has been given, in order to pre- There are no specific liabilities, remedies or defences for online copyright serve evidence. infringement. The rules applicable to all copyright infringement issues shall apply.

Alkisti-Irene Malamis [email protected]

8 Palea Tatoiou str. Tel: +30 210 36 29 855 145 64 Kifissia Fax: +30 210 36 47 994 Athens www.malamis.gr Greece

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Relationship to foreign rights • TRIPS: Agreement on Trade-Related Aspects of Intellectual Property Rights, ratified by Greek Law No. 2290/1995; 48 Which international copyright conventions does your country • the WIPO Copyright Treaty (WCT), adopted in Geneva on 20 belong to? December 1996, ratified by Greek Law No. 3184/2003; Greece has ratified the following international treaties: • the WIPO Performances and Phonograms Treaty (WPPT), adopted • the Universal Copyright Convention signed in Geneva on 6 September in Geneva on 20 December 1996, ratified by Greek Law No. 1952, ratified by Greek Legislative Decree No. 4254/1962 on the 3183/2003; and Ratification of the Universal Copyright Convention and the Adjunct • the European Convention on Human Rights (ECHR), which is also Protocols Nos. 1, 2 and 3; applicable insofar as recent jurisprudence has recognised that intel- • the Berne Convention of 1886 for the Protection of Literary and Artistic lectual property is a form of property that is protectable according to Works, as revised in Paris in July 1971, and the Convention Establishing article 1 of the 1st Additional Protocol of the ECHR. the World Intellectual Property Organization (WIPO), signed in Stockholm on 14 July 1967, both ratified by Law No. 100/1975; 49 What obligations are imposed by your country’s membership • the Convention Related to the Distribution of Programme-Carrying of international copyright conventions? Signals Transmitted by Satellite, signed in Brussels on 21 May 1974, After signing the above treaties, Greece was obligated to enact domestic ratified by Greek Law No. 1944/1991; legislation in order to comply with them. It must respect and enforce the • the International Convention for the Protection of Performers, legal provisions and general principles included in the above conventions. Producers of Phonograms and Broadcasting Organisations, signed in As a member of WIPO and the World Trade Organization (WTO), Greece Rome on 26 October 1961, ratified by Greek Law No. 2054/1992; must also take part in forums on recent international copyright trends. • the Convention for the Protection of Producers of Phonograms Against Unauthorised Duplication of Their Phonograms, made in Geneva on 29 October 1971, ratified by Greek Law No. 2148/1993;

India

Pravin Anand and Tanvi Misra Anand and Anand

Legislation and enforcement maintaining of records by a person permitted to circumvent technological measures as per the Act. 1 What is the relevant legislation? These provisions are described in question 46. Copyright law in India is governed by the Copyright Act, 1957, which has been amended six times, with the last amendment in 2012. It is a compre- 4 Do your copyright laws have extraterritorial application to hensive statute providing for copyright, moral rights (known as author’s deal with foreign-owned or foreign-operated websites that special rights) and neighbouring rights (rights of broadcasting organisa- infringe copyright? tions, performers and droit de suite). The Act provides for exhaustive eco- Yes. The Copyright Act, 1957 provides jurisdiction to a copyright owner to nomic rights (copyright) in various works that are transferable. Moral rights sue if he or she is conducting business in India. exist in perpetuity and are vested in the authors and their legal representa- Additionally, the courts have jurisdiction to adjudicate upon disputes tives, being non-transferable and enforceable by the authors and legal rep- arising within the territories of India. Hence, a website based outside India resentatives even when the copyright in the work has been assigned. that facilitates infringement of copyright by providing infringing copies of The Copyright Rules, 2013 came into force from 14 March 2013 and a work to users in India will confer jurisdiction on the courts in India to provide for the procedure to be adopted for relinquishment of copyright, adjudicate the matter. compulsory licences, statutory licences, voluntary licences, registration of The courts may block complete access to a website by ordering that all copyright societies, membership and administration of affairs of copyright internet service providers (ISPs) refrain from providing access to specific societies and performer’s societies. websites and block access to the infringing copies by the users of the ISP. Courts in India continue to block several infringing websites and other file- 2 Who enforces it? sharing websites that facilitate infringement through ISPs in India. Civil Copyright can be enforced in civil courts and criminal courts. Civil rem- action against regular pirate websites by geoblocking them within the edies for the copyright owner include injunction, damages and a rendition territories of India has become a popular measure to counteract infringe- of accounts. Infringement of copyright is also an offence under the Act and ment. Such actions are often being taken by the motion picture produc- may incur imprisonment of up to three years and a fine of up to 200,000 ers of Bollywood and by Sports Broadcasters. Recently, the Delhi High rupees. The Copyright Act provides an enhanced penalty on second and Court has also issued orders to the government departments (Department subsequent conviction. of Telecommunications and Department of Electronics and Information The Copyright Board constituted under the Act provides an alterna- Technology) to monitor and hence prevent URLs with infringing con- tive forum for resolving certain limited disputes, such as those pertaining tent from resurfacing under a different URL despite an injunction order to assignments and payment of royalties. The Act also provides for border restraining the former URL. enforcement of copyright and other rights and provides for the confiscation of infringing copies of copyright works as prohibited goods, which Agency is carried out by the customs department under the supervision of the Commissioner of Customs provided there is an order within 14 days from 5 Is there a centralised copyright agency? What does this the date of detention from the Court that has jurisdiction. agency do? Yes. There are two centralised copyright agencies in India: the Copyright 3 Are there any specific provisions of your copyright laws that Office and the Copyright Board. The Copyright Board does not have juris- address the digital exploitation of works? Are there separate diction over civil copyright litigation. statutory provisions that do so? The Copyright Office is headed by the Registrar of Copyrights. The Amendments to the Copyright Act, 1957 until 2012 have ensured that, function of the Copyright Office is to maintain the Register of Copyrights. with the advent of satellite television and the internet, the definitions of The Registrar also has certain regulatory functions in relation to copyrights are such that all digital platforms and formats are covered. The last right societies, serves as a registry and provides secretarial support to the amendment to the Copyright Act by the Copyright (Amendment) Act, 2012 Copyright Board. introduced specific provisions for dealing with the circumvention of tech- The Copyright Board is a quasi-judicial tribunal that is empowered to nological measures pertaining to copyrighted works and provides solutions rectify errors in the Register of Copyrights, to grant compulsory licences, on a par with that for infringement of copyright. This addition to the Act and to fix the rates of licence fees in cases of statutory and compulsory is specifically to deal with digital piracy and amending digital protection licences; it also provides an alternative forum for the resolution of certain measures used to check piracy. By virtue of the newly inserted section 65A disputes between assignors and assignees. The chairman of the Copyright of the Act, any person who circumvents an effective technological meas- Board is a person who has been a judge of a High Court or is qualified for ure applied for the purpose of protecting rights conferred under the Act, appointment as a judge of a High Court. It has been clarified by the High with the intention of infringing such rights, shall be punished with impris- Court that despite no expressed statutory provision for review powers, the onment that may extend to two years and would also be liable to a fine. Copyright Board has the power to review its own decision if it is to correct Similarly, section 65B provides that any person who removes or partici- procedural infirmities. pates in the removal of rights management information or the dissemination of copies of works from which rights management information has been removed shall be punished with imprisonment of up to two years and shall also be liable to pay a fine. The Copyright Rules, 2013 also provide for

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Subject matter and scope of copyright 9 Do the doctrines of ‘fair use’ or ‘fair dealing’ exist? 6 What types of works are copyrightable? The Copyright Act contains an exhaustive list of non-infringing uses. The doctrine of ‘fair dealing’ applies to the extent and nature of such uses as The Copyright Act provides a closed list of protected works under section specifically delineated in section 52 of the Copyright Act. 13. These works are original literary, dramatic, musical, artistic, sound recordings and cinematographic works. Copyright law in India also pro- 10 What are the standards used in determining whether a tects neighbouring rights (ie, broadcast reproduction rights and perform- particular use is fair? ers’ rights). Fair dealing under Indian law is an exhaustive provision for each kind of 7 What types of rights are covered by copyright? copyright work specified under section 52 of the Copyright Act. It is not open-ended as under the US concept of ‘fair use’. The Copyright Act, 1957 sets out the following rights of copyright to the copyright owners: 11 Are architectural works protected by copyright? How? • In the case of literary, dramatic or musical works – the exclusive right to reproduce including storage in any medium by electronic means, Yes. Architectural works are protected as a form of artistic work. However, issue copies, public performance, make any film or sound recording in an injunction cannot be taken out against a structure that has already been respect of that work, to translate and to adapt the work and the right of erected. Also, no order for demolition of the structure can be granted. communication to the public (which is defined widely enough to cover dissemination over the internet). 12 Are performance rights covered by copyright? How? • In the case of computer programs – all rights as mentioned for literary Performance rights are protected under the Copyright Act, 1957 as special works in addition to selling or giving on hire, or offering for sale or hire rights that are separate from copyright. These exclusive rights of a perfor commercial rental any copy of the computer program. former are independent of and without prejudice to the rights conferred on • In the case of artistic works – to reproduce the work in any material authors of works that are performed. form. This may include storing it in any medium by electronic or other The exclusive rights of a performer consist of the following: means or depicting a two-dimensional work in three dimensions or • the right to make sound recordings or visual recordings of the perfor- vice versa. Copyright in an artistic work also includes the exclusive mance including reproduction of it in material form including storing right to communicate the work in public, issue copies of it, include it in of it any medium by electronic or other means and issuance of copies to a cinematograph film, and translate or adapt the work in any way. the public; communication of it to the public and selling or giving it on • In the case of cinematograph films – to make copies of the film (on any commercial rental or offer for sale or for commercial rental; and medium, electronic or otherwise) including copies in the form of pho- • the right to broadcast or communicate the performance to the public, tographs that form a part of the film, sell or give on hire, or offer for sale except where the performance is already broadcast. or hire any copy of the film, to sell, give or offer for sale on commercial rental copies of the film and communicate the film to the public. Once a performer has, by way of a written agreement, given his or her con- • In the case of sound recordings – to make any other sound recording sent for incorporation of his or her performance in a cinematograph film, embodying it on any medium including storing of it on any medium, he or she cannot object to the producer enjoying the exclusive performer’s to sell or give on commercial rental or offer for sale such rental and to rights, provided that there is no contract to the contrary. communicate the sound recording to the public. Performers are entitled to the unalienable right to royalties from commercial exploitation of a performance (ie, the right to receive royalties (R3 The author enjoys moral rights independent of copyright, being the right right)). This right is unaffected by a performer’s written consent to allow his to paternity and integrity, which exists despite assignment of copyright. or her performance to be incorporated in a film. Hence, the right to royalties However, this does not extend to adaptation of a computer program for fair of performers would have to be dealt with separately from other perform- dealing purposes. It is also specifically stated that violation of moral rights ers’ rights when parties negotiate upon how the performance will be incor- (specific to the right to integrity) is judged objectively. porated in a film and the mutual considerations between them. Moral rights can be enforced by the legal representatives of the author. With the passing of the Copyright (Amendment) Act, 2012, the concept The 2012 amendments to the Act provide that a legal representative of an of performers’ rights has been cemented and exclusive rights have been author can exercise both paternity as well as integrity rights in a work. The granted to a performer akin to copyright in original works. This is in accord- 2012 amendments also consciously omit the previous co-extensive term ance with provisions of the WIPO Performances and Phonograms Treaty of moral rights with copyright by specifically removing the copyright term and the 2012 amendments to the Copyright Act have also granted moral restriction on a claim for right to integrity by the legal representative. Moral rights to performers giving them extra protection. The rules accompanying rights are not assignable (although on general principles as it is a civil right the Copyright Act further provide the setting up of a separate ‘performers’ and not a fundamental right under the Indian Constitution, moral rights society’ for each class of ‘performers’. can be waived). The Indian Singers’ Rights Association (ISRA) has been registered with the government of India as a copyright society for singers as a class of 8 What may not be protected by copyright? performers. The purpose of the copyright society is to administer the rights The ‘idea/expression’ dichotomy is applied generally, as in other com- of the singers who are its members and collect a royalty on their behalf for mon law jurisdictions, as is now required under article 9.2 of the TRIPS their exclusive rights as per the Copyright Act. The Delhi High Court passed Agreement. Any work that is made substantially from the infringement of an injunction order dated 19 December 2014 restraining a club in Delhi any other work does not enjoy any copyright protection. from infringing the performers’ rights of singers in a lawsuit prevented on Pursuant to section 15 of the Copyright Act, a design (which may be the behalf of the Indian Singers’ Rights Association [CS(OS) No. 3958 of 2014]. reproduction of an original artistic work) does not get copyright protection Final adjudication in the first performers’ right case is awaited as the judg- if the same is registered under the Designs Act, 2000. Additionally, under ment is reserved by the Delhi High Court. section 15(2) of the Copyright Act, 1957, copyright in any design ceases to have copyright protection if the same is capable of being registered under 13 Are other ‘neighbouring rights’ recognised? How? the Designs Act, 2000 but has not been and more than 50 copies of the work Yes. The Copyright Act provides for broadcasting reproduction rights and have been made by any industrial process. However, in a recent judgment rights of performers over their performances under Chapter 8 of the Act. in 2015 by the Delhi High Court, it was held that in order to be a subject Droit de suite is recognised under section 53A of the Act. matter registrable as a design for the operation of section 15(2), the said work should be ‘novel’ and this is the sole condition for operation of section 14 Are moral rights recognised? 15(2) in order to deny copyright protection to artistic works not registered Yes. The Copyright Act provides for protection of moral rights of authors as designs. in their works and of performers in their performances. Performers’ moral rights were provided by the Copyright (Amendment) Act of 2012. Moral rights of an author consist of the following: • the right to claim authorship of the work (paternity right); and

• the right to claim damages in respect of any distortion, mutilation, 22 What are the fees to apply for a copyright registration? modification or other acts in relation to the work if such distortion, etc, The fees that are to be paid to the Registrar of Copyrights along with a pre- would be prejudicial to his or her honour or reputation (integrity right). scribed application for registration of copyright in a work are as follows: (Prior to the 2012 amendment, such remedy was available only against • for literary, dramatic, musical or artistic works – 500 rupees per work; mutilation, modification, etc, of a work during the term of the copy- • for literary or artistic works used in relation to any goods – 2,000 rupees right in the work. However, this moral right is now a perpetual right of per work; the author and his or her heirs.) • for a cinematograph film – 5,000 rupees per work; and • for a sound recording – 2,000 rupees per work. Moral rights of a performer consist of the following: • the right to claim to be identified as the performer of his or her perfor- 23 What are the consequences for failure to register a mance except where omission is dictated by the manner of the use of copyrighted work? the performance; and Since registration is not mandatory, there are no adverse consequences for • the right to restrain or claim damages in respect of any distortion, failure to register a work. However, it is advisable to own a registration as mutilation or other modification of his or her performance that would enforcement agencies in India including the police and customs do not rec- be prejudicial to his or her reputation. (Mere removal of a portion of a ognise copyright over a work without the existence of a copyright certificate. performance for the purpose of editing, or to fit a recording of a performance within a limited duration, or any other modification required Ownership and transfer for purely technical reasons, is not deemed to be prejudicial to the performer’s reputation.) 24 Who is the owner of a copyrighted work? As a general rule, the author of a work is the first owner of copyright in a Copyright formalities work. For an original literary, musical, dramatic and artistic work, it is the 15 Is there a requirement of copyright notice? person who created or composed such work and for a sound recording and cinematograph film, it is the producer of such a work. In case of a photo- No. There is no legal requirement. (The ‘©’ mark was considered useful to graph, it is the photographer. For computer-generated works, the author (ie, protect copyright in those countries that were members of the Universal first wnero of copyright) is the person who causes the work to be created. Copyright Convention (UCC) but not of the Berne Convention, but after The exceptions to this rule are covered in section 17 of the Copyright the TRIPS Agreement the UCC is of little practical importance.) Act, as summarised below: In practice, some form of notice such as ‘©’, or a longer notice such • In the case of literary, dramatic or artistic works made by the author in as ‘©, name of owner, date’, is often displayed on or next to the copy- the course of his or her employment by the proprietor of a newspaper, righted work. magazine or similar periodical under a contract of service or apprenticeship for the purpose of publication in the newspaper, magazine or 16 What are the consequences for failure to display a copyright periodical, then the proprietor of the publication shall be the first owner notice? of the work for the purposes of its publication in a newspaper, magazine There are no adverse consequences. or similar periodical. In all other respects, the author is the first owner. • In the case of a work that is a photograph, painting, portrait, engrav- 17 Is there a requirement of copyright deposit? ing or cinematograph film that has been created at the instance of any There is no requirement of copyright deposit. person for valuable consideration, then such person is the first owner of the copyright in the work. However, this does not affect the rights of an 18 What are the consequences for failure to make a copyright author in any original literary, dramatic, musical or artistic work that is deposit? incorporated in a cinematograph film. Not applicable. In the case of Indian Heritage Society & Anr. v Meher Malhotra & Anr [CS(OS)No. 2717 of 2011], the Delhi High Court granted a perma- 19 Is there a system for copyright registration? nent injunction in favour of the plaintiff who was not the photographer, but was held to be the first owner of copyright in the photographs. This Yes. A register in the prescribed form called the Register of Copyrights was because it was at the plaintiff’s instance that the photographs were is available at the Copyright Office with the names or titles of registered taken for a valuable consideration paid to the photographer. works, and the names and addresses of authors, publishers and owners of • In the case of a work created by an author in the course of his or her copyrights and other such particulars as prescribed. The author, or pub- employment under a contract of service or apprenticeship, then the lisher or owner of, or another person interested in, the copyright in a work, employer is the first owner of the work. However, this does not affect may apply for its registration. the rights of an author in any original literary, dramatic, musical or artistic work that is incorporated in a cinematograph film as has been 20 Is copyright registration mandatory? clarified by the 2012 amendments to the Copyright Act. No. Copyright subsists in a work for its entire term and there is no formal • In the case of any address or speech delivered, the person making the requirement of registration in order to be entitled to copyright protection. address or delivering the speech, or the person on whose behalf he or However, the Copyright Register, wherein registrations are recorded, she does so, is the first owner of the work. serves as prima facie proof of the particulars therein. Hence, registration is • In the case of a government work, the government is the first owner of useful due to its initial evidential value. the work. • In the case of a work made or first published by a public undertaking, 21 How do you apply for a copyright registration? the public undertaking will be the first owner of the work. A prospective registrant may apply for registration of copyright in the fol- • In the case of works created by international organisations, the interna- lowing manner: tional organisation would be the first owner of the work. • an application is to be made to the Registrar of Copyrights in accordance with Form IV in triplicate along with the prescribed fee; 25 May an employer own a copyrighted work made by an • the person applying for registration shall give notice of the appli- employee? cation to every person who claims or has interest in the subject of If a person in the course of his or her employment under a contract of ser- the copyright; vice or apprenticeship creates any work, his or her employer becomes the • if no objection to such registration is received by the Registrar within 30 first wnero of the copyright in the work so long as there is no contract to days, the Registrar shall enter the particulars; the contrary. Hence, an employer’s ownership is automatic by virtue of • if the registration receives any objection, the Registrar may enter such the employer–employee relationship. However, for any literary, musical, particulars in the register after holding an inquiry; and artistic and dramatic works that are incorporated in a film, the employer • the Registrar of Copyrights shall send a copy of the entries to the par- does not become the first owner of the copyright and the employee author ties concerned. retains the first ownership. A specific assignment of copyright in such a case is required by the employer. www.gettingthedealthrough.com 59

26 May a hiring party own a copyrighted work made by an 32 Is there any provision for the termination of transfers of independent contractor? rights? In the absence of an assignment in favour of the hiring party, the first owner A copyright may be transferred in one of two ways, namely by assignment of the copyright is the independent contractor. The hiring party would have or by licensing; licences may be exclusive or non-exclusive. only an equitable right to use the material created for the purpose of hir- Assignments can be in part or in full in a future or existing work subject ing or commission, and possibly against any assignment detrimental to to statutory presumptions such as the term, unless specified otherwise in such use. the agreement or unless the agreement provides a contingency. Rights not To own the copyright, the hiring party would have to obtain an assign- utilised in a work within a period of one year from the date of assignment or ment in writing from the independent contractor. license are deemed to lapse back to the assignor. An assignment more than five years old can by revoked by the 27 May a copyrighted work be co-owned? Copyright Board if the author can show that it is, or has become, onerous. Yes. Work of joint authorship is established only when the work is produced Transfers of rights might also, conceivably, be held to be unlawful under the by the collaboration of two or more authors where the contribution of one law of contract. Again, a licence would normally be liable to termination if author is not distinct from the contribution of the other author or authors. the licensee failed to comply with the conditions of the licence.

28 May rights be transferred? 33 Can documents evidencing transfers and other transactions be recorded with a government agency? Yes. Copyright and neighbouring rights can generally be transferred by assignment, by testamentary disposition or by inheritance. Yes. If the copyright in a work has been registered with the Copyright Office However, moral rights are not assignable. Furthermore, with the and its particulars have been recorded in the Register of Copyrights, then amendment of the Copyright Act in 2012, authors of literary or musical transfer of ownership may be recorded in the Register pursuant to an appli- works that are included in cinematographic films or sound recordings have cation to the Registrar of Copyrights in a prescribed form, along with a pre- the inalienable right to receive royalties for exploitation of their works, and scribed fee. this right to receive royalties cannot be assigned by the author to anyone except his or her own legal heirs or to a copyright society for the purpose Duration of copyright of collection and distribution of royalties. Additionally, apart from other 34 When does copyright protection begin? specific requirements listed in the Copyright Act for a valid assignment (eg, Copyright protection begins the moment a work comes into existence (ie, identifying the work, right assigned, territory, duration) it is also necessary date of creation). to specify both the royalty and other consideration payable in the assignment agreement and this may also be applicable for licence agreements. 35 How long does copyright protection last? 29 May rights be licensed? The term of copyright depends on the nature of the work: • literary, dramatic, musical or artistic work – throughout the life of the Yes, the owner of a copyright may either license the entire copyright or the author and 60 years from the beginning of the year following the year licence may be confined to one or more interest in the copyright. The copy- in which the author dies; right may be licensed to more than one person non-exclusively. However, a • anonymous or pseudonymous work – 60 years from the beginning of licence would not result in change of ownership in a work. Like assignment, the year following the year when the work is published; the grant of any licence is also required to be in writing and the details of • posthumous works – 60 years from the beginning of the year work, territory and term should be specified. If it is not specified the term following the year when the work is first published; shall be presumed to be five years and the territory shall be presumed to • cinematograph films, government work, work of a public undertaking, be restricted to India only. A licence agreement needs to be in writing. or work of an international organisation – 60 years from the beginning However, there is no requirement for it to be signed, as is mandatory for of the year following the year of first publication; assignment agreements. • broadcast reproduction rights – 25 years from the beginning of the year following the year in which the broadcast is made; and 30 Are there compulsory licences? What are they? • performers’ rights – 50 years from the beginning of the year following Yes. The Copyright Board is empowered to grant compulsory licences with the year in which the performance is made. regard to Indian and foreign works. Some of the purposes for which compulsory licences may be granted are: 36 Does copyright duration depend on when a particular work • when a work has been withheld from the public because the owner of was created or published? the work has refused to grant a licence to republish or perform the work; In certain cases, as mentioned in question 35. • when a work or a translation thereof has been withheld from the public because the author of the work is dead or cannot be found, or because 37 Do terms of copyright have to be renewed? How? the copyright owner cannot be found; and • when a compulsory licence is required for making a work available to No. There is no renewal of copyright under Indian law as neither registra- persons with disabilities. tion nor renewal are required for subsistence of copyright in a work for its entire term. The Copyright Act also provides for statutory licences to broadcasters and statutory licences for cover versions. 38 Has your jurisdiction extended the term of copyright protection? 31 Are licences administered by performing rights societies? It has done so in the case of: How? • Photographs: pursuant to the Copyright (Amendment) Act, 2012, Yes. Performing rights societies (eg, the Indian Performing Right Society photographs are co-terminus with other artistic works. Therefore, Limited (IPRS) and Phonographic Performance Limited (PPL)) are forms of instead of enjoying a 60-year post-publication term, copyright in ‘copyright societies’ for collection, licensing, administration and enforce- photographs now effectively subsists until 60 years after the death of ment of rights, which have been registered as ‘copyright societies’ with the the photographer. government of India. These societies collect performance royalties for liter- • The term of protection of performers’ rights was also extended in 1999 ary and musical works and for sound recordings and cinematograph film. from 25 years to 50 years. There are two other copyright societies, namely the Indian Reprographic • The term of protection for all works, whether calculated after the death Rights Organisation (IRRO) and the copyright society for singers as per- of the author or from the date of publication (as specified in question formers called the Indian Singers’ Rights Association (ISRA), duly regis- 35 for different works), was increased for a period of 10 years from 50 tered in 2013. years to 60 years.

Copyright infringement and remedies Update and trends 39 What constitutes copyright infringement? Copyright infringement occurs when any of the following occur: Emerging trends are as follows: • unauthorised use of the exclusive rights of the owner of a copyright • setting up of new copyright societies in India and restructuring of existing collective management models; whether in relation to the whole or a substantial part of the copy- • enforcement and administration of performers’ rights of singers right work; through the new copyright society called the Indian Singers’ • permitting a place to be used for infringing purposes on a profit Rights Association (ISRA); basis; and • enforcement of the takedown provisions against internet • displaying or exhibiting in public by way of trade or distributing for the service providers; purpose of trade or importing infringing copies of a work. • delineation of rights of composers and lyricists and producers of sound recordings; 40 Does secondary liability exist for indirect copyright • customs enforcement by copyright owners through protection infringement? What actions incur such liability? measures at the borders and court actions; • clarification of the law applicable in cases of applied arts subject The terms ‘indirect’, ‘secondary’, ‘vicarious’ and ‘contributory’ infringe- to dual protection under the Designs Act and the Copyright Act ment are not mentioned in Indian copyright law, although they are some- through a writ petition filed before the Delhi High Court; and times used. The acts referred to would generally amount to infringement • clarification on the permitted quantity of reproduction of a under Indian law, as in the case of jurisdictions that have similar wording in literary work for educational purposes by teacher or a pupil; their copyright statutes, like Australia or the UK. • all intellectual property related functions have been consolidated and copyright is now also in the purview of Department of Industrial Policy and Promotion, Ministry 41 What remedies are available against a copyright infringer? of Commerce and not the Human Resource Development The remedies provided by the Copyright Act, 1957 against infringement of Ministry; and copyright are: • the establishment of the Copyright Board after a hiatus of • civil remedies – these provide for injunctions, damages, rendition of almost five years. The Board will be constituted under the 2012 accounts, delivery and destruction of infringing copies and damages amended provisions of the Copyright Act, which have been held for conversion; to be constitutional in a writ petition challenging them before • criminal remedies – these provide for imprisonment, fines, seizure of Madras High Court. infringing copies and delivery of infringing copies to the owner; and • border enforcement – the Act also provides for prohibition of import and destruction of imported goods that infringe the copyrights of a per- work punishable in the same manner if the person is aware that elec- son with the assistance of the customs authorities of India. tronic rights management information in the copy has been removed or altered. Section 65B was inserted by the Copyright (Amendment) 42 Is there a time limit for seeking remedies? Act, 2012. (iv) Section 63A provides for enhanced penalty on second or subsequent Yes. The period of limitation for filing a suit for damages for infringement of convictions under section 63 (see point (i)). copyrights is three years from the date of such infringement. (v) Other provisions in the chapter provide penalties for offences such as using infringing copies of a computer program, making or possessing 43 Are monetary damages available for copyright infringement? plates for the purpose of making infringing copies of works, and mak- Yes, besides damages the copyright owner can also claim rendition of ing false entries in the Register of Copyrights. account of profits. 46 Are there any specific liabilities, remedies or defences for 44 Can attorneys’ fees and costs be claimed in an action for online copyright infringement? copyright infringement? Yes. The amendment of 2012 introduced certain provisions that are specifi- Yes. Litigation costs are a standard request in infringement suits, but the cally relevant to copyright infringement and the internet. decision to award such costs is at the discretion of the court. Costs awarded Under the fair use provisions of the Act, section 52(1)(b) provides that seldom cover actual legal expenses. However, the Commercial Courts, transient or incidental storage of a work or performance purely in the tech- Commercial Division and Commercial Division Appellate Division of High nical process of electronic transmission or communication to the public Courts Act, 2015 (the Commercial Courts Act) brought amendments to the does not constitute infringement of copyright. This provision provides safe Code of Civil Procedure and specifically provides for payments of costs, harbour to internet service providers who may have incidentally stored lays down scenarios in which costs are to be paid and the method of cal- infringing copies of a work for the purpose of transmission of data. culation of costs. Since, the Commercial Courts Act was intoroduced only Section 52(1)(c) further provides that transient or incidental storage of recently, the effects of these amendments are yet to be seen in practice. a work or performance for the purpose of providing electronic links, access or integration that is not expressly prohibited by the right holder would not 45 Are there criminal copyright provisions? What are they? be infringement of copyright, unless the person responsible is aware of Yes. The Copyright Act, 1957 has provided for enforcement of copyrights infringement or has reasonable grounds for believing that such storage is through a series of penal provisions under Chapter 13 of the Act. The follow- that of an infringing copy. ing are the principal penal provisions under the Act: Under section 52(1)(c), if the owner of a copyright work, in a writ- (i) Under section 63, where any person knowingly infringes or abets ten complaint to the person responsible for digitally storing an infringing infringement of the copyright in a work and any other right as covered copy of the work, complains that such transient or incidental storage is by the Copyright Act, 1957 (broadcast reproduction rights, performers’ an infringement, then the person responsible would have to refrain from rights, moral rights, etc), such person may be punished with imprison- facilitating access to the infringing copy of the work for a period of 21 days. ment of a minimum term of six months and a maximum term of three If within 21 days, the person responsible does not receive an order from a years, and a fine of between 50,000 and 200,000 rupees. competent court that directs the person responsible to refrain from provid- (ii) Section 65A penalises circumvention of effective technological meas- ing access, then access may be resumed at the end of that period. ures that may be applied to copies of a work with the purpose of Therefore, if A, the owner of a short story, finds that his or her short protecting any of the rights conferred under the Act (ie, copyrights, story has been published on the website of B, he or she may write a com- performance rights). The punishment under this provision is imprison- plaint to B declaring that B must refrain from providing the public with ment that may extend to two years and payment of a fine. Section 65A access to A’s short story. B would then have to remove A’s short story from was inserted by the Copyright (Amendment) Act, 2012. visibility or accessibility on his or her website for 21 days, within which (iii) Section 65B makes unauthorised removal or alteration of ‘rights man- time A must persuade a competent court that it should order the complete agement information’ punishable with imprisonment of up to two removal of the infringing version or copy of the work. If the court does not years and payment of a fine. The provision makes the unauthorised issue such an order within that period of time, then B may resume making distribution, broadcast or communication to the public of copies of the the short story available to the public on his or her website. This provision www.gettingthedealthrough.com 61

© Law Business Research 2016 INDIA Anand and Anand was inserted in the Act by the Copyright (Amendment) Act, 2012 which Relationship to foreign rights came into force on 21 June 2012. It is yet to be seen in practice. 48 Which international copyright conventions does your country Apart from the above-mentioned provisions, the entire scheme of the belong to? Copyright Act makes it amply clear that all the provisions of the Act must be applied to electronic and digital media in the same manner they are applied India is a member of the following conventions and agreements that con- to conventional media. The recent copyright amendment of 2012 has also cern its copyright regime: clarified this in many places. Remedies against copyright infringement on • the Berne Convention; the internet are not dealt with separately under that Act as the provisions • the UCC; sufficiently cover all forms of exploitation of works, including exploitation • the Convention for the Protection of Producers of Phonograms over the internet, and the remedies for copyright infringement would apply Against Unauthorised Duplication of their Phonograms (Phonograms to the internet as they would to any other medium or platform. Convention); and • the TRIPS Agreement. 47 How may copyright infringement be prevented? 49 What obligations are imposed by your country’s membership No degree of vigilance can guarantee an ‘infringer-free’ environment, of international copyright conventions? but certain deterrent measures must be adhered to by copyright owners, for instance: Having ratified the Berne Convention and the Universal Copyright • documentation of instances of use; Convention, works first published outside India in any of the convention • registration of copyright; countries enjoy protection in India on a par with the protection granted to • proper notice of copyright; Indian works with the exception that if the term specified in the country of • monitoring the activities of habitual infringers; origin is shorter than that in India, the work will be protected for the shorter • making independent contractors and employees subject term in India. to confidentiality; • having proper licensing agreements incorporating a proper control mechanism; and • publicising a successful infringement trial (if resources allow).

Pravin Anand [email protected] Tanvi Misra [email protected]

First Channel Building Tel: +91 120 4059 300 Plot 17-A, Sector 16-A Fax: +91 120 4243 056 – 058 Film City, Noida 201301 (UP) www.anandandanand.com India

Japan

Takashi Nakazaki* Anderson Mōri & Tomotsune

Legislation and enforcement protect his rights, shall be governed exclusively by the laws of the country where protection is claimed. 1 What is the relevant legislation? Relevant legislation includes the Copyright Act (Act No. 48 of 1970), the Agency Act on Registration of Program Works (Act No. 65 of 1986), the Act on Management Business of Copyright and Neighbouring Rights (Act No. 131 5 Is there a centralised copyright agency? What does this of 2000), the Intellectual Property Basic Act (Act No. 122 of 2002), the Act agency do? for Improvement of Creation, Protection and Utilisation of Contents (Act The Agency of Cultural Affairs (ACA) is the primary agency for handling No. 81 of 2004), the National Diet Library Act (Act No. 5 of 1948) and rel- copyright-related issues. The ACA registers copyrighted works – although evant regulations relating to these statutes. registration is not mandatory in Japan – with the exception of program works, which are registered at the Software Information Centre (SOFTIC). 2 Who enforces it? Copyright-related legislation is enforced by the district courts, the Subject matter and scope of copyright Intellectual Property High Court (for civil cases), other high courts (for 6 What types of works are copyrightable? criminal cases and civil cases having jurisdiction other than the Tokyo Works in which thoughts or sentiments are expressed in a creative way, and High Court) and the Supreme Court of Japan. The Intellectual Property that fall within the literary, scientific, artistic or musical domain, are copy- High Court was established on 1 April 2005 as a special branch of the Tokyo rightable. The following are all copyrightable: High Court that exclusively hears intellectual property cases. • novels; • play or film scripts; 3 Are there any specific provisions of your copyright laws that • dissertations, lectures and other literary works; address the digital exploitation of works? Are there separate • musical works; statutory provisions that do so? • choreographic works and pantomimes; Yes. There are some specific provisions addressing the digital exploitation • paintings, engravings, sculptures and other artistic works; of works under the Copyright Act that have been amended and expanded • architectural works; to keep up to date with digital society, for example: • maps and diagrammatical works of a scientific nature, such as draw- • rights of public transmission (article 23); ings, charts and models; • compensation for private sound and visual recording (article 30, sec- • cinematographic works; tion 2); • photographic works; and • copying by the National Diet Library for the collection of internet • computer programs. material (article 42-2); • ephemeral reproduction for maintenance or repairs on reproducing 7 What types of rights are covered by copyright? machines with built-in memory (article 47-4); and Rights of reproduction, performance, screen presentation, public trans- • copying for information analysis (article 47-7). mission, recitation, exhibition, distribution, ownership transfer, rental, translation and adaptation are covered by copyright. 4 Do your copyright laws have extraterritorial application to deal with foreign-owned or foreign-operated websites that 8 What may not be protected by copyright? infringe copyright? The Constitution and other laws and regulations; public notices, instruc- While there is no specific provision addressing extraterritorial application tions, circular notices and the like issued by public entities; judgments, to deal with foreign-owned or foreign-operated websites, protected works decisions, orders and decrees of courts; rulings and judgments made by such as works of Japanese nationals, works first published in this country government agencies; translations and compilations prepared by public (including those first published outside Japan but subsequently published entities; current news reports and miscellaneous reports having the char- in Japan within 30 days thereof) and works that Japan has the obligation acter of mere communication of fact may not be protected by copyright. to grant protection to under international treaties are protected under the Ideas without any creative expression may not be protected by copy- Copyright Act. If the infringed work is protected in this way, then the Act right, even if the idea is unique. will generally apply to a foreign-owned or operated website that infringes In addition, utility articles, applied arts and designs for utilities in copyright; however, there is some controversy in relation to extraterrito- which thoughts or sentiments are not expressed in a creative way and that rial application. Some guidance is provided by judicial precedents accept- fall within the literary, scientific, artistic or musical domains may not be ing application of the Copyright Act of Japan, in accordance with article protected by copyright. 5, section 2 of the Berne Convention for the Protection of Literary and Article Work: 9 Do the doctrines of ‘fair use’ or ‘fair dealing’ exist? The enjoyment and exercise of these rights shall not be subject to While there is no general doctrine of ‘fair use’ in Japan, there are some any formality; such enjoyment and such exercise shall be independ- equivalent exemptions provided by the Copyright Act, such as: ent of the existence of protection in the country of origin of the work. • quoting from and exploiting a work already made public fairly and to Consequently, apart from the provisions of this Convention, the extent the extent justified by the purpose of the quotations; of protection, as well as the means of redress afforded to the author to • private use, to a limited extent; www.gettingthedealthrough.com 63

• consequent copy of copyrighted work, to a limited extent; 18 What are the consequences for failure to make a copyright • use of copyrighted work for consideration before licence, to a lim- deposit? ited extent; Not applicable. When a publisher fails to make a deposit within 30 days • test use of publicised work, to a limited extent; after publishing without reasonable cause, an administrative fine of not • reproduction in libraries; more than five times the price of the book may be imposed. • reproduction in school textbooks, schools and other educational institutions; 19 Is there a system for copyright registration? • use for those with disabilities; and Yes. A work may be protected by copyright without any copyright registra- • reproduction for judicial proceedings. tion. However, the transfer (other than by inheritance or other succession) of copyright or a restriction on the disposal of the copyright, and the estab- 10 What are the standards used in determining whether a lishment, transfer, modification or termination of a pledge on a copyright particular use is fair? or a restriction on the disposal of a pledge established on the copyright, As there is no general ‘fair use’ doctrine in Japan, rather than applying gen- may not be asserted against a third party unless it has been registered. In eral standards, specific special exemptions set out the terms under which a addition, the author of a work that is made public, anonymously or pseu- work may be used legally. donymously, may have his or her true name registered with respect to said work, regardless of whether he or she actually owns the copyright therein; 11 Are architectural works protected by copyright? How? the copyright holder of any work, the publisher of an anonymous or pseu- Yes. Architectural works in which thoughts or sentiments are expressed in donymous work, may have registered said work’s date of first publication a creative way, and which fall within the literary, scientific, artistic or musi- or the date when the work was first made public. Furthermore, the author cal domains are protected by copyright. of a computer program may have the date of the creation of his or her work Architectural works protected by copyright have the same general registered within six months of the work’s creation. rights as copyright (see questions 7 and 14), except the right to maintain integrity. The author of an architectural work is required to accept modi- 20 Is copyright registration mandatory? fication of an architectural work by way of extension, rebuilding, repair- No. ing or remodelling. In addition, exploiting of architectural works located permanently in open space shall be permissible except for the (imitative) 21 How do you apply for a copyright registration? reproduction of an architectural work and the offering of such reproduc- With the exception of computer software, the author or right holder of a tion to the public by transferring ownership of it. work applies for copyright registration to the ACA, using the forms designated by the Agency. For computer software, the author or creator, or other 12 Are performance rights covered by copyright? How? person provided in the Act, such as the holder of copyright, may apply for Yes. A performer has the moral right to indicate his or her name and to pre- copyright registration by application to the SOFTIC. serve integrity; the right to make sound or visual recordings; the right to broadcast and to wire-broadcast; the right to make his or her performance 22 What are the fees to apply for a copyright registration? transmittable; the right to transfer ownership; and the right to offer his or The fee for registration of the date of first publication and the date of crea- her performance to the public by rental as neighbouring rights. In addition, tion is ¥3,000. The fee to register the true name of a work (including com- a performer has the right to receive secondary use fees from broadcasting puter software) is ¥9,000. The fee for registration of transfer of copyright organisations or wire-broadcasting organisations using commercial pho- is ¥18,000. The fee for registration of transfer of neighbouring rights is nograms incorporating a sound recording of the performance through des- ¥9,000. The fee for establishment of the right of publication is ¥30,000. ignated organisations (this right is not deemed to be a neighbouring right). In addition to the above, a registration fee of ¥47,100 per software applies in the case of computer software. 13 Are other ‘neighbouring rights’ recognised? How? Yes. Producers of phonograms, broadcasting organisations and wire- 23 What are the consequences for failure to register a broadcasting organisations all have neighbouring rights. copyrighted work? The right holder or author may not assert his or her rights against a third 14 Are moral rights recognised? party unless registered. Yes. An author shall have the right to make the work and derivative work thereof public; to determine how the author’s name is shown (whether it is Ownership and transfer his or her true name or a pseudonym); and to maintain the integrity of his or her work and its title, without distortion, mutilation or other modifica- 24 Who is the owner of a copyrighted work? tion against the author’s will. The author of a copyrighted work is its owner. Since copyright may be transferred, the assignee may become the owner of the work; this excludes Copyright formalities moral rights, which may not be transferred. Exemptions to this principle are authorship of a work made by an 15 Is there a requirement of copyright notice? employee (see question 25) and authorship of a cinematographic work. No. However, many authors do put copyright notices on their works to help Authorship of a cinematographic work shall be attributed to those who, prevent copyright infringement. by taking charge of producing, directing, filming, art direction, etc, have creatively contributed to the creation of such cinematographic work as a 16 What are the consequences for failure to display a copyright whole, with the exception of authors of novels, play and film scripts, music notice? or other works adapted or reproduced in such cinematographic work. Not applicable. 25 May an employer own a copyrighted work made by an 17 Is there a requirement of copyright deposit? employee? No. However, there is a similar requirement to deposit a copy of a publi- Yes. With the exception of computer programs, the authorship of a work cation in the Diet Library in order to maintain the publication as public that, on the initiative of a juridical person (such as a company) or other property for public use and record in accordance with the National Diet employers, is made by an employee in the course of the performance of Library Act. If a governmental institute publishes a piece of work, then that his or her duties in connection with the employer’s business and is made institute deposits multiple copies to be used for the discussion of national public by the employer as a work under its own name, shall be attributed issues and international cooperation. to the employer unless there are contract or work regulations that provide that the work should be attributed to the employee who created the work. As for computer programs, the authorship of a computer program work that, on the initiative of a juridical person or other employers, is made by an employee in the course of his or her duties in connection with the

© Law Business Research 2016 Anderson Mōri & Tomotsune JAPAN employer’s business, shall be attributed to such employer unless otherwise 36 Does copyright duration depend on when a particular work stipulated by contract, work regulations or the like at the time of the mak- was created or published? ing of the work. Yes. There are special copyright durations, pursuant to the Act on Special Provisions of Duration of Copyright of the Allies, for works created during 26 May a hiring party own a copyrighted work made by an World War II (this time frame runs from 8 December 1941 to the day before independent contractor? each peace pact). Yes. Such ownership must be expressly agreed to; although it is not strictly necessary to have a written agreement, it is customary to have one in order 37 Do terms of copyright have to be renewed? How? to prevent copyright disputes. No.

27 May a copyrighted work be co-owned? 38 Has your jurisdiction extended the term of copyright Yes. A co-holder of a copyright in a work of joint authorship or of any other protection? co-owned copyright may not transfer or pledge his share without the con- Yes. Protection for 30 years after death was extended to 38 years, and then sent of the other co-holders. to 50 years in 1970, in accordance with the Brussels Amendment of the Berne Convention (1948). With respect to cinematographic works, protec- 28 May rights be transferred? tion for a 50-year period following the copyright work being made public Yes. was also extended to 70 years (or, if the work was not made public within the 70-year period following its creation, until the end of the 70-year 29 May rights be licensed? period following the work’s creation). Yes. Copyright infringement and remedies 30 Are there compulsory licences? What are they? 39 What constitutes copyright infringement? Yes. When, despite reasonable efforts, it is not possible to contact the copy- Reproduction, performance, screen presentation, public transmission, right holder because his or her identity is unknown or for other reasons, recitation, exhibition, distribution, rental, translation or adaptation with- then it shall be possible to exploit, under authority of a ruling for compul- out the copyright owner’s approval constitute copyright infringement. sory licence issued by the CAC and upon depositing, for the benefit of the copyright holder, compensation in the amount fixed by the Commissioner 40 Does secondary liability exist for indirect copyright as corresponding to the ordinary amount of royalty therefor, a work which infringement? What actions incur such liability? has been made public or a work as to which it is clear that it has been Yes. A representative, an agent, an employee or any other worker of a offered or made available to the public for a considerable period of time. juridical person (such as a company) or a person (individual) who commits copyright infringement in connection with the business of that person shall 31 Are licences administered by performing rights societies? be jointly or vicariously liable for the infringement under the Copyright How? Act and civil law, and may have criminal liability in accordance with the Yes. Japanese performing rights societies include the Japanese Society Copyright Act. for Rights of Authors, Composers and Publishers (JASRAC), the Japan Writers’ Association, the Writers’ Guild in Japan and the Japan Writers 41 What remedies are available against a copyright infringer? Guild. Owners of copyrighted works may either entrust administration of Remedies available include injunction, compensation, measures for the their copyright to the entity of their choice, or manage their rights person- restoration of honour and reputation such as a public apology and the col- ally in whole or in part. If a copyright owner chooses to entrust his or her lection of unjust enrichment. copyright to an administrator, this entity and the owner will execute an entrustment agreement. 42 Is there a time limit for seeking remedies? 32 Is there any provision for the termination of transfers of Compensation in accordance with the Civil Code must be sought within rights? three years of the infringement and infringer becoming known, or within 20 years of the infringement. No. 43 Are monetary damages available for copyright infringement? 33 Can documents evidencing transfers and other transactions be recorded with a government agency? Yes. If the transfer and other transactions are registered, yes. The ACA or 44 Can attorneys’ fees and costs be claimed in an action for SOFTIC requires such documents in order to register the transfer or trans- copyright infringement? action and to summarise the fact in the registration. Yes, although it is rare that the amounts awarded in a judgment will cover Duration of copyright attorneys’ fees and the costs of an action.

34 When does copyright protection begin? 45 Are there criminal copyright provisions? What are they? Copyright protection begins at the time of the creation of the work. Yes. A person who infringes copyright, right of publication or neighbouring rights (excluding some exemptions provided in the Act) shall be punished 35 How long does copyright protection last? by imprisonment with work for a term not exceeding 10 years, a fine of not Protection will last for 50 years after the death of the author or, in the case more than ¥10 million, or both. A person who infringes the author’s moral of a jointly authored work, for 50 years after the death of the last surviv- rights, a person who, for profit making purposes, causes a machine that has ing co-author (in principle). The copyright in a work that bears the name a reproduction function (provided in the article) to be used to reproduce of a juridical person or other corporate body as its author shall continue to works or performances (eg, automated bulk video copying) or a person subsist until the end of the 50-year period following the work being made who commits an act deemed to constitute copyright infringement shall be public. The copyright in a cinematographic work shall continue to subsist punished with penal labour for up to five years, a fine of up to ¥5 million, or until the end of the 70-year period following the work being made public; both. A person who infringes an author or performer’s moral rights after or, if the work was not made public within the 70-year period following its the author or performer’s death shall be punishable by a fine of up to ¥5 creation, until the end of the 70-year period following the work’s creation. million. There are also criminal provisions against the illegal reproduction The protection period will be 70 years in compliance with the Trans-Pacific of a computer program; circumvention of technological protection meas- Partnership agreement. ures; illegal reproduction of a person’s true name or widely known pseudonym; and the reproduction, distribution or possession of a commercial phonogram without any authority, etc. www.gettingthedealthrough.com 65

• it is technically possible to take measures for preventing such Update and trends information from being transmitted to unspecified persons; • the service provider knew that the infringement was caused by A bill to amend the Copyright Act to comply with the Trans-Pacific the information distribution through the telecommunications Partnership agreement was submitted in March 2016. The bill provided by the provider; or extends the legal copyright protection period to 70 years after the author’s death from the current 50 years. The bill also allows • the service provider had knowledge of the information distribu- authorities to investigate copyright infringements and bring charges tion by its service or there are reasonable grounds to find that against offenders, even if the copyright holders have not filed com- the service provider could know the infringement was caused by plaints, in relation to certain copyrighted works, if the following information distribution through its service. requirements are satisfied: • with the purpose to obtain compensation or to harm the On the other hand, if a service provider takes measures to block transmis- interests of the copyright holder; sion of information, such provider shall not be liable for any loss incurred • to assign, transmit publicly or duplicate, without any alteration, by a sender of such information allegedly infringed insofar as measures the copyrighted works which have been available to the public are taken within the limit necessary for preventing transmission of the with compensation; and • the interests to be prospected in compensation for being infringement to unspecified persons and there is a reasonable ground to available to the public are unduly harmed. believe the infringement, or there is no notice of acceptance of blocking the information from the infringer who receives an inquiry from the ser- Furthermore, the bill allows rights holders to be able to seek vice provider within seven days after the above inquiry is made. damages for infringements of certain copyrighted works, on an amount to be calculated based on licence fee terms without proving 47 How may copyright infringement be prevented? actual damages. Copyright infringement may be prevented in Japan by putting a copyright notice on the work; education; appropriate measures against infringement, such as issuing a warning immediately after infringement is recognised; The authorities may investigate copyright infringements and bring and legal action against the infringer. Japanese copyright holders have suf- charges against offenders only if the copyright holders have filed com- fered a number of copyright infringements by individuals and corporations plaints against the authorities. After the amendment of the Copyright Act based in foreign countries (eg, counterfeit software and cartoon books occurs in order to comply with the Trans-Pacific Partnership agreement, in being translated and printed without approval); government-level action relation to certain copyrighted works, the authorities will be able to inves- against countries in which many copyright infringers exist should be a criti- tigate copyright infringements and bring charges against offenders even if cal factor in helping to prevent future copyright infringement. the copyright holders have not filed complaints as well as allowing right holders to seek statutory damages for infringements. Relationship to foreign rights 46 Are there any specific liabilities, remedies or defences for 48 Which international copyright conventions does your country online copyright infringement? belong to? Yes. When copyright is infringed by information distribution through the Japan belongs to the Berne Convention for the Protection of Literary and internet, a person alleging that his or her copyright has been infringed may Artistic Works (Paris Act); the Universal Copyright Convention (Paris Act); request a telecommunications service provider, such as an internet ser- the International Convention for the Protection of Performers, Producers vice provider: of Phonograms and Broadcasting Organisations; the WIPO Performances • to prevent such infringed information from being transmitted to and Phonograms Treaty (WPPT); the Agreement on Trade-Related unspecified persons in practice (under civil laws); and Aspects of Intellectual Property Rights; and the Beijing Treaty on Audio- • to disclose the identification information of the sender pertain- visual Performances. ing to the infringement if there is evidence that the copyright was infringed by distribution through the internet, since the identification 49 What obligations are imposed by your country’s membership information of the sender is necessary for the right holder demand- of international copyright conventions? ing the above disclosure to exercise his or her right to claim dam- Principles of national treatment in accordance with the Berne Convention ages, and there is justifiable ground for the right holder to receive for the Protection of Literary and Artistic Works (Paris Act), the Universal the disclosed identification information of the sender in accordance Copyright Convention (Paris Act), and the Principle of Reciprocity in with the Act on the Limitation of Liability for Damages of Specified accordance with the Berne Convention (Paris Act) are imposed. Telecommunication Service Providers and the Right to Demand Disclosure of Identification Information of the Senders (Act No. 137 * This chapter is an update of the Japan chapter published in Copyright 2014 of 2001). When a telecommunication service provider has received authored by Chie Kasahara of Atsumi & Sakai. a request to prevent the infringement, the service provider shall be liable for loss incurred from such infringement if:

Takashi Nakazaki [email protected]

Akasaka K-Tower, 2-7 Tel: +81 3 6888 1101 Motoakasaka 1-chome Fax: +81 3 6888 3101 Minato-ku www.amt-law.com Tokyo 107-0051 Japan

Mexico

Carlos Trujillo and Karla Alatriste Uhthoff, Gomez Vega & Uhthoff

Legislation and enforcement Agency 1 What is the relevant legislation? 5 Is there a centralised copyright agency? What does this agency Copyright protection and the copyright legal system in Mexico derives from do? article 28 of the Federal Constitution. The Federal Copyright Law, which The National Copyright Institute is the centralised agency for copyright was enacted on 24 December 1996 and took effect as of 24 March 1997, in Mexico. Among its different activities, it acts as the Public Copyright is the main statutory law governing copyright and neighbouring rights. It Registry where authors and copyright owners can register their works affords copyright protection, constitutes the Public Copyright Registry and and documents to give them publicity. Although copyright registration is determines the causes of infringement against the copyright. Section 26 not required for obtaining copyright protection, this formality proves to of the Federal Criminal Code contains a list of conduct to be considered be very helpful since it constitutes proof of the existence of the work, and as crimes against copyright and related rights and establishes the applica- establishes presumption of copyright ownership. This facilitates the perfor- ble penalties for the offenders. Other relevant legislation is found in the mance of commercial actions using the work and facilitates enforcement Industrial Property Law. This statutory law, which is focused on protecting proceedings against infringers. industrial property rights, is applicable to the copyright field since it governs the proceedings to enforce copyrights for conduct in which the alleged Subject matter and scope of copyright infringer obtains direct or indirect profits from the commercial use of a 6 What types of works are copyrightable? work, which is a so-called ‘trade-related infringement’. The copyright referred to in the Federal Copyright Law is recognised in 2 Who enforces it? respect of works in the following categories: • literary works; The National Copyright Institute is the competent authority to enforce the • musical works (lyrics and notes); copyright for cases in which the conduct by the offender is not intended to • dramatic works; obtain a profit with the use of a work and in which the infringement relates • dances; more to omissions in observing certain obligations foreseen in the Federal • pictorial works or works of drawing; Copyright Law. For cases in which the infringement constitutes conduct • sculptures and works of plastic nature; focused on obtaining direct or indirect profits, the competent author- • works of caricature and short stories; ity to take action against the alleged infringer is the Mexican Institute of • architectural works; Industrial Property. The Office of the Mexican Attorney General is the • cinematographic and other audiovisual works; competent authority to initiate a criminal action for a copyright criminal • radio and television programmes; offence. Civil courts, with either federal or local jurisdiction will be compe- • software; tent to hear a claim for damages against a copyright infringer. By an order • photographic works; coming from any of the mentioned administrative or judicial authorities, • works of applied art, including works of graphic or textile design; and the Mexican Customs can seize illegitimate works at the border to prevent • works of compilation, consisting of collections of works such as ency- them from entering into Mexican territory. clopedias, anthologies and works or other elements like databases, provided that they constitute intellectual creations by reason of the 3 Are there any specific provisions of your copyright laws that selection or arrangement of their content or subject matter. address the digital exploitation of works? Are there separate statutory provisions that do so? Other works which by analogy may be considered literary or artistic In general terms, there are no provisions in the Federal Copyright Law spe- works shall be included in the category that most closely corresponds to cifically dealing with the unauthorised use of digital works. But from the their nature. interpretation of the concepts foreseen in the aforementioned law, there can be causes of action against the unauthorised use, copying, distribu- 7 What types of rights are covered by copyright? tion and public communication of digital works. Article 112 of the Federal Copyright in Mexico covers moral and economic rights. Copyright Law contemplates some general anti-circumvention measures by prohibiting the importation, manufacture, distribution or use of 8 What may not be protected by copyright? devices or the delivery of services that aim to eliminate technical protections of software or decode broadcasting signals. In addition, the Federal The Federal Copyright Law expressly excludes from copyright protection: Criminal Code considers the unauthorised decoding of satellite signals to • ideas, formulas, solutions, concepts, methods, systems, principles, dis- be an offence. coveries, processes and inventions of any kind; • the industrial or commercial exploitation of the ideas embodied 4 Do your copyright laws have extraterritorial application to in works; deal with foreign-owned or foreign-operated websites that • schemes, plans or rules for performing mental acts, playing games or infringe copyright? doing business; • letters, digits or colors in isolation, except where they are stylised to Mexican law does not have extraterritorial application. The owner of such an extent that they become original designs; the website infringing copyrights must be based in Mexico to support an • names and titles or phrases in isolation; infringement action under Mexican law.

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• mere layouts or blank forms for completion with any kind of informa- 12 Are performance rights covered by copyright? How? tion, and related instructions; Performance rights are protected by copyright in Mexico for actors or per- • unauthorised reproductions or imitations of coats of arms, flags or forming artists for their public performances. emblems of any country, state, municipality or equivalent political Actors and performing artists are granted by law ‘neighbouring rights’, subdivision, or the names, abbreviated names, symbols or emblems of which afford them the right to be recognised with their names in their inter-governmental or non-governmental international organisations, respective performances and provide them with the ability to: (i) authorise or those of any other officially recognised organisation, and the verbal or oppose the public communication of his or her performances, (ii) author- designation thereof; ise or oppose the fixation of their performances and further reproduction • legislative, regulatory, administrative or judicial texts, and official thereof and, (iii) authorise or oppose any alteration to a performance in a translations thereof; where they are published, they must conform to manner that affects his or her prestige or reputation. the official text, and they shall confer no exclusive right of publication; The mentioned rights are extinguished if an authorisation to the fixa- nevertheless, protection shall be available for parallel texts, interpre- tion of the performance exists, provided that the titleholder of the resulting tations, comparative studies, annotations, commentaries and other material support has fulfiled the payments as agreed with the actor or per- similar works that entail on the part of their author, the creation of an forming artist in question. original work; Aside from the above capabilities, actors and performing artists have • the information content of news, whereas the form of expression the right to receive royalties for the public communication of their perfor- thereof is protected; and mances. This right can be exercised directly by the concerned individual or • information in everyday use, such as proverbs, sayings, legends, facts, through a collective management organisation empowered to represent an calendars and scales of measurement. actor’s or a performing artist’s interests. The rights of actors and performers last for 75 years from the first per- 9 Do the doctrines of ‘fair use’ or ‘fair dealing’ exist? formance; the first fixation of the performance in a phonogram, if the per- The Federal Copyright Law regulates fair use of works that have been pub- formance can be recorded, and the first broadcasting of the performance in lished by their authors or economic copyright holders in a casuistic manner any available media. in article 148. See question 10. 13 Are other ‘neighbouring rights’ recognised? How? 10 What are the standards used in determining whether a In addition to the performance rights, the Federal Copyright Law recog- particular use is fair? nises protection through neighbouring rights to the following: There are exceptions that may apply to the exclusive right of the authors or • book publishers; the copyright owner to use, reproduce, distribute, communicate and exploit • producers of phonograms; their works. They are foreseen in article 148 of the Federal Copyright Law • producers of videograms; and which establishes that literary and artistic works that have already been • broadcasting organisations. disclosed or published can be used without the consent of the copyright owner and without remuneration, provided that the normal exploitation of The protection provided in no way affects the protection of the copyright in the work is not affected and provided also that the source is invariably men- literary and artistic works. tioned and that no alteration is made to the work, only in the following cases: In Mexico there is sui generis protection under the Federal Copyright • quotation of texts, provided that the amount quoted may not be con- Law called ‘reservation of rights’, which grants to its holder the right to use sidered a substantial or simulated reproduction of the contents of on an exclusive basis any of the following: the work; • names of serial publications; • reproduction of articles, photographs, illustrations and comments relat- • names of TV, radio or internet websites; ing to current events that have been published in the press or broadcast • original characteristics (physical and psychological) of characters; by radio or television, or any other medium of communication, if this • artistic names; and has not been expressly prohibited by the owner of the rights; • original advertisement mechanisms. • reproduction of parts of the work for the purposes of scientific, literary or artistic criticism and research; This protection is constituted by obtaining a reservation of rights certificate • reproduction of a literary or artistic work once, and in a single copy, for from the National Copyright Institute and is similar to trademark protec- the personal and private use of the person doing it, unless intended for tion. The names, characters or mechanisms must not be identical or con- profit; a legal entity may not avail itself of the provisions of this subpara- fusingly similar with others that were previously ‘reserved’ on behalf of graph except where it is an educational or research institution, or is not other people. devoted to trading activities; • reproduction of a single copy by archives or a library for reasons of 14 Are moral rights recognised? security and preservation where the work is out of print, no longer cata- The Federal Copyright Law recognises moral rights to be an expression logued and liable to disappear; of the author’s personality. Moral rights are a set of rights or prerogatives • reproduction for the purposes of evidence in a judicial or administra- related to the honour, prestige and reputation of the author and they are tive proceeding; mainly focused on protecting the authorship and the integrity of the work. • reproduction, communication and distribution in drawings, paintings, According to the Federal Copyright Law, the author of any work has the photographs and audiovisual material of works that are visible from following moral rights: public places; and • to determine the method of disclosure and whether its work should be • publication of a literary or artistic work for people with disabilities, disclosed or remain undisclosed (right of publication); without the intention of benefiting commercially. • to demand the recognition of its authorship and to order publication as an anonymous or pseudonymous work (right of paternity); The Copyright Law thus regulates the fair use of works that have been • to demand respect for its work, opposing any deformation or modifica- published by their authors or copyright owners. However, in some cases it tion, as well as any action or attempt that causes demerit or prejudice remains difficult to know whether the use of a work is permitted, since no to the author’s reputation (right of integrity); parameters have been established by the law or its regulations. • to modify its work (right of paternity); • to withdraw its work from circulation (retirement right); and 11 Are architectural works protected by copyright? How? • To oppose any attribution of a work that he or she did not create. Architectural works are protected by copyright on the same basis as other artistic or literary works. Protection extends to the architectural plans. Moral rights in Mexico are: As part of the fair use of works, architectural works that are visible from • perpetual; public places can be reproduced, communicated and distributed in draw- • inalienable; ings, paintings, photographs and audiovisual materials, without the consent • irrevocable; and of the copyright owner and without remuneration. • cannot be waived.

The author is the sole, original and perpetual owner of the moral rights of 22 What are the fees to apply for a copyright registration? its works. The authors cannot assign moral rights, because moral rights are Government fees charged by the National Copyright Institute for a copy- closely linked to the author of a work and protect the author’s reputation. right registration of an artistic or literary work are the equivalent of approximately US$20. Copyright formalities 15 Is there a requirement of copyright notice? 23 What are the consequences for failure to register a copyrighted work? According to article 17 of the Federal Copyright Law, all works to be published must display a copyright notice with the following information: (i) Not obtaining copyright registration for a literary or artistic work should the initials ‘D.R.’ or the indication ‘Derechos Reservados’; (ii) the copyright have no negative impact for the work or for the copyright owner, since as symbol ‘©’; (iii) the name and address of the copyright owner; and (iv) the indicated in the former questions, copyright protection is achieved at the year of first publication. very same time the work is fixed into a material support. In practice, however, obtaining copyright registration from the National Copyright Institute 16 What are the consequences for failure to display a copyright is highly advisable. The certificate of copyright registration issued by the notice? National Copyright Institute is an official document that establishes proof of existence of the work and a presumption about the copyright ownership Failure to display a copyright notice does not imply loss of copyright or the on behalf of the registrant. It facilitates the exercise of commercial actions inability to enforce actions against infringers. However, in the event that a with the registered work and helps to expedite the initiation of enforce- published work does not include the copyright notice, this action is consid- ment proceedings before the Mexican Institute of Industrial Property or the ered a copyright infringement and the National Copyright Institute can fine Office of the Mexican Attorney General (depending on whether the action the publisher an amount equivalent from 5,000 up to 15,000 times the daily is of an administrative or criminal nature). wage in Mexico City. Ownership and transfer 17 Is there a requirement of copyright deposit? The Federal Copyright Law does not foresee a deposit of works as a condi- 24 Who is the owner of a copyrighted work? tion to achieve or maintain copyright protection, or to avoid the imposition Moral and economic rights by operation of law pertain to the author (indi- of a fine for not performing this action. It is possible though, to register a vidual) by virtue of its creation. Moral rights belong to the author perpetu- literary or an artistic work before the National Copyright Institute and for ally and cannot be transferred. Economic rights may be subject to transfer this it is necessary to file copies of the work. For obtaining the registration or licensed to a different person or to a company. before the mentioned Institute it is necessary to file copies of same, but in this case it is not just a mere ‘deposit’, since as it will be reviewed in the 25 May an employer own a copyrighted work made by an following questions, together with the samples of the work there are other employee? documents and information has to file to obtain the corresponding registra- For an employer to be the owner of the economic copyrights of a work made tion and in this case the filing of the work does not have a purpose to form by an employee, it is necessary that an employment agreement between part of a library or a collection of works but to have evidence in a public them exists, which must include a provision stipulating that all economic registry about the existence of the work in case evidence of this fact would rights over artistic or intellectual works created by the employee during his be required at any time by the author or copyright owner. or her work will vest in the employer. In accordance with Federal Copyright Law, if an employment agree- 18 What are the consequences for failure to make a copyright ment does not include the provision mentioned in former paragraph it deposit? shall be presumed that the economic rights are shared equally between the As indicated in the previous question, a deposit of works is not contem- employer and the employee. plated in Mexican law. In the absence of an individual employment agreement executed in writing, the economic rights belong to the employee. 19 Is there a system for copyright registration? Yes. Although not mandatory, it is highly recommended. The National 26 May a hiring party own a copyrighted work made by an Copyright Institute is the Mexican authority in charge of the Copyright independent contractor? Public Registry. The registration procedure will be described in the follow- Yes. A natural person or legal entity may enter into a ‘work for hire’ contract ing questions. with an author. In this case, the natural person or the legal entity shall enjoy the ownership of the economic copyrights therein for the duration allowed 20 Is copyright registration mandatory? by law, and the rights relating to the disclosure and integrity of the work Mexico follows the international trend of copyright protection. The Berne and the making of collections involving this type of creation shall accrue Convention for the Protection of Artistic and Literary Works is in force in to him or her. our country and the provisions of this international treaty are incorporated The person who takes part in the making of the work against remu- into our national legislation. Therefore, artistic or literary works are pro- neration shall have the right to the express mention of his or her status as tected at the time they are fixed into a material support and a copyright reg- author or performer of the part or parts in the creation of which he or she istration, in theory, is not necessary to achieve copyright protection. has been involved. According to Mexican law and practice a ‘work for hire’ relationship is 21 How do you apply for a copyright registration? different than an assignment. In the first, there is a production of a work by virtue of a commission by the so-called producer to the author, when in the To obtain a copyright registration from the National Copyright Institute, it second an author develops a work and transfers the economic copyrights to is necessary to submit an application form duly filled out with information another party for a limited time (see question 28). about the author, the copyright owner and a brief description of the work. Together with the application, it is necessary to attach two copies of the 27 May a copyrighted work be co-owned? work and the bank receipt showing the payment of the government fees charged by the National Copyright Institute. If the copyright registration Yes, it is possible that a copyright work be co-owned either by natural per- is handled through an attorney, one original copy of a power of attorney sons or entities under a co-ownership agreement. must be filed. If the work is registered on behalf of an individual or a com- According to article 81 of the Federal Copyright Law, unless otherwise pany different from the author, it is necessary to file originals of documents agreed, the copyright in a work with music and words shall belong in equal showing how the copyright owner acquired the ownership of the economic shares to the author of the literary part and to the composer of the musical copyrights from the author. part. Each may freely exercise the rights in the part attributable to him or her or in the whole work, and in the latter case, shall unmistakably notify the other co-author, mentioning that co-author’s name on the publication, and in addition shall pay the co-author the share to which he or she is entitled when the rights are exercised for profit-making purposes. www.gettingthedealthrough.com 69

28 May rights be transferred? 33 Can documents evidencing transfers and other transactions Economic rights can be subject to transfer or licence. Taking this into con- be recorded with a government agency? sideration, a third party either an individual or a company different from The registration of a copyright transfer before the National Copyright the author, can be the owner of the economic rights over a work only if the Institute is necessary for the transfer of rights to produce legal effects author had transferred such rights by executing a formal assignment docu- against third parties. The National Copyright Institute applies Mexican law ment complying with applicable requirements or if the author recognises when analysing the application for the registration of a copyright transfer that the work was made under a work-for-hire relationship (see question and its corresponding agreement. In this regard, the transfer agreement 26), or through and employer-employee relationship (see question 25). needs to comply with the provisions of the Federal Copyright Law. For a transfer of the economic rights to be enforceable in Mexico through an assignment agreement, the agreement must be in writing, it Duration of copyright must contain a provision reflecting the consideration paid to the author and 34 When does copyright protection begin? it must have a clause to stipulate the duration of the copyright transfer. As a general rule, the transfers of copyrights have a limited duration. Artistic or literary works are protected from the point of fixation of the work Once the term has expired, the rights transferred are deemed to revert auto- and copyright registration, however, in theory, this is not strictly necessary matically to the author. The maximum duration for a transfer of copyrights to achieve copyright protection. Nevertheless, under Mexican practices, the is 15 years as of the date of execution of the assignment agreement. This registration of a work before the National Copyright Institute is an action term may only be extended if there are special circumstances justifying an necessary to support the existence of the work and the ownership of the extension, such as the nature of the work and the investment in the develop- economic copyrights on behalf of the copyright owner. ment and production of the work. If an agreement does not have a specific disposition providing for the duration of the transfer by operation of law the 35 How long does copyright protection last? duration of the transfer is for five years as of the execution of the agreement. Moral copyrights belong to the author perpetually (see question 14) and This general rule has, however, two important exceptions for literary economic copyrights are in force, as a general rule, for the life of the author works and software. Pursuant to article 43 and 103 of the Federal Copyright plus 100 years. When a copyright work belongs to two or more co-authors, Law, the transfer of economic rights for them is not limited in time. the 100 years shall be counted as from the death of the last co-author.

29 May rights be licensed? 36 Does copyright duration depend on when a particular work Economic rights can be subject to exclusive or non-exclusive licence. The was created or published? licence will be validly enforceable in Mexico if it is done through written Copyright protection starts at the moment a work has been fixed in a mate- agreement and if the agreement contains a provision reflecting the consid- rial form. As mentioned in question 35, as a general rule, the economic eration paid to the author. copyrights are in force for the life of the author plus 100 years. However, Concerning the minimum clauses and formalities for a copyright when the author is not identified as in anonymous or pseudonymous works licence agreement to be valid in Mexico, the following must be observed: and also for posthumous works, the duration of copyright protection does • the agreement must be in writing; depend on when the work was published on the basis of 100 years from the • it must have a clause to indicate whether the licence is exclusive or disclosure or publication of the work. non-exclusive; • it must establish the payment of an economic consideration or royalty 37 Do terms of copyright have to be renewed? How? by the licensee to the licensor for the granting of the licence; and Copyrights in Mexico do not need to be renewed. • it must have a provision regarding the duration of the licence. 38 Has your jurisdiction extended the term of copyright 30 Are there compulsory licences? What are they? protection? According to article 147 of the Federal Copyright Law, there is compulsory The term of copyright protection in Mexico has been extended many times. licence in Mexico to publish or translate a literary or artistic work due to Pursuant to the last amendment of the Federal Copyright Law on 23 July public interest for the advancement of science and national culture and 2003, the economic copyrights protection term has been extended from 75 education. When it is not possible to obtain the authorisation of the owner years to 100 years after author’s death, as described in question 35. of the corresponding economic copyrights, the federal government may, through the Secretariat of Culture and either ex officio or at the request of a Copyright infringement and remedies party, license the publication or translation of the work through a payment of compensatory remuneration. 39 What constitutes copyright infringement? Copyright infringements are divided into two categories. In the first cat- 31 Are licences administered by performing rights societies? egory are copyright infringements that contravene the regulations estab- How? lished in the Federal Copyright Law. In the second category are trade-related Collective management organisations in Mexico have the main purpose infringements that occur when there is a violation in a trade or commercial of managing copyrights and neighbouring rights collectively on behalf of scale, mainly to the economic copyrights, and that by nature require they their members, protect national or foreign authors and owners of neigh- require highly specialised treatment. Copyright infringements, due to their bouring rights and to collect and deliver to them the royalties derived eminently administrative nature, are attended to by the National Copyright from the use of their works or performances. It is important to note that Institute. Trade-related infringements will be attended to by the Mexican pursuant to the Federal Copyright Law, authors and performers have the Institute of Industrial Property. non-waivable remuneration right to collect royalties for the public use and communication of their works or performances. Collective management 40 Does secondary liability exist for indirect copyright organisations may grant licences for the use of works or performances to infringement? What actions incur such liability? third parties, provided that their members have granted the right to per- In Mexico, the Federal Copyright Law does not foresee secondary liabil- form this activity to them. ity for indirect copyright infringement. However, article 231 of the Federal Copyright Law establishes that trade-related infringements are constituted 32 Is there any provision for the termination of transfers of by conduct carried out in order to obtain direct or indirect profit. Activity rights? that results in an advantage or additional attraction to the main activity The transfers of economic copyrights are subject to a term in what concerns of the operator in a commercial establishment is considered to have an to the duration of the transfer. Once the term has expired, the rights are indirect profit purpose. deemed to revert to the author automatically (see question 28). 41 What remedies are available against a copyright infringer? Remedies against a copyright infringer are also divided into two categories. • Copyright infringements are penalised by the National Copyright Institute. The Federal Copyright Law establishes a fine from 5,000 up

to 15,000 times the minimum daily wage in Mexico City. An additional fine of up to 500 times the minimum daily wage will be applied for Update and trends every day that the infringement persists. • The trade-related infringements are punished by the Mexican Institute By an amendment to the Federal Copyright Law made at the beginning of 2016, the fixation of any work or element protected by of Industrial Property with a fine from 500 up to 10,000 times the mini- neighbouring rights shall be considered as a copyright infringement. mum daily wage of Mexico City. An additional fine of up to 500 times Fixation was not formerly expressly considered as a copyright viola- the minimum daily wage will be applied for every day that the infringe- tion per se. ment persists. A bill is in discussion at Congress to amend the articles regarding performing rights organisations, to empower them to pursue 42 Is there a time limit for seeking remedies? copyright infringements more efficiently and with fewer formalities and shorter procedural times. Yes. An infringement action has to be filed within five years of knowledge The Beijing Treaty on Audio-visual Performances is still in of the infringement or the time that it ceased if, due to the nature of the the process of approval by the Mexican Senate. Once approved, it illegal conduct, it is repetitive or it extends over the time limit. In the case will return to the executive branch for its publication in the Official of a criminal action, the term to initiate proceedings is three to five years, Gazette of the Federation to become part of the intellectual property depending on the type of violation committed by the offender. Regarding legal system of Mexico. a civil action to claim damages for a copyright violation, it has to be filed Finally, the Trans-Pacific Partnership Agreement and its cor- within two years of the date the infringement occurred. responding chapter about intellectual property rights is under review by the Mexican Senate for its ratification. 43 Are monetary damages available for copyright infringement? Yes, the Federal Copyright Law establishes the possibility of seeking monetary damages. In no case should the indemnification of economic or moral 47 How may copyright infringement be prevented? damages be less than 40 per cent of the sale price of the product or service It is advisable to implement the following: upon which the infringement was declared. Monetary damages should be • use of a copyright notice as is foreseen in the Federal Copyright Law claimed through a civil law action. (see question 15); • obtaining a copyright registration for the work; 44 Can attorneys’ fees and costs be claimed in an action for • implementation of technological protection measures for digital works; copyright infringement? • monitoring the market to try to find illegitimate copies of works; and Yes, both the attorneys’ fees and costs can be claimed. However, such claim • remittance of a cease and desist letter to the alleged infringer, pointing should also be sought through a civil law action separately from the copy- out the existence of protection and copyright registration regarding the right infringement procedure. allegedly infringed work.

45 Are there criminal copyright provisions? What are they? Relationship to foreign rights Yes, Chapter 26 of the Federal Criminal Code contains a catalogue of con- 48 Which international copyright conventions does your country duct considered copyright offences. This catalogue also establishes the belong to? penalties applicable to the offender, which can be imprisonment from six Mexico is a member of: months to three years and fines from 300 to 30,000 times the minimum • the Literary and Artistic Property Convention (the Buenos daily wage in Mexico City, which are imposed based on the kind of viola- Aires Convention); tion and the circumstances of the case. In general terms a copyright offence • the Inter-American Convention on the Rights of the Author in Literary, implies the unauthorised and wilful use, storage, marketing, distribution Scientific and Artistic Works; or communication of a copyrighted work, with an aim to make a direct or • the Berne Convention for the Protection of Literary and Artistic Works. indirect profit by the offender. There are also other forms of conduct in the • the Universal Copyright Convention; field of the copyright and neighbouring rights to be considered as a criminal • the Rome Convention for the Protection of Performers, Producers of offences, such as the use without authorisation of performances, the use of Phonograms and Broadcasting Organizations; mechanisms to decode satellite signals with copyrighted contents and in • the Geneva Convention for the Protection of Producers of Phonograms the field of moral rights, the wilful substitution of the name of an author for Against Unauthorized Duplication of Their Phonograms; a published work. • the Brussels Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms; 46 Are there any specific liabilities, remedies or defences for • the Trade-related aspects of Intellectual Property Rights; online copyright infringement? • the WIPO Copyright Treaty (WCT); No, they are the same for all forms of copyright infringement. • the WIPO Performances and Phonograms Treaty (WPPT); • the Treaty on the International Registration of Audiovisual Works;

Carlos Trujillo [email protected] Karla Alatriste [email protected]

Hamburgo 260, Col. Juarez Tel: +52 55 5533 5060 ext. 156 06600 Mexico City Fax: +52 55 5208 8387 Mexico www.uhthoff.com.mx

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• the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled; and • various bilateral copyright treaties.

49 What obligations are imposed by your country’s membership of international copyright conventions? The most important obligation, mainly derived from the Berne Convention for the Protection of Artistic and Literary Works, is the recognition of an automatic copyright protection through the fixation of works and without having to comply with additional formalities for this purpose. A regime of limitations and exceptions to the exercise of the copyright is also implemented, based on the three-step rule foreseen in the Berne Convention. On the other hand, our copyright legal system by virtue of the commitments in the international conventions adopted by Mexico provides for national treatment for authors of other countries, who are granted with the same level of protection as if they were Mexican citizens. Artists, performers and producers of works are afforded protective rights over their collaborations and materials pursuant to the provisions of the different treaties in matters of the neighbouring rights Mexico is a party to. Based on the WIPO Treaties (WCT and WPPT) Mexico has an obligation to protect authors and works which are in use or whose distribution, marketing or communication is made over the internet or through the use of digital formats and to implement the adoption of adequate anti-circumvention measures.

Nigeria

Emmanuel Ekpenyong, Oluwole Awe and Chamba Unongo Fred-Young & Evans

Legislation and enforcement Subject matter and scope of copyright 1 What is the relevant legislation? 6 What types of works are copyrightable? The relevant legislation regulating copyright in Nigeria is the Copyright Literary works, musical works, artistic works, cinematograph films, sound Act, Cap C28, Laws of the Federation of Nigeria, 2004 (the Act). recordings and broadcasts.

2 Who enforces it? 7 What types of rights are covered by copyright? Copyright may be enforced by: The owner has exclusive right over his or her work; as such, it cannot be • a person whose copyright has been infringed upon; reproduced in any material form, published, performed in public, made in • a person whose copy of work is imported into Nigeria without the any cinematograph film form or record of the work, distributed to the pub- authorisation of its owner; lic as commercial copies by way of rental, lease, hire or loan, broadcast or • a person whose work is distributed by way of trade, offer for sale, hire communicated to the public, or adapted or dealt with in any way without or for a purpose which is prejudicial to him or her; the authorisation of its owner. • a person whose work is used in a place of public entertainment to con- The owner has the right to enter into an agreement with third parties stitute an infringement of the work or performed for the purpose of for the use of his or her work. The owner may also transmit his or her copy- trade or business where a copyright exists. right by assignment, testamentary disposition or by operation of law. The authors of graphic works have a concurrent right to a share in the proceeds 3 Are there any specific provisions of your copyright laws that of sale of their work. address the digital exploitation of works? Are there separate The owner is entitled to compensation for use of his or her work statutory provisions that do so? with or without authorisation and has a right to commence an action for infringement of his or her work. Section 7 of the Act addresses direct and indirect reproduction, broadcasting or communication to the public of the whole or a substantial part of 8 What may not be protected by copyright? a sound recording either in its original form or in any form recognisably A literary work shall not be eligible for copyright unless sufficient effort has derived from the original. been expended on the work to give it an original character. In the same Section 8 of the Act addresses the recording, rebroadcasting or com- vein, an artistic work shall not be eligible for copyright if at the time of munication to the public of the whole or a substantial part of a television making the work, the author intended it to be used as a model for other broadcast recording either in its original form or in any form recognisably works or for it to be multiplied by any industrial process. derived from the original. Section 9 of the Act addresses copyright in any literary, musical or 9 Do the doctrines of ‘fair use’ or ‘fair dealing’ exist? artistic work incorporated in a cinematograph film. Yes, ‘fair use’ and ‘fair dealing’ exist under the Act for: 4 Do your copyright laws have extraterritorial application to • purposes of research, private use, criticism or review or the reporting deal with foreign-owned or foreign-operated websites that of current events, by way of parody, pastiche or caricature; infringe copyright? • the reproduction and distribution of copies of an artistic or broadcast work is situated in a place where it can be viewed by the public; Under section 41 of the Act, copyright of a Nigerian owner may apply to • the inclusion in a collection of literary or musical work that includes deal with foreign-owned or foreign-operated websites in countries that not more than two excerpts from the original work; are a party to a treaty or other international agreement to which Nigeria • the reproduction of a work that is designed for educational use upon is a member. acknowledgement of the author; • the use of the work in an approved educational institution; Agency • the reading in public or broadcast of an extract from a published liter- 5 Is there a centralised copyright agency? What does this ary work that is accompanied by acknowledgement of the author pro- agency do? vided that such reading and broadcast is not for commercial purpose; • the use of the work by or under the direction of the government, public The Nigerian Copyright Commission (the Commission) is the centralised libraries, non-commercial documentation centres, scientific or other copyright agency in Nigeria. institution as may be prescribed in the interest of the public and no The Commission is responsible for all matters concerning copyright revenue is derived and no admission fee charged; as provided in the Act including monitoring and supervision of Nigeria’s • the reproduction of a work under the broadcasting authority where the position in relation to international conventions and advising the govern- reproduction is for a lawful broadcast; ment accordingly. • the use of the work for the purpose of a judicial proceeding; The Commission also advises the government on the conditions for • reproduction for the purpose of research or private study of an unpub- entering into bilateral and multilateral agreements between Nigeria and lished literary or musical work kept in a library, museum or other insti- any other country, informs the public on matters related to copyright, tutions to which the public has access; and maintains an effective database on authors and their works, and is respon- • the reproduction of a published work for the exclusive use of the blind sible for such other matters relating to copyright as the Minister may from and the promotion of the welfare of other disabled persons. time to time direct.

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10 What are the standards used in determining whether a 22 What are the fees to apply for a copyright registration? particular use is fair? Registration fees, fees for issuance of a certified true copy certificate, fees The test is whether the reproduction of the work is engaged for a non- for issuance of a certified true copy form, fees for correction of changes commercial enterprise in the interest of the general public. in submitted data and fees for issuance of a certified true copy of a work.

11 Are architectural works protected by copyright? How? 23 What are the consequences for failure to register a Yes. Copyright on architectural works includes the exclusive right to con- copyrighted work? trol the erection of any building that reproduces the whole or a substantial None. part of the work either in its original form or any form recognisably derived from the original. The right does not extend to the right to control the Ownership and transfer reconstruction in the same style as the original of a building to which the 24 Who is the owner of a copyrighted work? copyright relates. The owner of a copyrighted work is: 12 Are performance rights covered by copyright? How? • in the case of an artistic work, the person who made the painting, drawings, etchings, lithographs, woodcuts, engraving and prints, A performer shall have rights over his or her performing, recording, broad- maps, plans and diagrams, works of sculpture, photographs not com- casting, reproduction in any material or adaptation of a performance for a prised in a cinematograph film; works of architecture in the form of period of 50 years from the year the performance first took place. building models; and works of artistic craftsmanship and also pictorial Performance includes dramatic performance such as dance and woven tissues and articles of applied handicraft and industrial art; mime, musical performance and reading or recitation of a literary work or • in the case of cinematograph film, the person for whom the film any similar presentation. was made; • in the case of a literary or musical work, the person who created 13 Are other ‘neighbouring rights’ recognised? How? the work; Yes. Expression of folklores – which is a tradition-based creation of a group • in the case of a photographic work, the person who took the photograph; or individual reflecting the expectation of the community as an adequate • in the case of a broadcast work, the person who transmitted the broad- expression of its cultural and social identity, standards and values – is pro- cast or a person for whom the transmission of the work was under- tected against reproduction, communication, broadcast and distribution, taken; and adaptation, translations and other transformations when used for com- • in the case of a sound recording, the person for whom the sound mercial purposes or outside their traditional and customary context. recording was made.

14 Are moral rights recognised? 25 May an employer own a copyrighted work made by an Under section 19 of the Act, an infringement of copyright is actionable as a employee? breach of statutory duty owed to the person entitled to the right. Except where there is an express agreement in writing, the Act does not envisage that an employer may own a copyrighted work of its employees. Copyright formalities 15 Is there a requirement of copyright notice? 26 May a hiring party own a copyrighted work made by an independent contractor? There is no requirement for a copyright notice in Nigeria. Once sufficient effort has been expended in making a literary, musical, artistic, cinemato- The hiring party is the automatic owner of a copyrighted work made by an graph, sound recording or broadcast work to give it an original character, it independent contractor by virtue of the hiring relationship. is protected under the Act. 27 May a copyrighted work be co-owned? 16 What are the consequences for failure to display a copyright A copyrighted work may be co-owned by persons or entities. notice? There is no consequence for failure to display a copyright notice. 28 May rights be transferred? Copyrights may be transferred by assignment, testamentary disposition or 17 Is there a requirement of copyright deposit? operation of law as a moveable property. No. 29 May rights be licensed? 18 What are the consequences for failure to make a copyright Yes. Exclusive licence of copyrights must be in writing while non-exclusive deposit? licence may be written or oral or inferred from conduct. None. 30 Are there compulsory licences? What are they? 19 Is there a system for copyright registration? For the purposes of teaching, scholarship or research, a citizen in Nigeria The Nigerian Copyright eRegistration System (NCeRS) provides a plat- or an individual domiciled in Nigeria may apply to the Commission for a form for owners of copyright who have acquired rights over their work to licence to produce and publish a translation of a literary or dramatic work register it with the Commission. that has been published.

20 Is copyright registration mandatory? 31 Are licences administered by performing rights societies? How? No. Performing rights societies such as the Copyright Society of Nigeria 21 How do you apply for a copyright registration? (COSON) issue licences to copyright owners. A licence may be obtained by submission of an application to that Registration of copyright may be effected by submission of two copies of effect at COSON’s office. the work at the Commission’s office in respective states of Nigeria alongside a completed registration form and evidence of payment of the pre- 32 Is there any provision for the termination of transfers of scribed fee. rights? Registration may also be effected by filling in the online form and uploading the work on the relevant portal. There is no provision for termination of transfer of rights. Nevertheless vitiating elements such as fraud and misrepresentation may repudiate a contract to transfer copyrights.

33 Can documents evidencing transfers and other transactions be recorded with a government agency? Update and trends Yes. This can be effected by applying to the Commission to that effect with Advancement in technology and social media platforms such as proof of such transfer or transaction. Facebook and YouTube have made it easier for the copyrights on works to be infringed indiscriminately. People go online daily to Duration of copyright download and use a substantive part of the works of others for their private and sometimes public use without the consent or even 34 When does copyright protection begin? knowledge of its owner. From the date the copyright work was given an original character. Telecommunication companies hold and use music without the authorisation of their owners. Online technology has increased 35 How long does copyright protection last? piracy and the activities of pirates with an adverse effect on the structure, framework and economic benefits on Nigeria’s crea- Copyright protection for literary, artistic or musical work lasts throughout tive industry. the lifetime of the owner and 70 years after his or her death, while copy- This trend is carried out with such propensity nowadays that it right protection for films, sounds recordings and performance is 50 years makes a complete mockery of the protection of copyrights under the from the time the work was first published. Act. It is impossible for owners of works to protect their works, trace infringement of their works or prove infringement of their works 36 Does copyright duration depend on when a particular work over the internet. The Commission is almost helpless in carrying out was created or published? its responsibilities online because the Act did not envisage the mas- sive influx of works being shared online. See question 35. Therefore the following bills before the National Assembly represent a welcome development: 37 Do terms of copyright have to be renewed? How? • a Bill for an Act to Amend The Copyright Act. Cap. C28, LFN 2004 for the purpose of making provision for technological No. Once the copyright protection expires, third parties are allowed free measures in protecting copyright and for other related use of the work. matters; and • a Bill for an Act to Amend the Copyright Act. Cap. C28, LFN 38 Has your jurisdiction extended the term of copyright 2004 to provide for better protection of copyright in the digital protection? environment, 2012. Where the Minister is satisfied that a country that is a party to a treaty or It is hoped with these developments the Nigerian intellectual prop- other international agreement to which Nigeria is a party provides for pro- erty industry will become more stable and copyrights over works will tection of copyright of works under the Act, he or she may by an order in be better protected under the new copyright regime. the Federal Gazette extend the application of the Act to individuals who are citizens or domiciled in that country, bodies corporate established by the law of that country, works, sound recordings and broadcast first published 42 Is there a time limit for seeking remedies? in that country and broadcast and sound recordings made in that country. There is no time limit to seek remedies against an infringer of copyright. Copyright infringement and remedies Nevertheless, suits against the Commission for acts of neglect of its duties under the Act must be commence within 12 months from the date the 39 What constitutes copyright infringement? acts occurred. Where a person without a licence or authorisation of the owner of Before commencing an action against the Commission, three months’ the copyright: written notice of intention to commence the action must be served on • does or causes other person to act on the owner’s copyright; the Commission. • imports or causes to be imported into Nigeria a copy of the work that infringes a copyright; 43 Are monetary damages available for copyright infringement? • exhibits in public any article in respect of which copyright is infringed; Yes, monetary damages are available as compensation for copy- • distributes by way of trade, or offers for sale or hire, a work subject to right infringement. the copyright of the owner; • makes or has in his or her possession plates, master tapes, machines or 44 Can attorneys’ fees and costs be claimed in an action for equipment for the purpose of making infringed copies of the work; copyright infringement? • permits a place of public entertainment or business to be used for As a general rule, attorneys’ fees and costs may be claimed in an action for a performance in public where such a performance constitutes an copyright infringement as special damages. infringement of the work or performance; or • causes to be performed for the purposes of trade or business any work 45 Are there criminal copyright provisions? What are they? in which a copyright subsists. A infringer of copyright is criminally liable for infringement of 40 Does secondary liability exist for indirect copyright the copyright. infringement? What actions incur such liability? It is an offence for a body corporate to infringe a copyright. Any director, manager, secretary or other officer of the body corporate who connived Under the doctrine of agency, a principal is vicariously liable for the to commit the act of infringement is guilty of an offence and liable to be infringement committed by his or her agent if the infringement was proceeded against. induced by the principal or committed in the ordinary course of the agent’s Both civil and criminal proceedings may be commenced simultane- business with the principal. ously against the infringer. In the same vein, a person who causes another person to infringe a copyright is also liable to the owner for the infringement because he or she 46 Are there any specific liabilities, remedies or defences for contributed to the act of infringement. online copyright infringement? 41 What remedies are available against a copyright infringer? No. The owner, assignee or an exclusive licensee of copyright may commence 47 How may copyright infringement be prevented? an action for infringement of the copyright and shall be entitled to an award of damages, injunction, accounts and any other remedies the court Copyright infringement may be prevented if persons who infringed may deem fit. copyright are prosecuted and made to pay compensation for their acts of infringement. Owners of copyright must also be vigilant to ensure that their works are not infringed.

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Relationship to foreign rights 49 What obligations are imposed by your country’s membership of international copyright conventions? 48 Which international copyright conventions does your country belong to? Nigeria has signed the above-mentioned conventions, but they are yet to be domesticated to enable copyright owners to benefit from and enjoy the • The Berne Convention of 1886 for the Protection of Literary and opportunities created by the conventions. Artistic Works; • the Universal Copyright Convention of 1952 for the Protection of the Right of Authors and Copyright Owners; • the Rome Convention for the Protection of Performers, Producers of Photograms and Broadcasting Organization of 1961; • the World Intellectual Property Organization Copyright Treaty; and • the Trade-Related Aspects of Intellectual Property Rights.

Emmanuel Ekpenyong [email protected] Oluwole Awe [email protected] Chamba Unongo [email protected]

Suite 217A, Jinifa Plaza, Plot 1014 Tel: +234 8034912096 Samuel Adesoji Ademulegun Street [email protected] Central Business District, Federal Capital Territory www.fredyoungandevans.com Abuja Nigeria

Poland

Dorota Rzążewska JWP Patent & Trademark Attorneys

Legislation and enforcement collective administration organisation shall be authorised to administer and protect the rights within the fields of exploitation covered by collective 1 What is the relevant legislation? administration, and that it shall be authorised within this scope to partici- In Poland the basic legislation referring to copyright is the Act of 4 February pate in judicial proceedings. Within the scope of its activities, the collec- 1994 on Copyright and Neighbouring Rights (the Copyright Act), which tive administration organisation may demand the provision of information defines the subject matter of copyright protection, its scope and instruments and access to the documents necessary to determine the remuneration and of protection against infringements. The above-mentioned Act replaced fees claimed. the Act of 10 July 1952 on Copyright that had formerly been in force. Subject matter and scope of copyright 2 Who enforces it? 6 What types of works are copyrightable? In general, the author enforces the rights deriving from the above- mentioned Act. It is the author who decides when, with what kind of claims The subject matter of copyright shall be any and all manifestations of crea- and in what scope he or she will enforce his or her rights. tive activity of an individual nature, established in any form, irrespective of However, in addition to the author, other entities may enforce the its value, designation or manner of expression. It means that work of a non- rights resulting from the Copyright Act. In this respect, article 67(4) pro- material interest that fulfils the following requirements jointly is protected vides the basis for claiming the protection of an author’s economic rights on the grounds of the Copyright Act. The work is: under an exclusive licence, provided that the claim refers to the use of a • the result of the work of the author; work covered by an exclusive licence agreement, and the agreement does • it possesses the nature of creative activity; and not contain exclusions as regards the protection sought by a licensor. The • it possesses an individual nature. organisations for the collective administration of copyright or neighbouring rights may claim remuneration and fees due to the right holders. The result of a creative work shall be manifested and it shall constitute a creative act. The prerequisite of a creative activity is sometimes defined as 3 Are there any specific provisions of your copyright laws that the ‘originality’ of the work within the meaning of subjective understand- address the digital exploitation of works? Are there separate ing, and occurs when a subjectively new product of intellect is created. On statutory provisions that do so? the other hand, the prerequisite of an individual nature is fulfilled if the work may be regarded as unique and is not the result of a routine work. No, the Copyright Act that is currently in force does not contain any spe- The work shall be copyrighted from the point it is established, even cific provisions directly addressing the digital exploitation of works. though its form is incomplete. Therefore, all works are subject to copyright protection. 4 Do your copyright laws have extraterritorial application to However, the Act defines a list of works that are subject to copyright deal with foreign-owned or foreign-operated websites that protection. In particular, it comprises the following works: infringe copyright? • works expressed in words, mathematical symbols and graphic signs No, the Copyright Act that is currently in force does not contain any spe- (literary, journalistic, scientific and cartographic works, and computer cific provisions referring to foreign-owned or foreign-operated websites programs); that infringe copyright. • artistic works; As regards websites infringing third parties’ copyrights, the holders of • photographic works; copyrights may seek protection at court on the basis of the provisions of the • stringed musical instruments; Copyright Act, in accordance with general procedural rules. • industrial design works; • architectural works, architectural and town planning works, and town Agency planning works; • musical works, textual and musical works; 5 Is there a centralised copyright agency? What does this • stage works, stage and musical works, choreography and pantomime agency do? works; and There is no centralised copyright agency in Poland. However, there are • audiovisual (including film) works. several organisations of collective administration of copyright or neighbouring rights that act as associations, for example: 7 What types of rights are covered by copyright? • ZAIKS – the largest Polish organisation of collective administration Under the Copyright Act, two types of copyright are protected: the author’s grouping authors; moral rights and his or her economic rights. • SAWP – acts on behalf of artistic performers; The moral rights protect the link between the author and his or her • ZPAV – acts on behalf of producers of phonograms and video- work, which is unlimited in time and independent of any waiver or transfer, grams; and and, in particular, the right: • Polska Książka – acts on behalf of publishers and authors. • to be an author of the work; • to sign the work with the author’s name or pseudonym, or to make it The responsibility of the organisations of collective administration of available to the public anonymously; copyrights is the collective management and protection of copyrights • to ensure that the contents and form of the author’s work are inviolable or neighbouring rights entrusted to them and the exercise of the powers and properly used; resulting from the Copyright Act. Under the Act, it is presumed that the www.gettingthedealthrough.com 77

• to decide about making the work available to the public for the first It is permissable to use already disseminated works for the benefit of time; and the disabled, provided that such use is directly related to their disability, • to control the manner in which the work is used. is not intended for profit purposes and its scope results from the nature of disability. The author or any other entity who purchased the author’s economic rights It shall be permitted to disseminate through a group antenna or cable on the basis of a contract for the transfer thereof shall be the owner of the network the works broadcast by radio and television, provided that they author’s economic rights. The disposer of the author’s economic rights are designed for a specific group of receivers (up to 50 households), and shall have an exclusive right to: the recipients shall be living in either a single apartment building or sin- • use the work; gle family houses. It is permissible to receive broadcast works by means of • dispose of the work; and devices used for receiving radio or television programmes provided that • receive remuneration for the use of the work. this is not connected with the obtaining of material benefits. It shall be allowed to disseminate published visual art and photo- 8 What may not be protected by copyright? graphic works through encyclopedias and atlases, if there are difficult obstacles to overcome in order to obtain the author’s consent. In such situ- Copyright shall not cover: ation, the author has a right to remuneration. • legislative instruments and their official drafts; It shall be allowed to disseminate the works permanently exhibited on • officialocuments, d materials, logos and symbols; commonly accessible public roads, streets, squares or gardens, although • published patent specifications and industrial design specifications; not for the same use. • simple press information; and Radio and television organisations may record the works for their own • works that do not fulfil the prerequisites referred to in question 6. broadcasting purposes. These recordings shall be destroyed within one month from the day of expiration of a right to broadcast the work. 9 Do the doctrines of ‘fair use’ or ‘fair dealing’ exist? It is permitted to use political speeches, speeches delivered at public In Polish copyright law there is no doctrine of ‘fair use’ or of ‘fair dealing’. hearings, fragments of public speeches, lectures and sermons, within the However, there exist provisions defining the permissible use of protected limits justified by the purpose of the information. The regulation does not works. Under these provisions, a work already disseminated for personal provide for the right to publish the collections of works of this type. use may be used free of charge without the permission of the author. This For didactic and research purposes, it is permitted to use disseminated provision shall not allow the building of constructions according to other minor works or fragments of major works in handbooks, compiled summa- authors’ architectural works as well as architectural and town planning ries and anthologies. The author has a right to remuneration. works, or the use of electronic databases possessing the features of a work It is permitted to use the works for parody, pastiche, caricature pur- unless this applies to the user’s own scientific use and is not connected with poses, in the scope justified by the rights related to these types of works. any profit-gaining purposes. It is permitted to incorporate unintentionally the work into another The Polish regulations define permissible personal use in a very casu- work, provided that the incorporated work is insignificant for the work into istic manner, providing for limitation of the author’s monopoly in a more which it has been incorporated. or less detailed manner. This, in consequence, makes it difficult to provide It is permitted to use works for the purpose of public safety as well a synthetic overview of related issues. as administrative, court or legislative purposes and for the purposes of However, the exploitation of works within the permissible use may be reports from these proceedings. divided into the following categories: It is permitted to use the works in connection with presentation or • The right to quote. It is permissible to quote in works constituting an repair of equipment. independent whole fragments of disseminated works and dissemi- Archives, educational and higher education institutions, research insti- nated visual art works, photographic works or minor works in full, in tutes conducting the activity referred to in the Act on Research Institutes, the scope justified by the purpose of quotation, such as explanation, research institutes of the Polish Academy of Science conducting the activ- dispute, critical or scientific analysis, teaching purposes or in the scope ity referred to in the Act on the Polish Academy of Science, libraries and justified by the rights related to these types of works. museums, as well as cultural institutions whose statutory purpose is to col- • The right to reprint. It is permissible to disseminate for informative lect, protect and disseminate the collections of film or phonographic her- purposes in the press, through radio or television: itage, as well as public radio and television organisations, may reproduce (i) information already disseminated, including: the published orphan works, and in case of lack of publication – the works (a) reports on current events; broadcast for the first time in the territory of the European Union or the (b) articles on current political, economic or religious issues, European Economic Area and make them available to the public in such unless it has been clearly stipulated that their further dissemi- a manner that anyone has access to them in a chosen place and time. The nation is prohibited; and detailed requirements concerning the permissible use of orphan works are (c) current comments made and photographs taken by reporters; laid down in Chapter 5 of the Act on Copyright and Neighbouring Rights. (i) short summaries of reports and articles referred to in (i)(a) and (b); Archives, educational and higher education institutions, research (iii) reviews of publications and disseminated works; and units within the meaning of the Act on the Rules for Financing Science, (iv) short summaries of disseminated works. and cultural institutions may, on the basis of a contract with an organisation of collective management of copyrights indicated by the Minister in In some cases, the author is entitled to remuneration. charge of culture matters and protection of national heritage, reproduce Educational and higher education institutions, research institutes con- the works not present in trade, published for the first time on the territory ducting activity referred to in the Act on Research Institutes, research insti- of the Republic of Poland before 24 May 1994 and make them available tutes of the Polish Academy of Science conducting the activity referred to the public in such a manner that anyone has access to them in a cho- to in the Act on the Polish Academy of Science, libraries, museums, and sen place and time. The detailed requirements concerning the permissible archives may: (1) lend, within their statutory purposes, copies of dissemi- use of works not present in trade are laid down in Chapter 6 of the Act on nated works; (2) reproduce works in their collections in order to complete, Copyright and Neighbouring Rights. preserve or protect them; and (3) provide access to collections for research The public exhibition of a copy of an artistic work (not connected with or cognitive purposes through IT system ends (terminals) located in these the obtaining of material benefits) shall be classified as permissible use. units, provided that these activities are not conducted for direct or indirect Permissible use also comprises the public performance of works during material benefit. various official ceremonies, including religious ones (provided that it is not Educational and higher education institutions and research units connected with any material benefit and is not for promotional, advertising may, for the purposes of illustrating the content provided for teaching or or election events). It shall be permissible to perform or play in public, with research purposes, use disseminated works in original and in translation, the use of equipment or carriers located at the same place as the public, and reproduce for this purpose disseminated minor works or fragments of disseminated works during school or academic events, provided that these major works. In case of public dissemination of works in such a manner activities are not conducted for direct or indirect material benefit and the that anyone has access to them in chosen place and time, the use men- artists performers and the persons reproducing the works do not receive tioned above is permitted only for limited groups of persons identified by remuneration. These provisions are not applicable for the use of works dur- the entities specified above, who learn, teach or conduct research. ing advertising, promotional and election events.

It shall be permissible to use a work such as a building structure, its 18 What are the consequences for failure to make a copyright drawing, plan or other assessment, for the purposes of reconstruction or deposit? repair of a building structure. Since there is no requirement of copyright deposit, failure to make it does not cause any negative consequences. 10 What are the standards used in determining whether a particular use is fair? 19 Is there a system for copyright registration? The scope of personal use comprises the use of single copies of works by Polish copyright law does not provide for any system of copy- a circle of people having personal relationships, and in particular any con- right registration. sanguinity, affinity or social relationship. As regards the interpretation of ‘social relationship’, it is assumed that it shall be defined as maintaining 20 Is copyright registration mandatory? social relations for some time at least. Within the scope of personal use it is permissible to use a disseminated Owing to the fact that there is no copyright registration under Polish law, work in all fields of exploitation and for any purpose except for a commer- registration is not mandatory to obtain copyright protection. However, it cial one. is advisable to obtain a statement prepared by a notary public referring to As a rule, the use of a work without the author’s consent cannot be of the work created for evidence purposes and in order to prove the priority earning character and shall be justified, for example, by explanation, criti- of the work. cal analysis, teaching or the rights governing a given kind of creative activity, for an informative purpose or justified by the fulfilment of a specified, 21 How do you apply for a copyright registration? significant public purpose. In order to obtain a copyright, it is not necessary to register the right referred to. However, it is advisable to register the work with one of the 11 Are architectural works protected by copyright? How? organisations of collective administration of copyright or neighbouring Architectural and town planning works are subject to copyright protection. rights. The benefits from the registration of the work are mainly financial; An architectural work may be not only in the form of a plan, drawing or however, such registration may also be helpful in an authorship dispute to design, but also in the form of models, constructed buildings and struc- prove the priority of the work. tures as well as designed interiors. Technical, functional and structural aspects of designed buildings are 22 What are the fees to apply for a copyright registration? not subject to copyright protection. Owing to the fact that there is no copyright registration under Polish law, there are no fees. However, organisations of collective administration may 12 Are performance rights covered by copyright? How? collect small fees for registration of the rights. Performance rights are covered by copyright in Poland. The right to the first dissemination of the work is one of the moral rights the author enjoys. 23 What are the consequences for failure to register a In addition to the above, in the case of making work available to the pub- copyrighted work? lic, the consent of the owner of the author’s economic rights to the work Owing to the fact that there is no copyright registration under Polish law, is required. there are no consequences for failure to register a copyrighted work. 13 Are other ‘neighbouring rights’ recognised? How? Ownership and transfer Neighbouring rights are a category of protected rights separate from copyrights. The following rights belong to the category of neighbouring rights: 24 Who is the owner of a copyrighted work? • rights in artistic performances including, inter alia, the actions of Generally, the author is the owner of a copyrighted work. It shall be pre- actors, reciters, conductors, instrumentalists, singers, dancers and sumed that the author is the person whose name has been indicated as the mimes, as well as other individuals who make a creative contribution author on copies of the work or whose authorship has been announced to to a performance; the public in any other manner in connection with the dissemination of • rights in phonograms or videograms shall be enjoyed by the producer the work. under whose name or business name such phonogram or videogram If there are co-authors to the work, they shall enjoy copyright jointly. was first made; The producer or publisher shall have the author’s economic rights in a • rights to programme broadcasts are owned by radio or television collective work and in particular the rights in encyclopaedias or periodical broadcasting organisations; and publications, and the authors shall have economic rights in their specific • the publisher who was the first to publish or otherwise disseminate a parts that may exist independently. It shall be presumed that the producer work for which the protection period has expired, and copies of which or publisher has the right to the title. have not been yet made public, shall enjoy the right to first editions If the employee is the author of a work that has been created within and scientific and critical editions. the scope of his or her duties resulting from the employment relationship, the employer is the owner of the author’s economic rights within the limits Protection of integrated circuit layouts is comprehensively regulated in the resulting from the purpose of the employment contract and the congruent Act on Industrial Property Law. intention of the parties, unless the Copyright Act or a contract of employment states otherwise. 14 Are moral rights recognised? Yes. See question 7. 25 May an employer own a copyrighted work made by an employee? Copyright formalities Under Polish law, as a rule and under statutory prerequisites, the employer 15 Is there a requirement of copyright notice? acquires author’s economic rights to the work created by the employee Under Polish copyright law there is no requirement of copyright notice. and becomes their owner. The prerequisite for the employer to acquire the author’s economic rights is that the employee creates the work within 16 What are the consequences for failure to display a copyright the scope of his or her duties resulting from the employment relationship, notice? and not, for example, while performing his or her employee duties. In this respect, the scope of activities entrusted to the employee is significant. The Due to the fact that there is no requirement of copyright notice, failure to author’s economic rights are acquired by the employer the moment he or display it does not cause any negative consequences. she accepts the work from the employee. The acquisition shall be within the limits resulting from the purpose of the employment contract and the 17 Is there a requirement of copyright deposit? congruent intention of the parties. In order to acquire the copyright in the Under Polish copyright law there is no requirement of copyright deposit. above-mentioned course, no additional agreement in writing is required. The provisions of the Copyright Act are not mandatory; therefore, if the parties to the contract agreed otherwise, the effect defined by the aforementioned Act may be excluded or amended by the will of the parties. In www.gettingthedealthrough.com 79

© Law Business Research 2016 POLAND JWP Patent & Trademark Attorneys the employment contract the parties may stipulate that the employer shall 31 Are licences administered by performing rights societies? acquire author’s economic rights in a wider or narrower scope than result- How? ing from the purpose of the employment contract and the congruent inten- Yes; by organisations for the collective administration of copyright and tion of the parties. The parties may also exclude the acquisition of author’s neighbouring right group authors, artistic performers, producers or radio economic rights to the works created by the employee within the scope of and television broadcasting organisations. Their objective is the collec- his or her duties resulting from the employment relationship, consequently tive administration and protection of copyright or neighbouring rights the author (employee) will be the owner of all the author’s economic rights. entrusted to them, and the exercise of the powers resulting from this Act. In such case, a separate agreement in this respect will be required in order The above-mentioned management includes: to transfer the author’s economic rights. • granting licences for the use of the work or artistic performance; • supervising the use of the work or artistic performance by entities 26 May a hiring party own a copyrighted work made by an other than the author or performer; independent contractor? • collecting royalties from the users of works or receivers of artistic per- The conclusion and performance of a civil contract whose effect may be formances; and the creation of a work does not result in an automatic transfer of author’s • transferring royalties to authors or authorised entities. economic rights to the work to the orderer. As a rule, the author shall be the owner of copyrights, and their possession by a different entity shall be 32 Is there any provision for the termination of transfers of clearly specified in writing. Therefore, if the author’s economic rights to a rights? work are to be owned by an entity different than the author, appropriate The author may renounce or terminate the contract because of his or her provisions in this respect shall be indicated expressis verbis in the contract. own fundamental interests, and if the work is made available to the public in an unsuitable form or with changes to which the author may rightfully 27 May a copyrighted work be co-owned? object. The author may renounce or terminate the contract within two If a work is created by several persons, only the persons who contributed to years from the acceptance of the work if the acquirer of the author’s eco- the creation of a work shall enjoy the status of a co-author. If a work is the nomic rights or the licensee who has undertaken to disseminate the work result of the creative activity of several persons, the co-authors shall enjoy does not start the dissemination within the agreed time limit or if there is copyrights jointly. Therefore, it shall be examined whether the contribu- no agreed time limit. tion of a person claiming to be a co-author is of a creative or only a tech- On the other hand, the ordering party may renounce the contract if the nical character. The persons whose contribution consists in only technical author has not delivered the work within the set time limit, or if the work is assistance do not enjoy the status of the author. defective and has not been corrected by the author, although he or she has It shall be presumed that the amounts of shares are equal, and each been requested to do so. co-author may claim the amounts of shares to be determined by the court on the basis of his or her contribution of creative work. However, in order to 33 Can documents evidencing transfers and other transactions exercise the copyright to a complete work, it is necessary to obtain the con- be recorded with a government agency? sent of all co-authors. In the case of the lack of such consent, each co-au- Under Polish law, no government agency recording documents evidencing thor may claim the amounts of shares to be determined by the court, which transfers or other transactions related to copyright has been established. takes into account the interest of all co-authors. Duration of copyright 28 May rights be transferred? 34 When does copyright protection begin? Under the Copyright Act, there are author’s moral rights and author’s economic rights to a work. The owner of the first type of rights shall be the The work shall enjoy copyright protection from the time it is established, author or the authors, and they are of a moral and non-transferable char- even though its form is incomplete. acter, whereas the second type of rights may devolve upon other persons through succession or by contract. 35 How long does copyright protection last? A contract for the transfer of the author’s economic rights shall be As a rule, the author’s economic rights shall expire after the lapse of 70 made in writing under pain of nullity. The contract referred to shall pro- years from the death of the author. In the case of joint works, the rights shall vide for the fields of exploitation of a work (ie, the scope of a right to use the expire 70 years from the death of the last surviving co-author. In the case work transferred to the acquirer). The contract may only cover the fields of of a work of unknown authorship, the author’s economic rights shall expire exploitation that are known at the moment of the conclusion thereof. The after the lapse of 70 years from the date of the first dissemination, and in contract referring to all works or all works of a specific type to be created by the case of a work with respect to which the author’s economic rights are, the same author in the future shall be null and void. However, according to under statutory law, enjoyed by a person other than the author, the author’s the revised Copyright Act, in some cases the right to remuneration cannot economic rights shall expire after the lapse of 70 years from the date of be waived or disposed. dissemination of the work or, if the work has not been disseminated, from the date of establishment thereof. If the work was disseminated in parts, in 29 May rights be licensed? a series, in fragments or inserts, the length of the period shall run for each In Poland, only the author’s economic rights may be licensed. The licence of them separately from the date of dissemination of each of the above- contract shall be in a written form; however, only exclusive licence con- mentioned parts. In the case of an audiovisual work, the author’s economic tracts shall be made in writing under pain of nullity. An indispensable part rights shall expire after the lapse of 70 years from the death of the last of of a licence contract is the provision regarding authorisation to use the the following: the main director, the author of the screenplay, the author work covering all fields of exploitation specified expressly therein. The of the dialogue and the composer of the music written for the audiovisual period and duration of the licence agreement, as well as the amount of work. In relation to a word and music work, if the word work and the music licence fees and the method of payment thereof, are the elements whose work were created particularly for the word and music work the author’s absence may be supplemented by appropriate legal regulations. economic rights expire after the lapse of 70 years from the death of the person who died later: either of the author of the word work or the composer 30 Are there compulsory licences? What are they? of the music work. The Copyright Act does not contain separate regulations referring to com- 36 Does copyright duration depend on when a particular work pulsory licences. In the event of abuse of the author’s monopoly, general was created or published? regulations on protection of competition shall be applied, in particular the regulations referring to the abuse of a dominant position. Yes; see question 35. Nonetheless, the above Act provides for a relatively long list of statutory licences. They are related to permissible public use and refer to the use 37 Do terms of copyright have to be renewed? How? of disseminated works without the right holder’s consent. See question 9. The 70-year time limit cannot be shortened or extended by any legal action.

38 Has your jurisdiction extended the term of copyright protection? Update and trends No; the term of copyright protection has not been extended under The revision of the Copyright Act introduces numerous changes as Polish law. regards the institution of permissible use. Moreover, it introduced new regulations concerning orphan works and the works that are not Copyright infringement and remedies available in trade, as well as the changes in the rules for calculating and paying the remuneration for lending copies of works by public 39 What constitutes copyright infringement? libraries. As a result of earlier amendment of regulations, the period An action consisting of encroaching upon the scope of an exploitation of protection for phonograms and artistic performances recorded on monopoly for a specific work shall constitute an infringement of the the phonograms was extended to 70 years. author’s economic rights. An action aimed at depriving the author of his or her personal rights (for example, deciding on making the work available to the public for the first time) shall constitute an infringement of the author’s 44 Can attorneys’ fees and costs be claimed in an action for moral rights. copyright infringement? Representatives may demand the return of procedural costs, including 40 Does secondary liability exist for indirect copyright the cost of legal representation. As a rule, the losing party should return infringement? What actions incur such liability? the costs indicated by the court to the winning party. The amount of costs Aiding, instigating and participating in the committing of an illicit act generally depends on the value of the object of dispute, which should be in the form of copyright infringement is penalised under criminal law. indicated in the suit that initiates the court procedure and is limited under Aiding is penalised only if the act stipulates a criminal liability for this type rules included in the legal provisions that determine the issue of the return of action. On the other hand, instigating and participation are subject to of costs in court procedures for barristers and legal advisers. criminal liability within the limits provided for perpetration. 45 Are there criminal copyright provisions? What are they? 41 What remedies are available against a copyright infringer? The Copyright Act penalises, inter alia, the following prohibited acts: Against a copyright infringer it is possible to use the following remedies: • appropriation of authorship or misleading as to the authorship of the • within the scope of the civil law procedure: entirety or part of another person’s work or artistic performance; • cessation of copyright infringement; • distribution, without consent or contrary to the distribution’s terms, of • reparation of damage and delivery of unduly obtained profits; another person’s work in the original version or in the form of an adap- • single or multiple publication of a statement in the press, of the tation, artistic performance, phonogram, videogram or broadcasting; proper content and form or making available to the public the • recording or duplication of another person’s work in the original ver- information on a court judgment in total or in part, issued in the sion or in a form of an adaptation, artistic performance, phonogram, matter, in the manner and scope specified by the court; and videogram or broadcasting, in order to distribute it without permission • withdrawal from the market, destruction or assignment to the or contrary to the distribution’s terms; right holder of the counterfeit goods as well as means and materi- • purchasing or attendance to sale of an object that is a store of a work, als used for manufacturing thereof; and artistic performance, phonogram or videogram distributed or dupli- • within the scope of the criminal law procedure: cated without consent or contrary to the distribution terms and with • fines; the purpose of obtaining pecuniary benefit; • restriction of liberty; • manufacturing apparatus or constituent parts thereof for unlawful • imprisonment; removal or circumventing effective technical protection against the • forfeiture of counterfeit goods as well as destruction thereof; and reproduction, copy or duplication of works or objects of related rights, • reparation of damage caused by the offence in its entirety or in marketing such apparatus or constituent parts thereof, or advertise- part, or compensation for the injury; and ment for sale or rent; and • within the scope of the customs procedure: seizure and destruction of • making it impossible or obstructing execution of rights to control the counterfeit goods. use of a work, artistic performance, phonogram or videogram, or refus- ing to provide information concerning income from the use of works. 42 Is there a time limit for seeking remedies? Prescription of claims concerning copyrights applies to pecuniary claims Prosecution concerning offences indicated in the Copyright Act is, as a for infringement of personal and proprietary rights of the author. rule, carried out ex officio. Nevertheless, in some cases it is necessary for Claims for infringement of rights expire, as a rule, after 10 years from the right holder to lodge a notice of offence, along with a motion for pros- the date on which they became enforceable. Nevertheless, claims for peri- ecution. Penalties for committing unlawful acts may take the form of a fine, odic payments, for example licence fees or those related to doing business, restriction of liberty or deprivation of liberty for as much as five years. expire after three years. These time limits differ with regard to the entity entitled to the claim. 46 Are there any specific liabilities, remedies or defences for Thus, if it is the author who enforces a claim, he or she is entitled to a online copyright infringement? 10-year prescription term. If it is an entity doing business, for example, Infringement of copyright on the internet is subject to the same rules as a manufacturer, editorial or film company that enforces a claim, the pre- offline infringements of rights. Nevertheless, in recent years there has been scription term is three years. When organisations of collective manage- a considerable increase in the number of online infringements by the use of ment enforce a claim, the prescription term is three years. works in this field of exploitation without the right holder’s consent.

43 Are monetary damages available for copyright infringement? 47 How may copyright infringement be prevented? On the grounds of the Copyright Law, in Poland it is possible to vindicate There are no normative means to prevent infringement of a right holder’s reparation of damages according to the general rules indicated in the appli- copyright. All actions are taken only when the infringement occurs. cable provisions of the civil procedure, or by payment of a sum of money in an amount corresponding to twice (or when the infringement is caused Relationship to foreign rights by fault, three times) the applicable remuneration that would be due at 48 Which international copyright conventions does your country the time when it is vindicated, for the right holder’s consent to the use of belong to? the work. In the case of infringement of personal authorship rights, if the Poland belongs to the following international conventions concerning cop- infringement was caused by fault, it is possible to demand adjudication of yrights and related rights: the corresponding sum of money for compensation of the damage or the • the Berne Convention for the Protection of Literary and Artistic Works imposing of an obligation on the infringer to remit a specific sum of money of 9 September 1886, as amended in Berlin on 13 November 1908 and to a charity as indicated by the right holder. in Rome on 2 June 1928; www.gettingthedealthrough.com 81

• the Convention on Establishment of the World Intellectual Property 49 What obligations are imposed by your country’s membership Organization of 14 July 1967; of international copyright conventions? • the Universal Copyright Convention of 6 September 1952, revised in The obligations imposed by Poland’s membership of international copy- Paris on 24 July 1971; right conventions are mainly focused on the obligatory provision of secur- • the Copyright Treaty of the World Intellectual Property Organization ing at least the same protection of copyrights as defined by the conventions, of 20 December 1996; and the entity possessing copyrights from another country must be treated • the International Convention for the Protection of Performers, equally to Polish citizens. Producers of Phonograms and Transmitting Organisations of 26 October 1961; and • the WIPO Performance and Phonograms Treaty of 20 December 1996.

Dorota Rzążewska [email protected]

Sienna Center Tel: +48 22 436 05 07 ul. Żelazna 28/30 Fax: +48 22 436 05 02 00-833 Warsaw www.jwp.pl Poland

Spain

Jesús Arribas, Beatriz Bejarano and Guillem Villaescusa Grau & Angulo

Legislation and enforcement 4 Do your copyright laws have extraterritorial application to deal with foreign-owned or foreign-operated websites that 1 What is the relevant legislation? infringe copyright? The main legislation is the Copyright Act (CA) approved by Royal Decree- The CA does not have any specific provision regarding the extraterritorial Law No. 1 of 12 April 1996, which has recently been reformed by Law No. 21 application of the law to deal with foreign-owned or foreign-operated web- of 4 November 2014. The following are also relevant: sites that infringe copyright. • Royal Decree of 14 September 1992, which approves the Criminal However, under Spanish law, the principle lex loci protectionis is appli- Procedure Act; cable; therefore, a claim against a foreign-owned or foreign-operated web- • Organic Law No. 10 of 23 November 1995 (the Criminal Code); site that infringes copyright can be filed before the Spanish courts, and the • Law No. 5 of 6 March 1998, incorporating the Spanish Legislation CA would be applicable as long as the infringement is carried out in the Council Directive 96/9/EEC of 11 March 1996, on the Legal Protection Spanish territory or the effects of the infringement are also produced in of Databases; Spanish territory even if the infringement is carried out abroad. • Law No. 1 of 7 January 2000 (the Civil Procedure Act); • Law No. 34 of 12 July 2002, on Information Society Services and Agency E-Commerce; • Royal Decree No. 281 of 7 March 2003, which approves the Regulations 5 Is there a centralised copyright agency? What does this agency on the General Registry of the Copyright; do? • Law No. 3 of 23 December 2008, regarding the resale right for the ben- No. There is a General Registry of Copyright and there are different collect- efit of the author of an original work of art; ing societies, but no centralised copyright agency. • Law No. 2 of 5 March 2001, on Sustainable Economy; • Royal Decree 1889/2011 of 30 December, which approves the Subject matter and scope of copyright Regulations on the functioning of the Copyright Commission; • Royal Decree 1657/2012 of 7 December, which regulates the proceed- 6 What types of works are copyrightable? ing of payment of the fair compensation for private copying financed The subject matter of copyright shall comprise all original literary, artistic or through the State Budget; and scientific productions expressed in any mode or form, whether tangible or • Royal Decree 624/2014 of 18 July, which develops the remunera- intangible, known at present or that may be invented in the future, such as tion to the authors for lending their works in certain publicly accessi- books, writings, musical compositions, dramatic and choreographic works, ble establishments. audiovisual works, sculptures, paintings, drawings, models, maps, projects of architectural works and works of engineering, photographs, computer 2 Who enforces it? programs and databases (articles 10 and 12, CA). It also protects artistic The copyright owner can file a lawsuit on copyright matters before the com- interpretations, phonograms, audiovisual recordings, broadcasts, ordinary mercial courts, which are the specialised courts within the civil jurisdiction photographs and specific editorial productions (article 105 et seq, CA). (also competent in other matters such as patents, trademarks, unfair com- Regardless of the copyright in the original work, derived works such as petition, etc). translations and adaptations, revisions, updated editions and annotations, The competent courts to deal with crimes committed against copyright compendiums, summaries and extracts or musical arrangements are also are the criminal courts. subject to copyright (article 11, CA). The central courts of the contentious administrative jurisdiction will The result of creative activity is also protected by copyright when it be competent to authorise the execution of the resolutions to interrupt the generates new original works. provision of information, or to withdraw content which violates copyrights issued by the Second Section of the Copyright Commission (an administra- 7 What types of rights are covered by copyright? tive body belonging to the Ministry of Culture). The section enforces some The CA confers moral rights and economic rights. provisions of the CA regarding online copyright infringement (see ques- Regarding moral rights, the author has (article 14, CA): tion 46). • the right to disclose the work and how it has to be done; • the right to decide if the disclosure has to be made in his or her name, 3 Are there any specific provisions of your copyright laws that under a pseudonym or sign, or anonymously; address the digital exploitation of works? Are there separate • the right to demand the recognition of his or her status as the author of statutory provisions that do so? the work; The general provisions of the CA are applicable to the digital exploitation • the right to demand respect for the integrity of the work and pre- of works. vent any deformation, modification, alteration or attack on the work There are some provisions that specifically address digital use such as that implies harm to his or her legitimacy or detriment to his or the limitation to the author’s economic rights known as the ‘Google tax’, her reputation; which is a measure applicable to news aggregators (article 32, CA), and • the right to modify the work, respecting the rights acquired by third the role in digital rights protection of the Second Section of the Copyright parties and the requirements of protection of the cultural interest; Commission against information society service providers that infringe • the right to withdraw the work from circulation, due to a change of his copyright (article 158-ter, CA). or her intellectual or moral convictions, following compensation of the damages caused to the owners of the economic rights; and www.gettingthedealthrough.com 83

• the right to access a unique or rare specimen of the work when the exceptions: (i) are limited to certain special cases (see question 9), it is possessed by another person, to exercise the right of (ii) cannot cause unjustified harm to the legitimate interests of the author, disclosure or any other right of the author. or (iii) adversely affect the normal exploitation of the works to which they refer (article 40-bis, CA). The economic rights include the right to reproduce (article 18, CA), distribute (article 19, CA), communicate to the public (article 20, CA) and trans- 11 Are architectural works protected by copyright? How? form the work (article 21, CA). Yes, architectural works are protected by copyright just like any other original creation, in particular, as a work of applied art. The CA does not 8 What may not be protected by copyright? expressly mention architectural works as works subject to copyright but it Works that do not fulfil the originality requirement or that are in the public mentions projects, plans, mock-ups and designs of architectural and engi- domain because their term of protection has ended are not protected. In the neering works. same way, copyright protects only the form of expression of ideas but not the underlying ideas themselves. 12 Are performance rights covered by copyright? How? Article 13 of the CA expressly provides a list of exclusions: legal or regu- Yes, performance rights are covered by copyright as ‘neighbouring rights’. latory provisions and the drafts thereof, judgments of jurisdictional bodies Performers are those who represent, sing, read, recite, interpret or perform and acts, resolutions, discussions and rulings of public bodies, and official a work in any way. translations of all such texts shall not be subject to copyright. Performers have the exclusive right to authorise the fixation of their performances. They also have the economic rights of reproduction, com- 9 Do the doctrines of ‘fair use’ or ‘fair dealing’ exist? munication to the public and distribution over their performances. The In Spain, as in other civil law jurisdictions, the doctrines of ‘fair use’ and duration of such rights is, as a rule, 50 years from the beginning of the year ‘fair dealing’ are not applicable; instead, there are certain legal limitations after the performance takes place. Moreover, performers’ moral rights are to the author’s economic rights. also recognised. The following do not require the authorisation of the copyright owner, without prejudice to the payment of economic compensation in some cases: 13 Are other ‘neighbouring rights’ recognised? How? • temporary acts of reproduction, with no independent economic sig- Yes, apart from the rights of the performers (article 105 et seq, CA), the nificance, which are transient or incidental and an essential part of a right of the phonogram producers (article 114 et seq, CA), the right of the technological process whose sole purpose is to enable the transmission audiovisual recorder producers (article 120 et seq, CA) and the rights of the in a network between third parties by an intermediary and lawful use broadcasting organisations (articles 126, 127, CA) are also recognised. (article 31, CA); These ‘neighbouring rights’ also contain economic rights and their • reproduction for private copying (article 31, CA); duration is 50 years from the beginning of the year after the performance, • the use for purposes of public security or to ensure the proper per- recording or broadcasting take place or from the disclosure of the perfor- formance of administrative, parliamentary or judicial proceedings mance or recording. (article 31-bis, CA); In addition, the protection of the ordinary photograph (article 128, • uses for the benefit of people with a disability (article 31-bis, CA); • the quotation of short fragments of disclosed works for teaching or CA), the protection of specific editorial productions (articles 129, 130, CA) research purposes, mentioning the source and the author (article 32, and the sui generis right over the databases (article 133 et seq, CA) are CA); also recognised. • making available to the public non-significant fragments of content from periodical publications or websites regularly updated for inform- 14 Are moral rights recognised? ative purposes, or for the creation of public opinion or entertainment Yes, moral rights are recognised in the CA. See question 7. (article 32, CA); • the reproduction, distribution and communication to the public by the Copyright formalities media of those studies and articles on current topics disseminated by other media, as long as the source and the author are mentioned, and 15 Is there a requirement of copyright notice? in cases where such use is not expressly reserved (article 33, CA); Copyright notice is not mandatory, according to Spanish legislation. • the performance, by the legitimate user of a copyrighted database, of Notwithstanding, said possibility is foreseen in the law, since it allows the all the acts needed for access to the content of the database and to its exclusive copyright owner to insert the sign of © before his or her name, normal use, although they are subject to an exclusive copyright (article expressing the place and year that the work was disclosed (article 146, CA). 34, CA); • the reproduction, distribution and communication to the public in 16 What are the consequences for failure to display a copyright the measure justified by the informative purpose of any work capable notice? of being seen or listened to in the reporting of current events (article There are no legal consequences for failure to display a copyright notice. 35, CA); However, it could be misinterpreted that the work is not copyrighted. • the free reproduction, distribution and communication to the public of works permanently located in public places (article 35, CA); 17 Is there a requirement of copyright deposit? • those technical acts related to the transmission by cable, satellite or wireless emissions needed to perform the communication to the No, copyright deposit is not required. The copyright of a work rests with the authorised public (article 36, CA); author due to the mere fact of its creation (article 1, CA). • the reproduction of works made without financial gain by museums, libraries or other cultural or scientific organisations for investigation 18 What are the consequences for failure to make a copyright or conservation purposes, and loans made between these institutions deposit? (article 37, CA); Since copyright is not mandatory the failure to make a copyright deposit has • the performance of musical works in official state or public administra- no consequences. tion events and religious ceremonies, as long as the public may attend for free and the artists are not specifically remunerated for those per- 19 Is there a system for copyright registration? formances (article 38, CA); and The General Registry of Copyright is intended for the registration of works • the parody of a work, as long as it does not imply likely confusion with protected by copyright and for the registration or annotation of the acts or the original, or damage to a copyrighted work or to its author (article contracts of constitution, transmission, modification or extinction of the 39, CA). rights or any other fact, act or title that affect any right which may be registered. The General Registry of Copyright is composed of the central and 10 What are the standards used in determining whether a the territorial registries. particular use is fair? Despite not applying the doctrines of ‘fair use’ or ‘fair dealing’, the main standard for the limitations to the author’s economic rights is that

20 Is copyright registration mandatory? Despite this, an author can be hired to create a work for a third party. No, copyright is an automatic right. The moral rights shall rest with the author and the transfer of the economic rights shall be governed by what has been agreed in the hiring contract. 21 How do you apply for a copyright registration? 27 May a copyrighted work be co-owned? An application can be filed by the owner of the copyright before the territorial registries or their delegated offices, if any. Yes, a copyrighted work can be co-owned. For instance, regarding a col- With an application the following information and documentation has laborative work, the rights over a work resulting from the collaboration of to be provided: several authors vest in all of them (article 7, CA). • the identification of the registrant; • the object of the copyright; 28 May rights be transferred? • the type of work; The economic rights of the work shall be transferred mortis causa by • the title of the work; any of the means recognised at law (eg, by heritage) or assigned by inter • if applicable, the date of disclosure of the work; vivos transactions. • a copy and description of the work; Some of the moral rights can be transferred, but only mortis causa • the place and date of the filing of the application; (such as the right to demand respect for the integrity of the work and • the signature of the registrant; and prevent any deformation, modification, alteration or attack on the work • receipt of payment of the corresponding fee. that implies harm to the author’s legitimacy or detriment to the author’s reputation). Additional information and documentation may be required, in some cases. Copyrights may be transferred partly or completely, the assignment being limited to the economic right or rights assigned, to the 22 What are the fees to apply for a copyright registration? means of exploitation expressly provided for and the time and territorial The standard fee of the General Registry of the Copyright for an application scope specified. of record entry for a copyright work amounts to €13.20. In case of failure to mention the time of the assignment, it shall be limited to five years, and failure to mention the territorial scope shall limit it 23 What are the consequences for failure to register a to the country in which it is effected. When the conditions governing the copyrighted work? exploitation of the work are not mentioned specifically and in detail, the assignment shall be limited to such exploitation as is necessarily deduced Since the registry is not constitutive but declarative, there are no conse- from the contract itself and is essential to the fulfilment of the purpose quences for not registering the work. The registration just means a rebut- of thereof. table presumption of the existence of the registered rights and their owner. In accordance with copyright law, it is mandatory that any assignment is formalised in writing (article 45, CA) and the transfer of the economic Ownership and transfer rights on an exclusive basis shall be expressly agreed. 24 Who is the owner of a copyrighted work? Although the economic rights may be freely transferred, their exercise is subject to the following restrictions: The CA categorises the owner as the person who has created any literary, • any general assignment of economic rights in all the works that the artistic or scientific work. The aforesaid category may be enjoyed by legal author may create in the future will be null and void; and persons in cases specifically provided by the Act (computer programs and • any stipulations whereby the author undertakes not to create any work collective works). in the future will also be considered null and void. According to article 6 of the CA, there is a rebuttable presumption of ownership in favour of the individual who is identified as such in the work In addition, the assignment of economic rights shall not cover methods of by the inclusion of his or her name, signature or identification mark. In use or means of dissemination that did not exist or were unknown at the addition, whether the work is disclosed anonymously or under a pseudo- time of the assignment. nym or sign, the exercise of the copyright shall be vested in the individual The remuneration for the transfer of the copyrights has to consist, or legal person who discloses such work with the author’s consent, provided as a rule, of a percentage of the operating revenues. However, a fixed that they do not reveal his or her identity. remuneration could be agreed in some cases. In the event that a work is the collaboration of two or more authors, the copyright shall pertain to them jointly and the communication and 29 May rights be licensed? alteration of the work shall require the consent of all the co-authors. Unless agreed otherwise, they may exploit their contribution separately insofar as Yes. In order to make lawful use of a third-party copyrighted work, a licence the joint exploitation is not thereby prejudiced. should be granted (see question 28), except in those situations subject to Only economic rights can be transferred, not moral ones, which always the limitations to the author’s economic rights, as explained in question 9. remain the property of the intellectual creator of the work (see question 28). 30 Are there compulsory licences? What are they? 25 May an employer own a copyrighted work made by an In Spain there are no compulsory licences. As explained in question 9, there employee? are certain limitations to the author’s economic rights that permit the use of As a rule, transfer to the employer of the work’s economic rights, by virtue the work without the authorisation of the author or copyright owner, with- of the employment relationship, shall be governed by what was agreed in out prejudice to the payment of an economic compensation in certain cases. the contract, which has to be in writing. In the absence of a written agreement, it shall be presumed that the economic rights have been granted 31 Are licences administered by performing rights societies? exclusively and with the necessary scope for the exercise of the normal How? activity of the employer (article 51, CA). Licences may be administered by whomever the copyright owner chooses. However, regarding computer programs, the natural person or group of Collecting societies are usually the ones in charge of the administration of people who create the computer program or the legal person who appears the licences. as the copyright owner shall be considered the author. In addition, when an employee creates a computer program, in the exercise of the func- 32 Is there any provision for the termination of transfers of tions entrusted or following the instructions given by his or her employer, rights? the economic rights belong exclusively to the employer, unless otherwise The time limit for the copyright assignment must be agreed between the agreed (article 97, CA). parties, as explained in question 28. 26 May a hiring party own a copyrighted work made by an independent contractor? The CA has no specific provisions regarding work made by an independent contractor hired by someone. www.gettingthedealthrough.com 85

33 Can documents evidencing transfers and other transactions Ceasing the illicit activity may include the adoption of measures to be recorded with a government agency? avoid the resumption of the infringement; the withdrawal and destruction Yes, every right, fact, act or title regarding a work can be recorded before of the illicit specimens and the disablement or destruction of the devices, the General Registry of Copyright. equipment, tools, etc destined to perform the infringement, with the infringer being charged, or the cessation of the services provided by inter- Duration of copyright mediaries to third parties who use them to infringe copyrights.

34 When does copyright protection begin? 42 Is there a time limit for seeking remedies? Copyright protection of a literary, artistic or scientific work begins from The statute of limitations to claim for damage for copyright infringement in the moment of creation of the work by the author, with the exceptions Spain is five years from the time at which they could legitimately have been explained in question 36. filed (article 140, CA). However, the statute of limitations to claim for the cessation of the 35 How long does copyright protection last? unlawful activity is not clear in Spanish legal doctrine, as it is not expressly As a rule, copyright protection applies until 70 years after the death of set forth within the CA. the author (except for the ‘neighbouring rights’ explained in question 13). Notwithstanding, for those authors who died before 1987 the copyright pro- 43 Are monetary damages available for copyright infringement? tection lasts 80 years from his or her death (see question 38). Yes. Compensation of damages shall include the actual loss, the loss of profits, the moral damages and the investigation costs (article 140, CA). Does copyright duration depend on when a particular work 36 The actual loss includes those damages directly caused by the infringe- was created or published? ment, which are usually proved through the corresponding documentation The copyright duration is typically calculated from the date of death of the (invoices, bills, etc). author. The exceptions to this rule are the following: The loss of profits shall be set at the choice of the owner, taking into • Collective works and anonymous or pseudonymous works, for which account: (i) the negative economic consequences, such as the loss of profits the term of protection expires 70 years after the work is lawfully made suffered by the owner as a consequence of the infringement or the profits available to the public. If the anonymous or pseudonymous work has obtained by the infringer from the infringement, or (ii) the amount that the not been lawfully made available to the public within 70 years from owner would have received if the infringer had requested a licence to use their creation, protection shall also be terminated. the copyrighted work. • The term of the economic rights for a computer program where The moral damages shall be compensated, even though the existence the author is a legal person, shall run for 70 years from the lawful of economic damage has not been proved. To calculate the moral damages communication of the program or from the moment of its creation, if it the circumstances of the infringement, the severity of the harm caused has not been made available to the public. and the extension of the illicit diffusion of the work shall each be taken • This is also the case for neighbouring rights since the duration of the into account. copyright depends on the date of performance, the first recording by The investigation costs are those incurred by the copyright owner that the phonogram, video or film producer, first broadcast or date of the exercise the judicial action to obtain the means of evidence to prove the making of the ordinary photograph. infringement, generally, the private investigators’ costs. • The sui generis rights on databases shall run for 15 years from the date Punitive damages are not available. on which the process of making the database was completed. 44 Can attorneys’ fees and costs be claimed in an action for 37 Do terms of copyright have to be renewed? How? copyright infringement? No, there is no possibility that the term of copyright is extended and there is As a rule, attorneys’ fees and costs will be paid by the unsuccessful party no need to renew it periodically. in the infringement action. Thus, if a claim for copyright infringement is granted by a Spanish court, the court is likely to impose an obligation on the 38 Has your jurisdiction extended the term of copyright protection? respondent to bear the costs of the proceedings (ie, attorneys’ fees, which are determined for these purposes following the rules and calculations set From 1879 to 1987 the term of copyright protection in Spain was 80 years forth by the different Spanish bar associations). after the date the copyright owner died and from 1987 to 1997 the term was reduced to 60 years. Through the application of Directive 93/98/EEC 45 Are there criminal copyright provisions? What are they? of 29 October 1993, the term was extended to 70 years after the copyright owner died. Yes. Article 270 of the Criminal Code establishes that a punishment of imprisonment of six months to four years and penalty consisting of a fine, in Copyright infringement and remedies euros, of a court-determined amount payable to the Spanish Treasury over a period of from 12 to 24 months, will be given to those who, with the aim 39 What constitutes copyright infringement? of obtaining economic profit, either directly or indirectly, and to the detri- Any non-authorised use of the work, in particular, the reproduction, distri- ment of a third party, reproduce, plagiarise, distribute, publicly disclose or bution, communication to the public and transformation of the work, which in any other way economically exploit, all or part of a literary, artistic or cannot be covered by any of the limitations to the author’s economic rights scientific work, or its transformation, interpretation or performance fixed (explained in question 9), shall be deemed infringement. in any medium, or communicated to the public by any medium, without authorisation of the copyright owner or their assignees. 40 Does secondary liability exist for indirect copyright The same sentences shall be applied to those who: infringement? What actions incur such liability? • with the aim of obtaining economic profit, directly or indirectly, and to Regarding indirect copyright infringement, whoever performs the follow- the detriment of a third party, establish links on the internet to works ing shall be considered an infringer: protected by copyright which facilitate the active and systematic loca- • intentionally inducing infringing conduct; tion of these copyrighted works illegally offered on the internet, in par- • cooperating, being fully aware or having reasonable evidence that the ticular, providing sorted and classified listings of links; infringing conduct is taking place; or • intentionally import or export the referred works and for those who • by having a direct economic interest in the outcome of the unlawful manufacture, import or put into circulation any device, equipment, conduct, is able to control that conduct. tool, etc destined to avoid the technological protection measures; and • promote or facilitate the distribution, marketing, reproduction, plagia- 41 What remedies are available against a copyright infringer? rism, access or public display of works protected by copyright, delet- The owner of the copyright can request that the illicit activity cease (arti- ing, modifying or circumventing, or facilitating the circumvention of cle 139, CA), the compensation of damages (article 140, CA), the adoption the technological measures used to prevent it. of interim injunctions measures (article 141, CA) and the publication of the judgment.

According to article 271 of the Criminal Code, the punishment of imprisonment shall be raised from two years to six years when the profit obtained Update and trends or that could have been obtained has particular economic significance, or depending on the seriousness of the facts or when the infringer belongs On 1 July 2015, Act No. 1 of 30 March 2015 came into force, reforming the consolidated text of the Spanish Criminal Code. to an organisation with copyright infringement purposes or when persons Among the main changes that have an impact on copyright under 18 years old are used to commit the infringement. crimes, tightening of the penalties and the criminalisation of new behaviour should be highlighted. It is expressly deemed a crime: (i) 46 Are there any specific liabilities, remedies or defences for to facilitate access to works protected by copyright; (ii) to promote online copyright infringement? or facilitate the distribution, marketing, reproduction, plagiarism, The general civil law and criminal law remedies mentioned in questions 40, access or public display of works protected by copyright, deleting, modifying or circumventing, or facilitating the circumvention of the 41, 43 and 45 are also available against online copyright infringement cases. technological measures used to prevent it; and (iii) to establish links For online copyright infringement, the Criminal Code establishes on the internet to works protected by copyright which facilitate the in articles 270(2) and (3) that the punishment of imprisonment of six active and systematic location of these copyrighted works illegally months to four years and penalty consisting of a fine, in euros, of a court- offered on the internet, in particular, providing sorted and classified determined amount payable to the Spanish Treasury over a period of from listings of links. 12 to 24 months, will be given to those who, with the aim of obtaining economic profit, either directly or indirectly, and to the detriment of a third party, establish links on the internet to works protected by copyright which Relationship to foreign rights facilitate the active and systematic location of these copyrighted works illegally offered on the internet, in particular, providing sorted and classified 48 Which international copyright conventions does your country listings of links. belong to? Besides which, and regardless of the applicable civil or criminal actions, The main conventions to which Spain belongs are: the Second Section of the Copyright Commission has been created; this is • the Berne Convention for the Protection of Literary and Artistic Works, an administrative body belonging to the Ministry of Culture, whose main 9 September 1886 (Berne Convention); purpose is to safeguard copyright online. This section can prosecute web- • the Universal Copyright Convention agreed in Paris, 6 September 1952; sites that facilitate, en masse, links to unlawful content, depending on the • the Convention for the Protection of Performers, Producers of number of users in Spain and the number of works accessible through the Phonograms and Broadcasting Service Organization, 26 October 1961 allegedly infringing service. Offenders that breach the requirements for (Rome Convention); removal of infringing content will face fines of up to €600,000. • the Convention for the Protection of Producers of Phonograms against The second section of the Copyright Commission tries to improve reg- Unauthorized Duplication of their Phonograms, 29 October 1971 ulation of the activity of those websites where hyperlinks are made avail- (Geneva Convention); able to the public to download works that are shared in P2P networks, or • the Agreement on Trade Related Aspects of Intellectual Property on other third-party websites where the work can be directly downloaded Rights, 15 April 1994; (article 158, CA). Please note that these measures can be reviewed by the • the World Intellectual Property Organization Copyright Treaty, 20 central courts of the contentious administrative jurisdiction. December 1996; and • the WIPO Performances and Phonograms Treaty, 20 December 1996 . 47 How may copyright infringement be prevented? The implementation of copyright notice may help in some cases, notwith- 49 What obligations are imposed by your country’s membership standing that, as most copyright infringement is done in the full knowledge of international copyright conventions? that it is infringement, it could be prevented by the implementation of tech- Nationals of third countries shall in all cases enjoy the protection available nological protection measures. under the international conventions and treaties to which Spain is a party. Also, in the event of infringement or when there are good and reason- For works whose country of origin is another country in terms of the Berne able grounds to fear that infringement is imminent, the judicial authority Convention and whose author is not a national of a member state of the may, at the request of the copyright owners, decree interim measures that, European Union, the term of protection shall be the same as that granted according to the circumstances, would be necessary for the immediate in the country of origin of work, provided that it may not in any case exceed protection of the rights concerned, and, in particular, the suspension of the that granted under the CA for works of authors. activities of reproduction, distribution and communication to the public, as An author’s moral rights are recognised, whatever the author’s appropriate, or any other activity which constitutes an infringement, as well nationality. as the prohibition of these activities, if they have not been performed yet.

Jesús Arribas [email protected] Beatriz Bejarano [email protected] Guillem Villasescusa [email protected]

Grau & Angulo Tel: +34 91 353 3677 C/Nuñez de Balboa, 120 Fax: +34 91 350 2664 28006 Madrid www.gba-ip.com Spain

www.gettingthedealthrough.com 87

Switzerland

Brendan Bolli and Sven Capol E Blum & Co AG

Legislation and enforcement Agency 1 What is the relevant legislation? 5 Is there a centralised copyright agency? What does this The relevant legislation is found in the Federal Copyright and Neighbouring agency do? Rights Act (the Copyright Act) of 9 October 1992 and in the Regulations on Five centralised copyright agencies (Suisa; ProLitteris; Suisseimage; Swiss Copyright and Neighbouring Rights of 26 April 1993, which entered into Society of Authors; Swissperform) exist in Switzerland, acting under fed- force on 1 July 1993. eral government permission and supervision. These agencies enforce specific types of copyright and collect fees 2 Who enforces it? on behalf of the authors for specific types of use of works of copyright Copyright is enforceable by the author or by the author’s successor in title and neighbouring rights. For some types of copyright, these activities are or assignee by means of civil law remedies. Furthermore, specific types of reserved by law to the copyright agencies; for other types of copyright, the copyright are enforceable by copyright agencies (collecting societies) on author may entrust the agency with these activities on a voluntary, con- behalf of the author, in particular rights affected by mass use of the work. tractual basis. Each of the five copyright agencies is active in a different, Some types of copyright may only be enforced by copyright agencies, for specific area of copyrighted works: example, certain claims of remuneration. • Suisa acts for non-theatrical music works; Criminal remedies are available in cases of intentional infringement • ProLitteris acts for works of literature, photography and fine art; of copyright and are enforced by the criminal enforcement authorities, • Suisseimage acts for visual and audiovisual works; either upon a prosecution request of the injured party, or, in cases of • the Swiss Society of Authors acts for theatrical and musical theatrical commercial-scale infringement, on an ex officio basis (see question 45). works; and • Swissperform acts for neighbouring rights (rights of performing art- 3 Are there any specific provisions of your copyright laws that ists, broadcasters, and producers of sound and video recordings). address the digital exploitation of works? Are there separate statutory provisions that do so? All Swiss copyright agencies have signed reciprocal agreements with foreign sister agencies with a view to ensuring that members receive their roy- The Swiss Copyright Act features provisions intended to protect technolog- alty entitlements for the use of their works abroad. ical measures functioning to defend copyrights. These provisions are especially relevant for (but are not limited to) online and offline available digital Subject matter and scope of copyright works (DRM). They prohibit the circumvention of protective technological measures (examples of which are access and copy controls, encryption, 6 What types of works are copyrightable? scrambling and other transformational mechanisms), as well as the pos- The Copyright Act provides for copyright protection of literary and artistic session, production, import, advertising and release into commerce of works. These include literary, scientific and other works that make use of goods or services with the purpose of circumventing protective technologi- language, music, visual and audiovisual works (photographs, films, etc), cal measures. There is an important exception to the protection of techno- fine art (painting, sculpture and graphic works), works of architecture, logical measures, namely where these are circumvented exclusively for the applied art (furniture, jewellery, etc) and choreographed works (ballet, purpose of use of copyrighted works permitted by law (such as, for exam- etc). Furthermore, the Copyright Act explicitly recognises computer pro- ple, use of a work in the private sphere). The Copyright Act furthermore grams as works protected by copyright. It is a requirement of copyright pro- features provisions that explicitly allow, subject to a number of restrictions, tection that the work should have individual character. an ephemeral or accessory temporary reproduction of copyrighted works that form a necessary and integral part of a technical procedure. Finally, 7 What types of rights are covered by copyright? the Act features a provision allowing the temporary reproduction of certain The author has the exclusive right to use a work (or authorise its use by oth- musical works for broadcasting purposes, providing that the copyright to ers), including the right to first publication of the work. Furthermore, the such reproductions can be enforced only by a copyright agency. author has the exclusive right to allow modifications of the work, or adaptations or derived works, such as translations, film versions, etc. 4 Do your copyright laws have extraterritorial application to deal with foreign-owned or foreign-operated websites that 8 What may not be protected by copyright? infringe copyright? Official documents of the type of laws, ordinances, treaties, judicial or Swiss copyright law will be applied to foreign-owned or foreign-operated administrative decisions and reports are not protected, nor are legal ten- websites if such websites are considered to commit an infringing act in der, patent specifications and published patent applications. Switzerland. This will, in particular, be the case if the site is also directed at customers in Switzerland. All particulars of the site in question will be con- 9 Do the doctrines of ‘fair use’ or ‘fair dealing’ exist? sidered in this respect, including the content and language or languages of the website, and whether customers in Switzerland may purchase goods or There is no actual fair use doctrine under Swiss copyright law, but the services, or download content (see also question 46). Copyright Act provides for certain restrictions of copyright that lead to results similar to those produced by a fair use doctrine. Restrictions of this type apply, for example, to various forms of use of published works in the private and domestic sphere, for educational purposes, and within enterprises. Some of these permitted forms of use are subject to the

© Law Business Research 2016 E Blum & Co AG SWITZERLAND payment of statutory royalties, which are collected and distributed by cop- 18 What are the consequences for failure to make a copyright yright agencies. deposit? If the author has sold a copy of a work, or has consented to its sale, As there is no requirement to make a copyright deposit, there are no conse- copyright in this copy of the work is considered exhausted and it may be quences for failure to make a copyright deposit. resold or otherwise distributed (computer programs may only be resold). Exhaustion also applies if the copy was first sold by the author or with his 19 Is there a system for copyright registration? consent outside Switzerland. Parallel imports of copyrighted works thus There is no system for copyright registration. usually cannot be prohibited by means of copyright. A legally acquired specimen of a copyrighted work may be rented to 20 Is copyright registration mandatory? others, but is subject to the payment of statutory royalties (except in the case of the rental of works of architecture or applied art). In addition, copy- Not applicable. righted works may be used for the creation of parodies. A further restriction of copyright allows the decoding of computer programs to obtain 21 How do you apply for a copyright registration? necessary information about interfaces. Not applicable.

10 What are the standards used in determining whether a 22 What are the fees to apply for a copyright registration? particular use is fair? Not applicable. As there is no actual fair use doctrine in Swiss copyright law, which instead defines in the Copyright Act specific restrictions on copyright (see question 23 What are the consequences for failure to register a 9), there is no particular set of standards for fair use; each type of restric- copyrighted work? tion of copyright is defined individually in the Act. Not applicable. 11 Are architectural works protected by copyright? How? Ownership and transfer Works of architecture are recognised as protected by copyright if they fulfil the requirement of individual character. The owner of a specimen of a 24 Who is the owner of a copyrighted work? work of architecture, for example a house owner, may modify it, subject Copyright is initially vested in the author. The author is the physical per- to the author or architect’s right to object to any distortion, mutilation or son who has created the work. Where several authors have contributed to other modification of the work that would be prejudicial to his or her repu- the creation of the work, the copyright belongs to them jointly and, unless tation or otherwise harm his or her personality. agreed otherwise, may only be exercised with the consent of all authors. If, however, the individual contributions can be separated, and the authors 12 Are performance rights covered by copyright? How? have not agreed otherwise, each co-author may make use of his or her con- Performance rights are granted similar protection to copyright as ‘related tribution independently. rights’ (see question 13). 25 May an employer own a copyrighted work made by an 13 Are other ‘neighbouring rights’ recognised? How? employee? The Swiss Copyright Act provides for protection as ‘related rights’ of the Under Swiss law there is no statutory transfer of copyrights within the rights of performing artists, producers of sound recordings and films, as framework of an employment relationship; copyrights are transferred from well as of broadcasting organisations. The scope of these rights is some- the employee to the employer by contract only. A considerable part of the what smaller compared with copyright. Performing artists have the exclu- doctrine and practice advocates that, if the creation of copyrighted works sive right to communicate their performance to the public outside the is a part of the employee’s contractual duties, the exclusive exploitation location in which it originally took place, as well as to broadcast and trans- rights are implicitly transferred to the employer to the extent required by mit it, and to make recordings and copies and sell these. The producer of a the employment relationship and without specific contractual provisions sound recording or film has the exclusive right to copy and sell the record- (‘theory of finality’). This doctrine and practice is, however, controversial, ings. Broadcasting organisations own the rights to retransmit their broad- so it is advisable to include explicit provisions in the employment contract cast, communicate it to the public, make recordings and copies and sell with regard to the extent of the transfer of copyrights. them. The duration of these related rights is 50 years from 31 December In relation to computer programs created by employees in the course of the year in which the performance, the production of the sound or video of their employment and as a part of their contractual duties, the Copyright recording, or the original broadcast took place. Act, however, provides that the employer alone shall be entitled to exercise the exclusive exploitation rights. 14 Are moral rights recognised? 26 May a hiring party own a copyrighted work made by an Moral rights are recognised. Even where the law allows the modification of independent contractor? a work or its use for a derived work (such as a translation or a film adaptation), the author may prohibit any distortion, mutilation or modification of A hiring party may own a copyrighted work made by an independent the work that is prejudicial to his or her reputation or otherwise harmful contractor. Since copyrights are always initially vested in the author, the to his or her personality. Further examples of moral rights are the author’s hiring party does not automatically acquire the ownership by virtue of right to be identified as author and to decide on the manner and date of first the hiring relationship and the copyright should be assigned by means publication of the work. of the provisions of the hiring contract. On the other hand, the parties need not expressly agree to the assignment; an implicit agreement is suf- Copyright formalities ficient. Neither the hiring agreement nor the copyright assignment itself is required to be in writing. Within the framework of a publishing con- 15 Is there a requirement of copyright notice? tract according to article 380 et seq of the Swiss Code of Obligation, the There is no requirement of copyright notice under Swiss law. Switzerland, copyright is assigned by law from the author to the publisher to the extent being a member state of the Universal Copyright Convention (UCC), how- and for the duration necessary to carry out the contract pursuant to article ever, recognises the marking requirements under article III, paragraph 2 381(1) if not otherwise agreed between the parties. of the UCC. 27 May a copyrighted work be co-owned? 16 What are the consequences for failure to display a copyright A copyrighted work can be owned by more than one person if more than notice? one author has contributed to its creation (see question 24) and, or alterna- There are no consequences for failure to display a copyright notice. tively, if it has been transferred to more than one person by assignment or legal succession (including inheritance). 17 Is there a requirement of copyright deposit? No requirement of copyright deposit exists in Switzerland. www.gettingthedealthrough.com 89

28 May rights be transferred? publication, or, if the work was published in instalments, at the end of Copyrights are transferable by assignment and by legal succession, includ- the 70th year following the year of the final publication (it is controver- ing inheritance. Copyrights may be transferred partially or completely. sial whether this term of 70 years also applies to computer programs, or There is, however, a ‘hard kernel’ of moral rights that are retained by the whether the appropriate term should be 50 years). author, notably, the right to prohibit any distortion of the work that would infringe the author’s personality rights. 36 Does copyright duration depend on when a particular work was created or published? 29 May rights be licensed? Only when the author is and remains unknown will copyright duration There are no specific provisions with regard to licences in the Swiss depend on when a particular work was published. Copyright duration does Copyright Act or in the Swiss Code of Obligations. Copyright licences are not depend on the date of creation of the work; rather, duration is typically considered contracts sui generis to which only the general provisions of calculated from the date of death of the author. For a detailed explanation the Swiss Code of Obligation apply. The exclusive exploitation rights can of copyright duration, see question 35. be licensed partially or completely. Copyright licences may be exclusive, sole or non-exclusive licences. Licence agreements are not subject to any 37 Do terms of copyright have to be renewed? How? prescribed form. Terms of copyright do not have to be renewed.

30 Are there compulsory licences? What are they? 38 Has your jurisdiction extended the term of copyright There is one compulsory licence for the manufacturing of audio record- protection? ings that grants audio producers with a place of business in Switzerland No. The current terms of protection (see question 35) were established with the right to claim, against payment of remuneration, a licence for recorded the entry into force of the present Copyright Act of 9 October 1992, and musical works that have been offered for sale, sold or otherwise distributed have remained unchanged since then. with the consent of the author in Switzerland or abroad. A limited number of restrictions on copyright apply that grant third Copyright infringement and remedies parties in specific circumstances the right to make specific use of a copy- 39 What constitutes copyright infringement? righted work, either free of charge or against payment of remuneration (see question 9). Any use of a work under copyright not authorised by the copyright owner and falling under the exclusive rights of the copyright owner (see questions 31 Are licences administered by performing rights societies? 6 to 11), which is committed within the copyright protection term (see ques- How? tions 34 and 35), constitutes copyright infringement, unless it is covered by the exhaustion principle as defined in articles 12 to 15 of the Copyright Act, The performing rights society Swissperform administers licences for per- or by a restriction of the copyright owner’s rights as defined in articles 19 forming artists’ rights in the sense that it enforces certain types of rights, as to 28 of the Copyright Act (see questions 9 and 10). The copyright owner’s well as the payment of licence fees for such rights, which are then reserved rights extend not only to use of the identical copyrighted work, but also to for exclusive enforcement by the performing rights society by law, or which imitations and cases of plagiarism that make use of the essential creative are entrusted to it on a facultative basis by the performing artists by means content of the copyrighted work. of contracts. See also question 5. 40 Does secondary liability exist for indirect copyright 32 Is there any provision for the termination of transfers of infringement? What actions incur such liability? rights? Secondary or accessorial liability for copyright infringement exists under No provisions exist for the termination of transfer of copyright rights. Swiss law. Under general Swiss liability law, which is applicable to copyright infringement, as governed in particular by article 50, paragraph 1 of 33 Can documents evidencing transfers and other transactions the Code of Obligations, and the related Federal Supreme Court practice, be recorded with a government agency? cooperation of several parties objectively causing, directly or indirectly, an Documents evidencing transfers and other transactions cannot be infringement, with each party subjectively acting with fault (ie, wilfully or recorded with a government agency. negligently) and having knowledge of the other party’s conduct, or being able to have knowledge of the other party’s conduct, will lead to joint and Duration of copyright several liability of these parties for damages. The copyright owner is, of 34 When does copyright protection begin? course, also entitled to demand cessation of the respective infringing acts from each party committing accessorial infringement (article 62, para- Copyright protection begins as soon as the work is authored. Although fixa- graph 1 of the Copyright Act). There are, however, no court decisions to tion of the work on a physical medium is not necessary, it must have been date that provide clear guidelines on the specific application of these prin- made perceivable by the senses for copyright protection to commence. ciples to copyright infringements involving internet or other digital technologies, such as file-sharing technologies or similar. 35 How long does copyright protection last? Computer programs enjoy protection until the end of the 50th year follow- 41 What remedies are available against a copyright infringer? ing the death of the author; all other works enjoy protection until the end of An action may be brought before the civil courts against any infringer for the 70th year following the death of the author. a judgment prohibiting an imminent infringement, as well as for a judg- Where the work was authored by joint authors and the individual con- ment ordering the removal of ongoing infringements, resulting typically in tributions cannot be separated, protection shall not expire until the end of a judgment including a cease-and-desist order. Court rulings of this type the 70th year (in the case of computer programs, until the end of the 50th may also be obtained in the form of a preliminary injunction in accelerated year) following the death of the last surviving joint author. and simplified proceedings. Where the individual contributions can be separated, protection of In addition, a civil court action may be brought for disclosure of the each contribution shall not expire until the end of the 70th or 50th year fol- origin of infringing items against any person who possesses such items, lowing the death of the respective author. The protection term of the joint as well as for confiscation and destruction of any infringing items in the work as a whole, regardless of the above, expires at the end of the 70th or defendant’s possession. 50th year after the death of the last joint author. Finally, a civil court action may be brought against any infringer for In the case of films and other audiovisual works, protection shall not damages, payment in satisfaction, restitution of profits or confiscation of expire until the end of the 70th year following the death of the sole director unjust enrichment resulting from the copyright infringements, including, or the death of the last joint co-director. but not limited to, those in monetary form, or any combination of these If it can be assumed that the author has been deceased for more than remedies. In all cases, the court may order the publication of the judgment 50 or 70 years, copyright protection will be considered to have expired. upon request of the successful party. In cases where the author of the work is and remains unknown, copyright protection expires at the end of the 70th year following the year of

42 Is there a time limit for seeking remedies? There is no fixed time limit for seeking a cease-and-desist order or judg- Update and trends ment. The copyright owner’s rights, however, will be considered forfeited The Swiss federal government has proposed new legislation amend- if the owner has tolerated, for an extensive period, infringements that ing the Swiss Copyright Act in a number of points. The proposed they had knowledge of – or should have had knowledge of – provided the legislation would establish additional obligations of internet hosting infringing party has acquired a valuable asset as a result of the contin- providers and internet access providers to take measures against ued infringement. copyright infringements committed via the internet (primarily in Claims for damages, payment in satisfaction and restitution of profits the form of notice and takedown procedures and access blocking), are subject to a limitation period of one year. If, however, the infringing as well as a system of access provider warning letters to consumers acts on which these claims are based also qualify as criminal infringement committing internet copyright infringements, which would only allow rights owners to obtain disclosure of the consumer’s identity (see question 45), the time limits for criminal prosecution, which are con- if the latter ignores the warning letters and continues the infringe- siderably longer, are applied to the civil law claims. ments. The new legislation would not change the principle that download of copyrighted content from the internet for purely private 43 Are monetary damages available for copyright infringement? use is legal under Swiss law. Various new rules on collective exploita- Monetary damages are available for copyright infringement (see question of copyright would be introduced with the goal of facilitating tion 41). copyrighted digital content becoming available legally and rapidly. The government has also proposed ratification of the Peking Treaty and the Marrakesh Treaty, the obligations under both of which are 44 Can attorneys’ fees and costs be claimed in an action for already fulfilled by current Swiss law. The new legislation has yet to copyright infringement? be adopted by parliament, and a number of the new rules may well Attorneys’ fees and costs will be awarded to the party that succeeds in be controversial in the parliamentary discussions, so that the final the infringement action. Typically, all or a significant part of the winning form the new legislation will take remains uncertain at present. party’s costs will be awarded. If a party succeeds partially, it will receive a proportional cost award. 47 How may copyright infringement be prevented? 45 Are there criminal copyright provisions? What are they? Use of the copyright notice ‘©’, although not required by Swiss law, may Criminal law penalties are imposed on various specific types of copyright be helpful for preventing infringements. It is also possible to file details of infringements as contained in articles 67 to 73 of the Copyright Act. For works under copyright with the Swiss customs authorities, together with instance, the wilful infringement of copyright by means of the unauthor- a standing request for assistance from the customs authorities, who will ised publication, offering for sale, or commercial release of copyrighted temporarily retain suspect items that could infringe the copyright own- works, or by means of the unauthorised rental of computer programs, er’s rights at the Swiss borders. This will enable the owner to take steps is punished with imprisonment of up to five years and a fine (fines can to obtain an injunction confiscating these items. Mandating a copyright be imposed up to a maximum of approximately 1 million Swiss francs, agency (collecting society; see question 5) with the enforcement and col- depending on the personal and economic circumstances of the infringer). lection of copyright fees can also help prevent infringement. In practice, significantly lower sentences are typically imposed. Relationship to foreign rights 46 Are there any specific liabilities, remedies or defences for 48 Which international copyright conventions does your country online copyright infringement? belong to? There is no legislation establishing specific liabilities or defences for Switzerland is a member of most multilateral international conventions online copyright infringement. The general rules and principles, includ- regarding copyright and neighbouring rights law: ing those on secondary and accessorial infringement (see question 40), • the Agreement on Trade-Related Aspects of Intellectual Property apply. All the civil law and criminal law remedies listed under questions Rights (TRIPS, within the establishment of the World Trade 41, 43 and 45 are available against online copyright infringement cases. It Organization, 1994); is possible to obtain an order, in civil or criminal law proceedings, for the • the Revised Berne Convention (Paris version of 1971); confiscation and destruction of computer servers and data-carrier media • the Universal Copyright Convention (Paris version of 1971); located in Switzerland used to commit the infringements. Online infringe- • the International Convention for the Protection of Performers, ments that address the Swiss market – for example, the operation of a Producers of Phonograms and Broadcasting Organisation (Rome, website from abroad that addresses the Swiss market – will also fall under 1961); Swiss jurisdiction. • the Convention for the Protection of Producers of Phonograms against Unauthorised Duplication of their Phonograms (Geneva, 1971);

Brendan Bolli Sven Capol

Vorderberg 11 Tel: +41 43 222 56 00 8044 Zurich Fax: +41 43 222 56 01 Switzerland [email protected] www.eblum.ch

www.gettingthedealthrough.com 91

• the Convention relating to the Distribution of Programme-Carrying Signals transmitted by Satellite (Brussels, 1974); • the Convention establishing the World Intellectual Property Organisation (Stockholm, 1967); • the WIPO Copyright Treaty; and • the WIPO Performance and Phonograms Treaty.

49 What obligations are imposed by your country’s membership of international copyright conventions? All obligations resulting from international conventions are fulfilled by Swiss national law.

Turkey

Sıdıka Baysal Hatipoğlu, Gökhan Uğur Bağcı and Benan Ilhanli B+B Law Firm

Legislation and enforcement 7 What types of rights are covered by copyright? 1 What is the relevant legislation? Turkish copyright law protects both the moral and the economic rights of the author. Moral rights concern releasing the work to the public, being The main legislation regulating copyright-related issues in Turkey is Law named as the author of the work and prohibiting any alteration to the work. No. 5846 on Intellectual and Artistic Works dated 13 December 1951 and Economic rights, on the other hand, are the rights that assist the author amended from time to time. In addition, several secondary regulations have in economic matters deriving from the work, such as rights of reproduc- been published to regulate the issues provided by this law in a more detailed tion, distribution, transmission, broadcasting or publishing, adaptation way. Furthermore, Turkey abides by several international agreements and and performance. conventions and, in 1995, ratified the Berne Convention for the Protection of Literary and Artistic Works and the Paris amendments of 1979. 8 What may not be protected by copyright? 2 Who enforces it? Copyright protection is subject to the creation of a work as defined in Law No. 5846, and the idea shall have been converted to a work. In other words, Copyright holders are entitled to request enforcement from civil or penal ideas and works not falling under the definitions of Law No. 5846 are not courts specialised in the protection of intellectual and industrial rights, cur- subject to such protection. rently based in Istanbul, Ankara and Izmir, and civil or penal courts of first instance, in other cities in Turkey. 9 Do the doctrines of ‘fair use’ or ‘fair dealing’ exist? 3 Are there any specific provisions of your copyright laws that Law No. 5846 provides certain cases of ‘fair use’, between articles 30 and 41, address the digital exploitation of works? Are there separate which are public order (use by governmental bodies), interest of the com- statutory provisions that do so? munity (laws, parliamentary speeches, educational uses, citation purposes, newspapers and news) and personal use. The additional article 4 of Law No. 5846, inserted in 2001 and amended in 2004, provides specific protection for copyrighted work against digital 10 What are the standards used in determining whether a exploitation. Accordingly, in the event of the violation or infringement of particular use is fair? copyrights through visual or acoustic transmission, including digital systems, by information content providers, the rights holders may request the Apart from the exclusivities determined for each form of work, the rule is removal of the work from the related content provider within three days. that permission must be obtained from the author. On the other hand, a Should the content provider not comply with such a request, the rights published work of art, a film or a picture can be used and copied without holder is entitled to contact a prosecutor, who will then ensure IP address- a permit for strictly personal use, provided that this use does not infringe based blocking of the website until the copyrighted work is removed. the interests of the rights holder. The main application of this fair use rule is copying copyrighted material, which has already been purchased, for per- 4 Do your copyright laws have extraterritorial application to deal sonal use. with foreign-owned or foreign-operated websites that infringe copyright? 11 Are architectural works protected by copyright? How? Turkish intellectual property law provides territorial protection and does Law No. 5846 specifically provides copyright protection for architectural not normally extend to extraterritorial application. On the other hand, the works by distinguishing whether or not a work has aesthetic value. In either procedure regarding digital exploitation of works described above is used case, the created work does have copyright protection, but the protection against foreign-owned, operated and hosted websites. Access to those web- of architectural projects lacking aesthetic value is determined in article sites providing infringing content may be blocked within Turkey upon the 2(3) under the scope of scientific and literary projects. On the other hand, application of the copyright holder. architectural works with aesthetic value are protected by article 4(3) as they are deemed to be fine art projects. As a result of such differentiation, aes- Agency thetic value is sought in order to protect the plan, project and structure all together. Otherwise, the work will be considered under the scope of scien- 5 Is there a centralised copyright agency? What does this agency tific and literary projects, meaning that the structure will not be protected do? by copyright. Copyright-related matters are governed by the General Directorate of Copyrights, which is overseen by the Ministry of Culture and Tourism. This 12 Are performance rights covered by copyright? How? agency was founded to aid the development of an intellectual rights system Article 80 of Law No. 5846 provides both moral and economic rights to and to conduct legal and administrative actions. performances. In this context, with the author’s permission, and without prejudice to the moral and economic rights of the author, performers who Subject matter and scope of copyright perform the work have the following neighbouring rights: • preventing the distortion and amendment of their performance, which 6 What types of works are copyrightable? may prejudice their reputation; Law No. 5846 sets forth certain criteria for a creation to be copyrightable. • authorising or preventing the fixation of their performance and the Accordingly, the creation shall be a product of an intellectual effort, carry its reproduction, sale, distribution, rental and lease, transmission and rep- creator’s attributions, and shall further be considered as a work of science resentation of such fixation; and and literature, music, fine arts, compilation or cinema. www.gettingthedealthrough.com 93

• authorising or preventing the release of the original or reproductions of and Tourism through a by-law. For instance, as of 2016, the registration fee the fixation of their performance to the public, and the transmission of for local and imported cinematography is 444.50 Turkish lira, while for local the performance through wired or wireless devices. and imported manufacture cinematography (DCP-35 MM-LD) the fee is 89 Turkish lira. In addition, the current fee for volunteer registration is 111.02 13 Are other ‘neighbouring rights’ recognised? How? Turkish lira. Phonogram producers, radio and television broadcasters and film producers have also been provided with neighbouring rights including the reproduc- 23 What are the consequences for failure to register a copyrighted tion, sale, distribution, rental and lease, transmission, retransmission and work? representation of the fixation. Neither Law No. 5846 nor the above-mentioned Regulation No. 26171 provide for consequences or sanctions for failing to register a copyrighted work. 14 Are moral rights recognised? However, such registration is important in order to demonstrate proof of Moral rights are defined specifically under the scope of Law No. 5846 and, ownership against any kind of counterclaim, and also to prevent violation of accordingly, the author is entitled to: release the work to the public, be the previously mentioned rights of the author. named as the author of the work, prohibit alterations, and regain possession of the work for a temporary time from the current owner under certain con- Ownership and transfer ditions. Unlike economic rights, moral rights cannot be transferred to third 24 Who is the owner of a copyrighted work? parties, but they can be used by the heirs of the author after his or her death, According to Law No. 5846, the owner of a copyrighted work is the person or under certain conditions. entity who created, adapted (ie, translated) or compiled the work. Further, article 8 of the Law provides that the director, composer of the original Copyright formalities score, screenwriter, dialogue writer and animator (if the work is an anima- 15 Is there a requirement of copyright notice? tion) have joint ownership of cinematographic works. Turkish law does not provide for any form of copyright notice requirements. 25 May an employer own a copyrighted work made by an 16 What are the consequences for failure to display a copyright employee? notice? Article 18 of Law No. 5846 provides that, unless it appears otherwise through Due to the fact that copyright notice is not required by law, there are no con- a private contract or the nature of the job, the ownership of a copyrighted sequences for failure to display such a notice. work belongs to the employer if the work has been created by the employee through the fulfilment of duties. In practice, it is advised that the employ- 17 Is there a requirement of copyright deposit? ment agreement includes an article referring to this issue. It must be noted that the moral rights remain the author’s, due to the nature of those rights. Turkish law does not provide for the requirement of copyright deposit. 26 May a hiring party own a copyrighted work made by an 18 What are the consequences for failure to make a copyright independent contractor? deposit? As with an employment relationship, the hiring party would own the eco- Due to the fact that copyright deposit is not required by law, there are no nomic rights of a copyright work made by an independent contractor. consequences for failure to make such a deposit. 27 May a copyrighted work be co-owned? 19 Is there a system for copyright registration? In the event that the work is created by more than one author and is divisible, Although Law No. 5846 provides natural protection commencing from each author is considered owner of the part he or she has created. Should the time of creation, pursuant to Regulation No. 26171 on Registration of the work be indivisible, the owner of the copyrighted work is the union of Intellectual and Artistic Works, published in the Official Gazette dated 17 all authors involved in the creation process. The commercial provisions in May 2006, cinematographic works and phonograms are subject to registra- regard to simple partnership are applied to such unions; therefore, if one of tion in order to protect the related rights and facilitate proof in the event of the authors refuses to participate in a transaction without valid grounds, the a dispute. court may allow the other authors in the union to conduct the transaction. Furthermore, copies of cinematographic, musical and literary works In addition, each author is entitled to take action severally if the copyright (except for periodicals) to be sold shall bear labels obtained from the Ministry is violated. of Tourism and Culture in order to prove the authenticity of the copies. 28 May rights be transferred? 20 Is copyright registration mandatory? While economic rights may be transferred, moral rights shall always remain As mentioned above, according to Regulation No. 26171, cinematographic the author’s. Such a transfer shall be conducted through a written contract and phonogram works shall be registered to be protected by copyright. and each of the rights subject to transfer shall be specified. Apart from for such works, there are no other mandatory registration processes. It has to be noted that volunteer registration is possible in order to 29 May rights be licensed? make revealing the author of the work more convenient. In addition, the author is entitled to issue an acknowledgment through a notary public stat- Copyrights may be subject to a licence through a licence agreement and, ing that the relevant work is created by him or her. accordingly, the author may undertake to transfer his or her rights on the work and, in return, the other party would be obliged to pay the amount 21 How do you apply for a copyright registration? determined in the contract. The subject of the licence contract is the usage of economic rights; therefore, the author shall keep his or her moral rights Film producers who make the first fixation of the film and phonogram pro- even after the execution of such a contract. The licence may be granted on ducers who make the first fixation of the musical work are obliged to register an exclusive or non-exclusive basis. such works. The application for registration shall be made to the General Directorate of Copyrights of the Ministry of Culture and Tourism, with an 30 Are there compulsory licences? What are they? application form and other relevant documentation set forth in Regulation No. 26171. The producers are obliged to submit a covenant shown in annex 1 Law No. 5846 does not explicitly provide for a compulsory licence, although of the Regulation. The covenant contains an acknowledgment that the pro- use of the copyrighted work when a union of authors exists, as defined ducer undertakes that the ownership of the work belongs to him or her, and above, may be considered a form of compulsory licence. that he or she is liable legally and criminally, if proven otherwise. 31 Are licences administered by performing rights societies? 22 What are the fees to apply for a copyright registration? How? Fees to apply for a copyright registration depend on the kind or form of the As per Law No. 5846, authors and neighbouring rights holders are entitled fixed work. Fees are updated from time to time by the Ministry of Culture to establish professional societies pursuant to regulations issued by the

Ministry of Culture. Such societies are empowered to act and enter into published in the Official Gazette dated 11 June 2015; hence, such annulment contracts on behalf of their members. will be valid as of 11 June 2016, meaning that the cabinet of ministers will not have the authority to release the creation to the public starting from 32 Is there any provision for the termination of transfers of 11 June 2016 unless a new regulation compliant with the Court’s decision rights? is enacted. Article 58 of Law No. 5846 provides the principals for the termination of transfer of rights. This article is entitled ‘Right of Withdrawal’ and provides 36 Does copyright duration depend on when a particular work that the author is entitled to withdraw if the transferee has not duly ben- was created or published? efited from the work within a determined or reasonable period and con- Works protected within the scope of Law No. 5846 benefit from natural pro- sequently violated the benefits of the author. In such a case, the author is tection mechanisms commencing from the time of creation. obliged to send prior notification to the transferee and grant an extension via a notary public, unless the benefits of the author are harmfully violated, 37 Do terms of copyright have to be renewed? How? in which case the notification would not be mandatory. After the extension Terms of copyright cannot be renewed and, following the expiration of the period, the withdrawal can be completed upon a withdrawal notification terms defined above, the work enters the public domain. being served by a notary public to the transferee. The transferee can file a lawsuit against the withdrawal within four weeks following the notification. 38 Has your jurisdiction extended the term of copyright protection? 33 Can documents evidencing transfers and other transactions The terms regarding each of the above-mentioned conditions of copyright be recorded with a government agency? protection are absolute and cannot be stipulated otherwise. There are no specific provisions suggesting that a government agency shall keep records of the transfers and other transactions. Copyright infringement and remedies

Duration of copyright 39 What constitutes copyright infringement? Since there are two forms of rights, moral and economic, Law No. 5846 pro- 34 When does copyright protection begin? vides for infringement of both types. Releasing the work to the public, alter- Works protected within the scope of Law No. 5846 benefit from natural pro- ing the work without the prior consent of the author and not using the name tection mechanisms commencing from the time of creation. of the author would constitute an infringement of moral rights, whereas adapting, performing, transmitting, reproducing or distributing the work 35 How long does copyright protection last? without the prior consent of the author would constitute an infringement Copyright protection lasts for the lifetime of the author and for 70 years of economic rights. following his or her death, or the death of the last remaining person in a union of authors. If the author is a legal entity, the protection period is 70 40 Does secondary liability exist for indirect copyright years commencing from the release of the work to the public. The protec- infringement? What actions incur such liability? tion period regarding works publicised after the death of their owner is 70 Secondary liability exists for indirect copyright infringement for persons years from the date of death. If the identity of the author is uncertain, the who contribute to the infringement, for example, by purchasing an unau- protection period is 70 years following the release to the public. thorised reproduction of a work. Article 47, amended as of 14 September 2014, has stipulated rights with respect to creations that are considered as significant for the country’s 41 What remedies are available against a copyright infringer? culture whereby they can be released to the public through a cabinet of As per article 68 of Law No. 5846, rights holders whose moral and economic ministers decree following the death of the author, provided that the rights rights, as mentioned above, are violated through infringement, are entitled holders reserve their right to demand a reasonable remuneration. In order to the following remedies: to enact such decree, the creation shall originate from Turkey or from a • to ask that the infringement cease with immediate effect; and Turkish citizen abroad. • to claim compensation for three times the amount that would have The decree shall consist of the following: been stipulated, had a contract been drawn up for the use of the work • name of the creation and the author; subject to the infringement. • seat or institution that will be using such rights; • method for determining the remuneration to be paid to the rights hold- In addition, if the reproduced copies have not been put on sale, the author ers upon the demand and by which entity; and may request: • the purposes of use of the revenue, if any. • that the film, patterns or such materials used in the reproduction process be destroyed or given to the author in consideration of a reason- On the other hand, the Turkish Court of Constitution has annulled the first able price, which shall not exceed reproduction costs; or sentence of the amended provision through Case No. 2014/177, Decision • to be compensated for three times the amount that would have been No. 2015/49. It has been stated in the said decision that article 35 of the stipulated had a contract been drawn up for the use of the work subject Turkish Constitution, which covers rights on moveable and immoveable to the infringement. assets as well as intangible rights, guarantees the proprietary rights of the citizens. Furthermore, it has been stated that article 13 of the Constitution In the event that the reproduced copies have been put on sale, the rights provides that fundamental rights and freedoms can only be limited through holder may take any of the actions mentioned above, at their own discretion. a law and in accordance with the reasons set forth in the Constitution. An author who requests compensation may also claim fulfilment of any Therefore, limitations on proprietary rights cannot be conducted contrary conditions that may have been determined in a contract. to principles of democratic society and principle of proportionality. The Court argued that even though the authority of the cabinet of ministers to 42 Is there a time limit for seeking remedies? release the creation to the public is limited to creations that are deemed significant for the country’s culture, such criterion is subjective and providing An author whose moral rights have been infringed may file a lawsuit subject a basis for the authorities to act and use their powers beyond the scope of to non-pecuniary claims. In addition, if any economic rights have been vio- such criterion. Furthermore, although a balance is sought between public lated, the author may file a case and request compensation for all damages benefit and personal benefit through reserving the right ‘to demand a rea- caused as a result of the infringement. Since Law No. 5846 does not pro- sonable remuneration’, providing a right instead of paying the remunera- vide a time limit for seeking remedies, general rules provided by the Code tion directly is contrary to the guarantees on proprietary rights provided in of Obligations Law No. 6098 shall be applied for such a limit. It must be article 35 of the Constitution. noted that such actions are considered torts, and Law No. 6098 stipulates The Turkish Court of Constitution also provided the annulment of such a time limit of two years starting from the date the infringement has been criterion shall come into force one year after the said decision is published ascertained by the author and, in any case, compensation shall be requested in the Official Gazette in order to allow the legislator time to enact a new within 10 years of the infringement date. rule complying with the provisions of Constitution. The said decision was www.gettingthedealthrough.com 95

43 Are monetary damages available for copyright infringement? In accordance with article 72 of Law No. 564, those who produce, possess As mentioned above, according to article 68 of Law No. 5846, an author or sell software or technical materials that are used to block any software whose rights are violated through the infringements mentioned above is aiming to prevent the illegal reproduction of a computer program shall be entitled to claim compensation for three times the amount that would have sentenced to between six months and two years in prison. been stipulated had a contract been drawn up for the use of the work subject Applying the above-mentioned criminal provisions and sanctions is to the infringement. An author whose moral rights have been infringed may subject to the complaint of the rights holders. In order to issue a valid com- file a lawsuit subject to non-pecuniary claims. In addition, if any economic plaint, the documentation that proves the rights holding or membership of rights have been violated, the author may file a case and request compensa- a professional society shall be submitted. Upon receiving the complaint, the tion for all damages caused as a result of the infringement and the profits of public prosecutor can take interim measures to protect the work and rights. the infringer, depending on the infringement actions. The prosecutor can also stop reproduction of the work, if deemed necessary. Such a decision shall be submitted to the judge within 24 hours in order 44 Can attorneys’ fees and costs be claimed in an action for to be approved. copyright infringement? 46 Are there any specific liabilities, remedies or defences for According to Turkish legislation, the party that loses the lawsuit shall bear online copyright infringement? the judicial costs of the whole litigation and the attorneys’ fees of the coun- terparty. It must be noted that the court determines the payment of attor- There are no specific liabilities, remedies or defences for online copyright neys’ fees, which are designated and the tariffs published annually by the infringement provided in Law No. 5846. Union of Turkish Bar Associations. In other words, should the winning party have agreed a higher fee with his or her attorney than that stipulated 47 How may copyright infringement be prevented? in the tariff, the court would not make an order on the excess. Turkish law and regulations do not provide a specific prevention method for copyright infringements. However authors, through their personal efforts 45 Are there criminal copyright provisions? What are they? or professional societies, and holders of economic rights, usually moni- Criminal copyright provisions are set forth in articles 71 to 75 of Law No. tor their copyrighted work. Should an infringement be caught in the early 5846, as follows: stages, the author and other rights holders have the possibility of pursuing • reproducing, representing, copying, altering, distributing, releasing to preliminary measures from the relevant courts to prevent the reproduction, the public through any kind of device, publishing, selling, leasing, lend- transmission, broadcast or distribution of such work. ing, buying for commercial purposes, importing, exporting, possessing for personal use and storing without the written consent of the author Relationship to foreign rights shall result in a prison sentence of between one and five years, or a cor- 48 Which international copyright conventions does your country responding judicial fine; belong to? • plagiarising someone else’s work shall result in a prison sentence of Turkey is a party to several international agreements and conventions. In between six months and two years, or a corresponding judicial fine. In 1995 Turkey ratified the Berne Convention for the Protection of Literary the event that such action has been conducted through distribution or and Artistic Works and the Paris amendments of 1979. In addition, Turkey publishing, the maximum prison sentence shall be five years and a judi- is also a party to the TRIPs Agreement, the WIPO Performances and cial fine cannot be applied; Phonograms Treaty, the WIPO Copyright Treaty and the International • citing from a literary work without providing reference shall result in a Convention for the Protection of Performers, Producers of Phonograms prison sentence of between six months and two years, or a correspond- and Broadcasting Organizations held in Rome. ing judicial fine; • releasing the context of a work, which was not explicit, to the public 49 What obligations are imposed by your country’s membership without the consent of the author shall result in a prison sentence of up of international copyright conventions? to six months; • giving wrongful or deceptive references regarding a work shall result in Turkish law and the Turkish Constitution do not specifically determine the a prison sentence of up to six months; situation of copyright conventions. On the other hand, the Constitution • copying, distributing, reproducing or publishing a work, performance, provides a general rule for the implementation of international treaties phonogram or production under someone else’s name shall result in a and conventions in domestic law. In that manner, it must be stated that, prison sentence of between three months and two years; and according to article 90 of the Constitution, international agreements which • removing information from the work that identifies its author, import- Turkey has signed and that have been duly ratified by the Grand National ing, distributing or releasing the original or copies of such works, and Assembly shall be considered equal to other national laws. In other words, the unlawful digital exploitation of copyrighted works shall result in international agreements that have already obtained parliamentary ratifi- content providers who continue to publish the infringing material on cation are directly enforceable in Turkey, and any rights arising from such their websites being sentenced to between three months and two years agreements may be claimed before Turkish courts. in prison, unless the original crime requires a longer sentence.

Sıdıka Baysal Hatipoğlu [email protected] Gökhan Uğur Bağcı [email protected] Benan Ilhanli [email protected]

Cumhuriyet Cad. No:147/1 Tel: +90 212 219 16 30 Harbiye Fax: +90 212 219 16 32 Istanbul www.bb-legal.com Turkey

United Kingdom

Douglas Peden, Varuni Paranavitane, Anna Rawlings and Robert Guthrie Osborne Clarke

Legislation and enforcement Agency 1 What is the relevant legislation? 5 Is there a centralised copyright agency? What does this The main copyright legislation in the UK is the Copyright, Designs and agency do? Patents Act 1988 (CDPA), which has been amended by other legislation on There is no centralised copyright agency but there are a large number of numerous occasions since it came into force on 1 August 1989. licensing bodies that collect royalties or license a range of rights for various The UK is also currently a member of the European Union and there- industries and categories of rights holders (these include the Phonographic fore, UK law should be in accordance with the various European Union Performance Limited (PPL), the Performing Rights Society (PRS), the directives that impact on copyright, such as the Copyright Directive Newspaper Licensing Agency and the Copyright Licensing Agency). 2001/29 (sometimes called the Information Society Directive) and the A digital copyright exchange called the Copyright Hub has also Software Directive (2009/24/EC). recently been set up, which enables copyright owners to offer their rights for licence. 2 Who enforces it? In addition, the Copyright Tribunal has powers to resolve certain commercial licensing disputes. There are a number of public bodies who have powers of enforcement of relevant criminal offences in the UK, including local weights and measures Subject matter and scope of copyright authorities (Trading Standards), the Office of Fair Trading and the police. Her Majesty’s Revenue & Customs also has powers to seize pirated goods 6 What types of works are copyrightable? that are entering the UK. The categories of work protected by copyright in the UK are: (i) original lit- However, in many cases copyright will need to be enforced by the erary, dramatic, musical and artistic works; (ii) sound recordings, films and copyright owner, an exclusive licensee or in some circumstances a non- broadcasts; and (iii) typographical arrangements of published editions. exclusive licensee or representative body, either through a private criminal ‘Literary work’ includes (i) a table or compilation other than a data- prosecution or, more usually, civil proceedings. base, (ii) a computer program, (iii) preparatory design material for a computer program, and (iv) a database. 3 Are there any specific provisions of your copyright laws that ‘Dramatic work’ includes a work of dance or mime. address the digital exploitation of works? Are there separate statutory provisions that do so? 7 What types of rights are covered by copyright? UK law provides for a communication right for all categories of copyright- The owner of copyright in a work has the exclusive right to: protected work which includes the making available to the public of the • copy the work; work by electronic transmission in such a way that members of the pub- • issue copies of the work to the public; lic may access it from a place and at a time individually chosen by them • rent or lend the work to the public; (sometimes referred to as the on-demand right (section 20 CDPA)). • perform, show or play the work in public; The Digital Economy Act 2010 also provides for a number of measures • communicate the work to the public (which includes an ‘on-demand’ to reduce copyright infringement caused by file-sharing on the internet. right to make the work available to the public at a time and place chosen by them); and 4 Do your copyright laws have extraterritorial application to • make an adaptation of the work. deal with foreign-owned or foreign-operated websites that infringe copyright? 8 What may not be protected by copyright? Yes, the UK courts have generally taken the view that foreign-owned or Although the underlying computer software of video games and other foreign-operated websites that are at least partially targeted to the UK forms of interactive entertainment will be protected by copyright as liter- can infringe UK copyright laws, either directly or as a joint tortfeasor. ary works, it is not clear that the video games themselves, as experienced Enforcement of UK laws against foreign-owned and foreign-operated by the player of the game, are covered by the current categories of work websites can be challenging but the UK courts do have powers to grant that are protected under UK law (although individual elements of the video website blocking orders that require internet service providers to take game, such as graphics and music, will be protected). steps to block access to the website through its internet access services. To obtain a website blocking order, the rights holder will need to show that the 9 Do the doctrines of ‘fair use’ or ‘fair dealing’ exist? users and/or the operators of the websites will infringe. The High Court There is no general fair use or fair dealing defence to copyright infringe- will consider various factors before relief will be granted such as whether ment under UK law. However, three specific defences provide that copy- an injunction would (i) be necessary, (ii) be effective, (iii) be dissuasive, (iv) right is not infringed by fair dealing with a work for the purposes of (i) be not unnecessarily complicated or costly, (v) avoid barriers to legitimate non-commercial research and/or private study (section 29 CDPA); (ii) trade, (vi) be fair and equitable and strike a ‘fair balance’ between the appli- criticism or review, quotation and/or reporting current events (section 30 cable fundamental rights, and (vii) be proportionate. CDPA); and (iii) caricature, parody or pastiche (section 30A CDPA). In addition, there are defences for (i) certain temporary copies which are an essential part of a technological process (section 28A CDPA); (ii) text and data analysis for non-commercial research (section 29A CDPA); and (iii) incidental inclusion (section 31 CDPA).

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10 What are the standards used in determining whether a notice is not required to ensure protection, however it is often sensible to particular use is fair? include such a notice to alert third parties to the existence of the right. It The UK courts have held that the factors to take into account when judg- is particularly recommended to use such a notice in relation to content ing whether any dealing was fair include: (i) the degree to which infring- held online, where copyright infringement is commonplace. An example ing use competes with exploitation of the copyright protected work by the of such a notice would be to include the copyright logo (©), the creator’s owner; (ii) the use and importance of what was taken; (iii) the motive of the name and the year the work was made at the bottom of the relevant web- infringer; (iv) the purpose of the use; and (v) whether the use was necessary page, for example: © Osborne Clarke LLP 2016. to make the point. 16 What are the consequences for failure to display a copyright 11 Are architectural works protected by copyright? How? notice? A work of architecture, being a building or a model for a building, is pro- Not applicable as there is no requirement of a copyright notice. See ques- tected as an artistic work (section 4(1)(b) CDPA). However, the protection tion 15. afforded to works of architecture is significantly reduced because is not infringed by making a graphic work representing it, or making a photo- 17 Is there a requirement of copyright deposit? graph or film of it, or making a broadcast of a visual image of it (section There is no requirement of copyright deposit. 62 CDPA). 18 What are the consequences for failure to make a copyright 12 Are performance rights covered by copyright? How? deposit? Performers of dramatic, musical and certain other performances have a Not applicable as there is no requirement of copyright deposit. number of specific performers’ rights. This system of performers’ rights is highly complicated in part due to the manner in which the regime has 19 Is there a system for copyright registration? subsequently been amended to take account of the UK’s international There is no formal system for the registration of copyright, as copy- treaty obligations. right arises automatically in the UK on creation of the work. The British Performers’ economic rights (as opposed to moral rights, discussed Copyright Council recommends self-recording of copyright in certain situ- below) can be classified as non-property rights (the original rights granted ations where an owner may require proof of existence of a work at a par- under the CDPA) and property rights (additional rights that have been sub- ticular date, for example, to use against potential infringers in the future. sequently granted). An example of self-recordal of copyright is for the creator to send a copy A performer’s non-property economic rights are infringed: of the work by post to themselves and keep the sealed, dated envelope in a • if without their consent their performance is recorded or broadcast safe place, unopened. Alternatively, creators may wish to file a copy of their live, a recording of their performance is copied, or copies of a record- work with their professional adviser (such as a lawyer) or their industry ing of their performance are issued to the public (section 182 CDPA); body. There are also a number of online private companies who offer copy- • through the use of a recording made without consent (section 183 right registration services. When using these sites, users should beware CDPA); and that these services are not connected to the UK Intellectual Property Office • by the importing, possessing or dealing in an illicit recording (section and the utility of such services is not established. 184 CDPA). 20 Is copyright registration mandatory? These rights are termed ‘non-property’ rights because they cannot be There is no formal system for the registration of copyright. See question 19. transferred or assigned. A performer’s property rights consist of a reproduction right, distribu- 21 How do you apply for a copyright registration? tion right, rental and lending right, and a making available right (sections 182A–182 CDPA). Not applicable as there is no formal system of copyright registration. See question 19. 13 Are other ‘neighbouring rights’ recognised? How? 22 What are the fees to apply for a copyright registration? Neighbouring rights in the UK include: • a publication right for those who publish previously unpublished works; Not applicable as there is no formal system of copyright registration. See • artists’ resale right; and question 19. • various anti-circumvention rights, which enable rights holders to take action against acts or devices that are designed to get around anti- 23 What are the consequences for failure to register a piracy devices and technological measures. copyrighted work? Not applicable as there is no formal system of copyright registration. See Although circuit diagrams are not explicitly identified as a protected question 19. class of work in the CDPA, the UK courts have held circuit diagrams to be both artistic works and literary works (Anacon v Environmental Research Ownership and transfer Technology). 24 Who is the owner of a copyrighted work? 14 Are moral rights recognised? The creator of the work is the first owner, unless the work is created by an Moral rights of the author are recognised under the CDPA. The main rights employee in the course of their employment. In that case, their employer is are the right to be identified as the author or director; the right to object the first owner of copyright in the work. to derogatory treatment of a work; and the right not to have a work falsely attributed (sections 77, 80 and 84 CDPA). 25 May an employer own a copyrighted work made by an Performers also have moral rights, namely the right to be identified employee? and to object to derogatory treatment of the performance. Yes, if the copyright work is created during the course of the employee’s In addition, a person who, for private and domestic purposes commis- employment then the employee will be the first owner, subject to any sions the taking of a photograph or the making of a film, has the right not to: agreement to the contrary. have copies of the work issued to the public; the work exhibited or shown to the public; or the work communicated to the public. 26 May a hiring party own a copyrighted work made by an independent contractor? Copyright formalities Yes, provided that there is an agreement that assigns ownership of copy- 15 Is there a requirement of copyright notice? right to the hiring party. Assignment of ownership of copyright to the hiring party does not occur automatically by virtue of the hiring relationship. There is no requirement to include a copyright notice. Copyright protection arises automatically in the UK on creation of the work and a copyright

27 May a copyrighted work be co-owned? circumstances where works created or published when previous versions Yes, a copyright work can be co-owned by individuals and entities. of the law applied now have a different length of copyright duration. Co-ownership can, however, lead to complicated issues in relation to further dealings in the copyright and enforcement against infringements. 37 Do terms of copyright have to be renewed? How? Terms of copyright do not have to be renewed. In the same way as copy- 28 May rights be transferred? right protection arises automatically, it is also extinguished automatically Yes, copyright may be transferred, or ‘assigned’. Assignments must be once the relevant time period lapses (see question 36). in writing. 38 Has your jurisdiction extended the term of copyright 29 May rights be licensed? protection? Yes, copyright may be licensed. The term of copyright protection was extended from life of author plus 50 years to life of author plus 70 years in 1995. 30 Are there compulsory licences? What are they? The UK also extended copyright protection for sound recordings and musicians’ rights in sound recordings from 50 to 70 years in 2013. The Compulsory licences do not generally exist under English law. However, change in the law was implemented to allow songwriters and other per- there are specific compulsory licence provisions that may apply in circum- formers such as session musicians to continue to profit from their work stances where copyright has been revived. throughout their life. The legislation was coined ‘Cliff’s Law’ as Cliff Richard was a well-known supporter of the changes. 31 Are licences administered by performing rights societies? It should also be noted that the UK government has recently repealed How? section 52 CDPA, which restricted copyright protection for industrial There are a number of performing rights societies administering licensing designs or works to 25 years to ensure consistency with the law on regis- schemes and collecting royalties in the UK. The precise operation of such tered designs (see ‘Update and trends’). schemes varies. Copyright infringement and remedies 32 Is there any provision for the termination of transfers of rights? 39 What constitutes copyright infringement? As a general rule, an assignment of ownership of copyright takes effect and The categories of copyright infringement for some or all categories of is not terminated by operation of copyright law. It may, however, be able copyright work are: to be terminated by one of the parties depending on what terms they have • copying of the work (section 16 CDPA); agreed in the assignment. • issuing copies of the work to the public (section 17 CDPA); • renting or lending the work to the public (section 18 CDPA); 33 Can documents evidencing transfers and other transactions • the performance, playing or showing of the work in public (section 19 be recorded with a government agency? CDPA); • the communicating to the public of the work, which includes the Copyright is an asset over which is it possible to take security. For example, broadcasting of the work and the making available to the public of the copyright can be the subject of a fixed or floating charge or a legal mortgage. work by electronic transmission in such a way that members of the public may access it from a place and at a time individually chosen by Duration of copyright them – the so-called ‘on-demand’ right (section 20 CDPA); and 34 When does copyright protection begin? • making of an adaptation of the work to the public (section 21 CDPA). Copyright protection usually begins automatically when the work is cre- 40 Does secondary liability exist for indirect copyright ated. For example, copyright protection in a photograph starts when the infringement? What actions incur such liability? photograph is taken and copyright in a film begins when the film is made. Secondary liability does exist and is incurred when a person, without the 35 How long does copyright protection last? copyright owner’s permission: • imports into the United Kingdom, otherwise than for his or her private The length of copyright protection depends on the category of the work. In and domestic use, an article which is, and which he or she knows or has most cases copyright protection lasts for a period of 70 years from the end reason to believe is, an infringing copy of the work (section 22 CDPA); of the calendar year in which the author of the work dies (or the last author • possesses in the course of business an article which is, and which he in cases of joint authorship). or she knows or has reason to believe is, an infringing copy of the work Please see the table below for the usual length of copyright in particu- (section 23(a) CDPA); lar categories for works that fall under the CDPA. Earlier Acts such as the • sells or lets for hire, or offers or exposes for sale or hire an article which Copyright Act 1956 and Copyright Act 1911 can still apply to works created is, and which he or she knows or has reason to believe is, an infringing or published while the earlier Acts were in force. copy of the work (section 23(b) CDPA); • in the course of a business exhibits or distributes an article which is, Category of work Usual length of copyright and which he or she knows or has reason to believe is, an infringing Literary, dramatic, musical and 70 years from the end of the calendar year in copy of the work (section 23(c) CDPA); artistic works which the author dies • distributes otherwise than in the course of a business to such an extent 70 years from the end of the calendar year in as to affect prejudicially the owner of the copyright an article which is, Sound recordings which the recording is first published and which he or she knows or has reason to believe is, an infringing copy of the work (section 23(d) CDPA); 70 years from the end of the calendar year • makes, imports into the United Kingdom, possesses in the course of of the death of the director, author of the Films business or sells or lets for hire, or offers or exposes for sale or hire screenplay, author of the dialogue and the composer of the soundtrack to the film an article specifically designed or adapted for making copies of that work, knowing or having reason to believe that it is to be used to make 50 years from the end of the calendar year in Broadcasts infringing copies (section 24(1) CDPA); which the work was made • transmits the work by means of a telecommunications system (other- Typographical arrangement of 25 years from the end of the calendar year in wise than by communication to the public), knowing or having reason published editions which the edition was first published to believe that infringing copies of the work will be made by means of the reception of the transmission in the United Kingdom or elsewhere 36 Does copyright duration depend on when a particular work (section 24(2) CDPA); was created or published? • gives permission for a place of public entertainment to be used for a For most copyright works, copyright duration will be calculated from performance which infringes copyright unless when he or she gave when the work was created or published (see question 35). 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44 Can attorneys’ fees and costs be claimed in an action for Update and trends copyright infringement? The following updates and trends are of note: Yes, the defendant is usually liable to a sizeable percentage of the claim- • the repeal of section 52 CDPA from 28 July 2016 has the effect ant’s costs, if the claimant is successful. of extending copyright protection for certain industrial designs that would qualify as an ‘artistic work’ under the copyright 45 Are there criminal copyright provisions? What are they? legislation (eg, an original design for a piece of furniture). The There is criminal liability for certain acts in relation to an infringing copy result of this repeal is that copyright that may have lapsed for of a copyright work such as: making it for sale or hire, importing it into certain artistic designs will be revived from 28 July 2016. As well as 3D copies, 2D images of the industrial designs will also the UK other than for private use, distributing it in the course of business, be covered by the extended copyright. As such, publishers making an article specifically designed for making copies, and causing the and museums that may use images of industrial designs in copyright work to be performed, played or shown in public. For criminal the course of trade (eg, by selling postcards or books) may be liability, it will be necessary to show that the defendant had the relevant liable for copyright infringement unless they obtain licences to knowledge or reasonable belief that the copy is an infringing copy or that continue to use the images or deplete their existing stock by 28 he or she is dealing with infringing copies. A person found guilty of such January 2017; an offence can face a fine of up to £50,000 or a term up to six months • the new caricature, parody or pastiche defence, which came in prison. into force in October 2014, but has yet to be fully tested by the courts; • the European Commission’s proposed changes to copyright law 46 Are there any specific liabilities, remedies or defences for as part of its digital single market initiative; online copyright infringement? • in particular, the Commission’s draft portability regulation There are specific defences for certain temporary copies which are an which would enable copyright protected works to be made essential part of a technological process and the sole purpose of which is to available cross-border for subscribers who are temporarily enable (i) a transmission of the work in a network between third parties by resident in another member state; and an intermediary or (ii) a lawful use of the work. The Court of Justice of the • the potential of Brexit on the copyright law regime in the UK in the years to come. European Union has confirmed that this includes on-screen and cached copies that are produced while browsing the internet. The Digital Economy Act 2010 also provides for a number of measures to reduce copyright infringement caused by file-sharing on the internet. permission he or she believed on reasonable grounds that the performance would not infringe copyright section 25 CDPA); or 47 How may copyright infringement be prevented? • supplies apparatus that is used to infringe copyright by a public performance of the work or by the playing or showing of the work in public It is possible to alert Her Majesty’s Revenue & Customs as to copyright (section 26 CDPA). infringing material to be detained at border control. Infringement may be reduced by inserting a copyright notice on the 41 What remedies are available against a copyright infringer? work indicating the date and the owner of a particular work, which will alert third parties to the existence of copyright. Remedies would include damages, injunctions, account of profits, deliv- Enforcing copyright may deter third parties for attempting to carry out ery up and forfeiture. Interlocutory relief is also available and can include infringing acts. interim injunctions, search orders and freezing orders. The courts can order additional damages beyond the loss caused to the Relationship to foreign rights copyright owner in particular if the infringement is flagrant or the defendant has accrued a significant benefit by reason of the infringement. 48 Which international copyright conventions does your country belong to? 42 Is there a time limit for seeking remedies? The United Kingdom is party to various international treaties; the follow- In England and Wales, the limitation period is six years. ing are the most important in relation to copyright: • the Berne Convention for the Protection of Literary and Artistic Works 43 Are monetary damages available for copyright infringement? (the Berne Convention); Yes, damages or an account of profits or a royalty rate if the infringer had • the Universal Copyright Convention of 1952 (UCC); taken a licence to use the work from the copyright owner.

Douglas Peden [email protected] Varuni Paranavitane [email protected] Anna Rawlings [email protected] Robert Guthrie [email protected]

One London Wall Tel: +44 207 105 7000 London www.osborneclarke.com EC2Y 5EB United Kingdom

• the Rome Convention for the Protection of Performers, Producers 49 What obligations are imposed by your country’s membership of Phonograms and Broadcasting Organisations 1961 (the of international copyright conventions? Rome Convention); Generally international treaties do not have direct effect in England and • the Convention for the Protection of Producers of Phonograms Wales, thus domestic legislation must be enacted to give effect to treaty against the Unauthorised Duplication of their Phonograms 1971 (the obligations. The Berne Convention ensures that nationals of one contract- Phonograms Convention); ing state enjoy protection in another contracting state. Each treaty pre- • the Agreement on Trade-Related Aspects of Intellectual Property scribes certain minimum levels of protection that the UK must provide, for Rights 1994 (the TRIPS Agreement); example the minimum term of protection under the Berne Convention is • the WIPO Copyright Treaty; and 50 years. • the WIPO Performances and Phongrams Treaty.

The Berne Convention and UCC are the two major copyright conventions. The Berne and Rome Conventions were supplemented and updated by the two WIPO treaties. There are a number of other conventions of lesser importance that have not been incorporated in the above list.

www.gettingthedealthrough.com 101

United States

Andrew H Bart, Steven R Englund and Susan J Kohlmann Jenner & Block LLP

Legislation and enforcement 4 Do your copyright laws have extraterritorial application to deal with foreign-owned or foreign-operated websites that 1 What is the relevant legislation? infringe copyright? The main copyright statute in the United States is the Copyright Act, which US copyright law generally does not have extraterritorial effects. However, is codified in Title 17 of the United States Code (17 USC section 101 et seq), US law would not view as extraterritorial the enforcement of the Act against and is also sometimes referred to as the Copyright Act of 1976. It originally infringing transmissions from a foreign-operated website into the US. took effect on 1 January 1978, and has been amended numerous times since. Accordingly, there has been successful enforcement of the US Copyright An important amendment to the Copyright Act was the Digital Millennium Act against foreign-based sites. The US also has applied civil forfeiture Copyright Act of 1998 (DMCA). In addition, 18 USC section 2319 provides provisions to seize US-registered internet domain names associated with for criminal penalties for certain copyright infringement actions. foreign-owned and foreign-operated websites that infringe US copyrights by targeting distribution of infringing copies into the US. 2 Who enforces it? The copyright laws of the United States are generally enforced through Agency civil lawsuits initiated by copyright owners. In certain circumstances, as Is there a centralised copyright agency? What does this agency described in question 45, the United States federal government may initi- 5 do? ate a criminal copyright enforcement action against an alleged infringer at the request of the copyright owner. Copyrights are also sometimes enforced The Copyright Office is the centralised copyright agency in the US. It against imported goods through actions at the US International Trade administers various provisions of the Act and serves as an office of record Commission. A copyright owner can also record its rights with US Customs where private parties’ claims to copyright are registered and where docu- and Border Protection (CBP). CBP will then seek to stop the infringing ments relating to copyright may be recorded to give notice thereof. products at the border and prevent them from entering the United States. The Copyright Office also: • furnishes information to the general public about copyright law; 3 Are there any specific provisions of your copyright laws that • provides expert assistance to Congress and the Executive Branch on address the digital exploitation of works? Are there separate copyright matters; statutory provisions that do so? • analyses and assists in drafting copyright legislation and undertakes studies for Congress; Various specific provisions of the Copyright Act address digital exploita- • assists the Executive Branch’s Department of State, the US Trade tions. Many of these provisions were added by the DMCA. Representative’s Office and the Department of Commerce in negotiat- First, Chapter 12 of the Act, which was added by the DMCA, provides ing international intellectual property agreements; civil and criminal remedies for certain circumventions of technological pro- • provides advice to Congress on compliance with international agree- tection measures that control access to works or protect works from copy- ments; and ing or other infringement (digital rights management), as well as for certain • provides technical assistance to other countries in developing their violations involving the integrity of copyright management information. own copyright laws. Second, section 512 of the Act, which was also added by the DMCA, creates a conditional safe harbour for online service providers by shielding Additionally, a separate unit of the Library of Congress, the Copyright them from money damages and limiting injunctive relief for certain acts of Royalty Board, determines royalty rates and terms, and distributes roy- direct and secondary liability when they meet certain requirements. In par- alties, under statutory licences in the music, cable and satellite televi- ticular, safe harbours are provided for transitory digital network commu- sion industries. nications, system caching, storage of information at the direction of a user and the provision of information location tools, subject to detailed require- Subject matter and scope of copyright ments for each safe harbour and certain generally applicable requirements. Third, the DMCA expanded the section 114 statutory licence for sound 6 What types of works are copyrightable? recording performance to include internet webcasting, and added a related US copyright law protects any qualifying ‘original works of authorship’ statutory licence for ephemeral copies made in connection with the statu- that are fixed in a tangible medium of expression so as to be perceptible tory performance licence (section 112(e)). for more than a transitory duration. The fixation need not be directly per- Other provisions of the Copyright Act that were not added by the ceptible, so long as it may be perceived with the aid of a machine or device. DMCA address additional specialised aspects of digital exploitation. Copyrightable works include the following categories: Among others, section 106(6) provides a sound recording performance • literary works, including characters; right limited to performances by means of a digital audio transmission; sec- • musical works, including any accompanying words; tion 115 provides a statutory licence for ‘mechanical’ reproduction and dis- • dramatic works, including any accompanying music; tribution of musical works with special provisions for ‘digital phonorecord • pantomimes and choreographic works; deliveries’; section 117 addresses certain reproduction and adaptation of • pictorial, graphic and sculptural works; computer programs; and the Audio Home Recording Act of 1992 (codified • motion pictures and other audiovisual works; in Chapter 10) addresses certain digital audio recording devices and media. • sound recordings created on or after 15 February 1972, as well as certain earlier foreign sound recordings entitled to US protection under international treaties (earlier recordings are generally protected under state law); and

• architectural works created on or after 1 December 1990 (or created 2002, are eligible for protection. Architectural works embodied in plans but not published or constructed prior to that date, and constructed by published or buildings constructed prior to 1 December 1990 are not eligi- 31 December 2002). ble for copyright protection.

7 What types of rights are covered by copyright? 12 Are performance rights covered by copyright? How? The Copyright Act generally gives the owner of a copyright the exclusive The US Copyright Act provides a general right of public performance for right to: literary, musical, dramatic and choreographic works, pantomimes, and • reproduce the work in copies or phonographic records; motion pictures and other audiovisual works. The Act also provides public • prepare derivative works based upon the work; performance rights for sound recordings, but these are limited to perfor- • distribute copies or phonographic records of the work to the public by mances by means of a digital audio transmission. sale or other transfer of ownership, or by rental, lease or lending; To be a ‘public’ performance, the work must be performed in a place • perform the work publicly, in the case of literary, musical, dramatic open to the public or to a ‘substantial number’ of people outside of a family and choreographic works, pantomimes and motion pictures and other and its social acquaintances, or be transmitted in such a way that members audiovisual works; of the public are capable of receiving it. Thus, a public performance may • display the copyrighted work publicly, in the case of literary, musical, be accomplished by rendering a work to an audience present in a public or dramatic and choreographic works, pantomimes, and pictorial, graphic semi-public place or by transmitting a work by radio, television, internet or or sculptural works, including the individual images of a motion pic- other means. ture or other audiovisual work; and Exemptions are provided for various kinds of performances in special- • perform the work publicly by means of a digital audio transmission, in ised circumstances. For example, performances of non-dramatic literary or the case of sound recordings. musical works to an audience present where the performance occurs (not transmissions) are exempted if they are not for commercial advantage; no 8 What may not be protected by copyright? compensation is paid to the performers or organisers; and admission is free The following may not be protected by copyright: (or where the copyright owner has not objected, any proceeds are used for • works that have not been fixed in a tangible form of expression; charitable purposes). • words and short phrases such as names, titles and slogans; • familiar symbols or designs; 13 Are other ‘neighbouring rights’ recognised? How? • mere variations of typographic ornamentation, lettering or colouring; While US law does not use the term ‘neighbouring rights,’ it recognises vari- • mere listings of ingredients or contents; ous rights similar to ones covered by that term in other countries. Rights of • facts, ideas, procedures, processes, systems, methods, concepts, prin- performers and producers in audiovisual works and most sound recordings, ciples, discoveries, as distinguished from descriptions, explanations as well as creators of photographs and many databases, are protected in the or illustrations; US as a matter of federal copyright law. In addition, other provisions of US • blank forms that are designed for recording information and do not federal or state law provide protection that might be considered neighbour- themselves convey information; and ing rights: • works consisting entirely of information that is common property and • sound recordings created before 15 February 1972 are generally pro- containing no original authorship. tected under a combination of state common law copyright, unfair competition and specialised statutory provisions; 9 Do the doctrines of ‘fair use’ or ‘fair dealing’ exist? • integrated circuit layouts (called ‘mask works’) are protected under US law recognises the doctrine of fair use, which is codified in section 107 of specialised provisions in Chapter 9 of Title 17; the Copyright Act. See question 10 for further details. • unauthorised fixation and trafficking in live musical performances are prohibited by Chapter 11 of Title 17; 10 What are the standards used in determining whether a • designs of boat hulls and decks are protected under specialised provi- particular use is fair? sions in Chapter 13 of Title 17; • hot news misappropriation is a recognised common law tort in some Under the fair use provisions of the US Copyright Act, courts are to use four states, and covers the use of time-sensitive information by a competi- non-exclusive factors in determining whether a particular use is a fair use. tor regardless of whether the information is protected by copyright law The four factors are: (although the scope of protection for hot news is likely fairly narrow • the purpose and character of the use (especially whether the use is due to federal copyright law pre-emption); and ‘transformative’ in nature, and to some extent whether it is for com- • a majority of states recognise the right of publicity, which protects the mercial or for non-profit educational purposes); use of a recognisable aspect of an individual’s persona (such as his or • the nature of the copyrighted work; her image or voice) in advertising or trade. • the amount and substantiality of the portion taken; and • the effect of the use upon the potential market for or value of the copy- 14 Are moral rights recognised? righted work. Moral rights are protected to some extent, but moral rights are more Courts apply these factors to particular situations on a case-by-case basis. narrowly defined and of less practical effect in the US as compared to The outcome of any given question of fair use can therefore be difficult other jurisdictions. to predict. The Copyright Act provides only limited moral rights of attribution and integrity to authors of a narrowly defined class of works of visual art, under 11 Are architectural works protected by copyright? How? the Visual Artist Rights Act (VARA). VARA provides to authors of limited edition works of the fine arts and exhibition photographs the right to claim Architectural works are protected by copyright. For this purpose, an archi- or disclaim authorship in a work; limited rights to prevent distortion, muti- tectural work is defined as ‘the design of a building as embodied in any lation or modification of a work; and the right, under some circumstances, tangible medium of expression, including a building, architectural plans, or to prevent destruction of a work that is incorporated into a building. The drawings.’ Protection extends to ‘the overall form as well as the arrange- legislation provides for waiver of these moral rights, but only by a signed, ment and composition of spaces and elements in the design, but does not written agreement specifically identifying the work and the uses of the work include individual standard features.’ Protection is generally provided on to which the waiver applies. The Copyright Act’s exclusive right to prepare the same basis as for other types of works, except that pictorial representa- derivative works protects all types of works against modification, but is tions of constructed buildings are permitted, and building owners are per- freely assignable and also subject to limitations such as fair use. mitted to alter or destroy their buildings without the consent of the author State tort, privacy and publicity laws, and the federal Lanham Act also or copyright owner. provide certain protections similar to ‘moral rights’. As noted in question 6, protection is available for any architectural work created on or after 1 December 1990. In addition, any architectural works that on 1 December 1990 were not constructed, but were embodied in unpublished plans or drawings, and were constructed by 31 December www.gettingthedealthrough.com 103

Copyright formalities 23 What are the consequences for failure to register a copyrighted work? 15 Is there a requirement of copyright notice? As noted in question 20, a US work must be registered to bring a suit for Although US law once required use of a copyright notice as a condition of infringement. In addition, attorneys’ fees and statutory damages will be copyright protection, notice has been optional on copies of works published unavailable if the author has not registered the work within certain time since 1 March 1989. A copyright notice generally consists of the symbol or requirements. Registration is also recommended because it gives the pub- word ‘copyright’ (or ‘copr’ or ‘©’), the year of first publication and the name lic notice that the copyright owner claims copyright protection in the work. of the copyright owner (for example, ‘© 2016 John Smith’). Finally, if registration occurs within five years after first publication, the registration certificate is considered prima facie evidence of copyright validity 16 What are the consequences for failure to display a copyright and of the facts concerning authorship and ownership stated in the certifi- notice? cate. This presumption is important, because it can greatly simplify proving The only current legal consequence of a failure to use a copyright notice copyright ownership in a court of law, particularly when it is necessary to do is that it makes it easier for an infringer of the work to claim that he or she so many years after the creation of the work. is an ‘innocent infringer.’ However, if a work was published without notice before 1 March 1989, the omission may have caused copyright to be lost. Ownership and transfer

17 Is there a requirement of copyright deposit? 24 Who is the owner of a copyrighted work? The owner of copyright or of the exclusive right of publication in a work The general rule is that the author of the work initially owns the copyright. published in the US generally is required to deposit two copies of the best As discussed in question 25, a corporate entity can be considered the author edition of the work in the Library of Congress within three months after the in the case of a work made for hire. The initial owner of copyright may date of publication. Such deposit is not a condition of copyright protection. assign its rights (see question 28). Such deposit is generally accomplished in connection with copyright registration (see questions 19 to 23). Copyright registration is optional. If 25 May an employer own a copyrighted work made by an the copyright owner chooses to register his or her work with the Copyright employee? Office, the applicant must submit specified copies of the work along with An employer will be considered the author of a work, and will initially own the application. Upon their deposit in the Copyright Office, all copies and the copyright, when the work is a ‘work made for hire’. A work will be con- identifying material, including those deposited in connection with applica- sidered a work made for hire if it is prepared by an employee within the tions that have been refused registration, become the property of the US scope of his or her employment. Traditional common law agency principles government. The details of the deposit requirement vary depending on the are applied to determine who constitutes an employee. As an alternative to type of work involved. the ‘work made for hire’ doctrine, an employer may own a copyrighted work as the result of an assignment from its employee. 18 What are the consequences for failure to make a copyright deposit? 26 May a hiring party own a copyrighted work made by an If a mandatory deposit is not made on demand, a fine may be levied, and independent contractor? the relevant person may be required to pay the Library of Congress’ cost of A hiring party may own a copyrighted work made by an independent con- buying the copies demanded. In addition, when registration is sought, the tractor either by assignment, or in some circumstances, as a work made for underlying work will not be registered unless the required deposit copy or hire. If a work prepared by an independent contractor is considered a work copies are submitted to the Copyright Office. made for hire, the hiring party will be considered the author of the work. For a work created by an independent contractor to be considered a work made 19 Is there a system for copyright registration? for hire: (i) the parties must expressly agree in a written document signed Copyright registration can be obtained by following the procedure by them that the work will be considered a work made for hire; and (ii) the described in question 21. work must be specially ordered or commissioned for use as: • a contribution to a collective work; 20 Is copyright registration mandatory? • a part of a motion picture or other audiovisual work; • a translation; There is no requirement that a work be registered. Copyright protection • a supplementary work; exists from the moment the work is created. However, for ‘US works’ • a compilation; (generally works first published in the US or unpublished works where • an instructional text; all the authors are US nationals), registration is a prerequisite to suing • a test; for infringement. • answer material for a test; or • an atlas. 21 How do you apply for a copyright registration? To apply for a copyright registration, the author must submit a completed 27 May a copyrighted work be co-owned? application form, a non-refundable filing fee, and a non-returnable deposit Copyrights can be co-owned either in the case of a joint work (described copy or copies of the work to be registered. The primary means of registra- further below) or by assignment or other transfer of ownership (such as tion is to use the Copyright Office online system called ‘eCO.’ When using inheritance). In either case, unless the co-owners have agreed otherwise, the online system, the filing fee is paid online, and deposit copies of certain a co-owner can exploit or license the work without seeking permission categories of works can be uploaded directly. Otherwise, hard copy depos- from the other co-owner(s), but would owe the other co-owner(s) a duty its are submitted with a shipping slip that allows the Office to associate the to account for the profits of such exploitation or licensing. Of course, a deposit with the online record. Paper forms can also be used for copyright co-owner could not grant a licence that is exclusive as to the interests of registration, but require payment of a higher filing fee and involve a longer another co-owner without the agreement of the other co-owner. processing time. Forms can be downloaded from the Copyright Office web- When one or more people create a single work together, the result is a site (www.copyright.gov), picked up in person or requested by post. joint work in which the copyright is initially co-owned by the joint authors. A joint work is defined by the Copyright Act as ‘a work prepared by two or 22 What are the fees to apply for a copyright registration? more authors with the intention that their contributions be merged into The standard registration fee for simple applications submitted through inseparable or interdependent parts of a unitary whole.’ Under this defini- the eCO online system is US$35. When there are multiple authors, different tion, all the involved authors must intend that their contributions be com- claimants, multiple works, or a work made for hire, the fee for an online bined, and this intention must exist at the time the contribution is created. application is US$55. When paper forms are used, the standard fee is US$85. It is not necessary that the contributions be equal in effort or value. Nor The fee for expedited service is US$800. is it necessary that the joint authors work in the same physical area or at the same time. As defined in the statute, the only requirement is that both authors have the intention that the works are to be ‘merged into inseparable

© Law Business Research 2016 Jenner & Block LLP UNITED STATES or interdependent parts of a unitary whole’. If a joint work exists, then both of the featured artists and copyright owners of such works, and also under authors are co-owners of equal, undivided interests in the entire work. some direct licence agreements. However, not everyone who makes any contribution to a work will be considered an ‘author’ of the work. Whether a contribution rises to the level 32 Is there any provision for the termination of transfers of of authorship generally requires that a person contribute copyrightable rights? expression and play a sufficiently important role in the creation of the work The Copyright Act has several provisions providing for termination of to be considered an author (based on factors such as an intention shared transfers. For transfers or licences executed by an author on or after with other authors of the work to be co-authors, control over the work, 1 January 1978, the Act permits termination under certain conditions, credit commensurate with other authors, and contribution to the audience generally between 35 and 40 years after first publication, by serving writ- appeal of the work). ten notice on the transferee within specified time limits. For grants made before 1978 of rights to works under statutory copyright protection before 28 May rights be transferred? 1978, the statute provides similar rights of termination, generally between Any or all of the copyright owner’s exclusive rights or any subdivision of 56 and 61 years after the date copyright was originally secured. those rights may be transferred. However, a transfer of exclusive rights (other than by operation of law) is not valid unless that transfer is memorial- 33 Can documents evidencing transfers and other transactions ised in a writing signed by the owner of the rights conveyed or such owner’s be recorded with a government agency? duly authorised agent. The writing, however, need not be made at the time A document that transfers copyright ownership, and other documents of assignment. A letter or other writing confirming the agreement is suffi- pertaining to a copyright, may be recorded in the Copyright Office. To be cient. Transfer of a right on a non-exclusive basis does not require a written recorded, the document filed for recording must bear the actual signature agreement. A copyright may also be conveyed by operation of law and may of the person who executed it or be accompanied by a sworn or official certi- be bequeathed by will, or pass as personal property by the applicable laws fication that it is a true copy of the original signed document. A recordation of intestate succession. fee must be paid. Copyright is a personal property right, and is subject to state laws that Recording of a document in the US Copyright Office gives all persons govern the ownership, inheritance or transfer of personal property as well constructive notice of the facts stated therein (if the work has been regis- as the terms of contracts or conduct of business. Although the recording of a tered), and recording a transfer also provides priority over certain conflict- transfer in the US Copyright Office is not required to make the transfer valid ing transfers. between the parties, it does provide certain legal advantages against third parties, as described in question 33. Duration of copyright

29 May rights be licensed? 34 When does copyright protection begin? Copyright rights can be licensed on an exclusive or non-exclusive basis. Copyright protection subsists from the time the work is created in fixed The holder of an exclusive licence is the owner of the licensed right and as form. The copyright in the work of authorship immediately becomes the such is entitled to sue any party that infringes the right while the exclusive property of the author who created the work. licensee owns it. A non-exclusive licence gives the licensee the right to exercise one or more of the copyright owner’s rights, but does not prevent the 35 How long does copyright protection last? copyright owner from giving others permission to exercise the same right The length of copyright protection varies according to when the particular or confer standing to sue. work was created and published, and according to whether the author is an identified natural person, as explained in more detail in question 36. 30 Are there compulsory licences? What are they? The Copyright Act provides various compulsory licences (sometimes 36 Does copyright duration depend on when a particular work referred to in the US as ‘statutory licences’): was created or published? • section 111 – secondary transmissions by cable systems; The duration of copyright protection depends on when a particular work • section 112 – ephemeral reproductions of sound recordings; was created and published and on the nature of the author. A work created • section 114 – public performance of sound recordings by means of digi- on or after 1 January 1978 is automatically protected from the moment of its tal audio transmissions; creation and is ordinarily given a term continuing for the author’s life plus • section 115 – ‘mechanical’ reproduction and distribution of musi- an additional 70 years after the author’s death. In the case of a ‘joint work cal works; prepared by two or more authors who did not work for hire’, the term lasts • section 118 – use of certain works in non-commercial broadcasting; for 70 years after the last surviving author’s death. For works made for hire, • section 119 – secondary transmissions by satellite carriers; and and for anonymous and pseudonymous works (unless the author’s identity • section 122 – local retransmissions by satellite carriers. is revealed in Copyright Office records), the duration of copyright is 95 years from first publication or 120 years from creation, whichever is shorter. These licences are all very different from each other, and the details of most For works created before 1 January 1978, the duration of copyright of them are fairly complicated. The section 122 licence is generally royalty- depends on whether the work was published, or the copyright in the work free. Otherwise, royalty rates under these licences are determined, or sub- registered, before 1 January 1978. If so, the copyright term is 95 years from ject to adjustment in certain circumstances, by the Copyright Royalty Board. the date copyright was originally secured (usually the date of publication). Royalties under sections 111 and 119 are paid into the Copyright Office and Otherwise, the copyright term is generally computed in the same way as distributed to copyright owners under the supervision of the Copyright for works created on or after 1 January 1978. That is, the term is life plus 70 Royalty Board. Royalties under the other licences are paid directly to copy- years, or 95 or 120 years, depending on the circumstances of authorship and right owners or to collecting societies representing copyright owners. publication. However, for works that were unpublished and unregistered on 1 January 1978 but were published on or before 31 December 2002, the term 31 Are licences administered by performing rights societies? of copyright will not expire before 31 December 2047. How? Both the requirements for copyright protection and the US copyright In the case of musical works, there is no requirement that licences be admin- term have changed over time. In the past, the copyright term was shorter, istered by performing rights organisations, but songwriters and music pub- and many pre-1978 works fell into the public domain earlier than the expiry lishers generally have chosen to have a performing rights organisation grant of their full term. Determining whether any particular work created before 1 and administer voluntary collective licences on their behalf. The American January 1978 is still under copyright is thus fairly complicated, and depends Society of Composers, Authors and Publishers (ASCAP), Broadcast Music, on factors such as the source country of the work, when the work was cre- Inc (BMI) and SESAC Inc have traditionally been the principal US perform- ated and published, whether the work was published with notice, and ing rights organisations. Global Music Rights has entered the market in whether the copyright was renewed during the 28th year after publication recent years. or registration (see question 37). In the case of sound recordings, SoundExchange, Inc collects and distributes royalties under the sound recording statutory licences on behalf www.gettingthedealthrough.com 105

Update and trends Scope of protection for pre-1972 sound recordings freedom to negotiate individually with digital music services while In recent years, owners of rights to pre-1972 sound recordings have preserving the efficiency of collective licensing through performance brought cases in various states to attempt to clarify the scope of state rights organisations for other uses of their works. After setbacks in the law protection for such recordings as applied to new transmission tech- courts that supervise the judicial ‘consent decrees’ governing ASCAP nologies such as internet webcasting and satellite radio. At the time of and BMI, publishers and songwriters prevailed on the US Department writing, courts in California and New York have found that state law proof Justice to review those consent decrees. The Department has taken tection of pre-1972 recordings extends to public performances over such public comments concerning possible revisions to the consent decrees, media, while a court in Florida has found no such protection. In April and also inquired concerning the nature of the rights granted when 2016, the question was referred to the highest court of New York for a performing rights organisations license works that are only part-owned definitive resolution of the question under New York state law. by their respective members. The issues are complicated and have been controversial, and any changes ultimately would have to be adopted by Use of a work for a new purpose as fair use the courts supervising the consent decrees. Thus, it is not clear whether Resolution of fair use disputes has increasingly turned on whether the or when change might come. defendant’s use of the plaintiff’s work was ‘transformative’. Within the United States Court of Appeals for the Second Circuit at least, a use has Trans-Pacific Partnership been held to be transformative, and hence fair, because it serves a new In October 2015, the US and 11 other countries announced the comple- function or purpose without altering or adding to the work itself. This tion of negotiations of the Trans-Pacific Partnership (TPP), a major was the basis for the Second Circuit’s decision in Authors Guild, Inc v trade agreement covering a broad array of issues, including standards Google, Inc. There, the court found, based primarily on the concept of for copyright and other intellectual property protections. US ratification transformative use, that fair use allowed Google to make digital copies of the TPP depends upon congressional action, which may prove dif- of tens of millions of books and enable searching of those books over ficult in an election year. the internet. In April 2016, the Supreme Court declined to review the Second Circuit’s decision. Copyright Office studies, modernisation and copyright review The Copyright Office began 2016 by taking public comments concern- Standards for awarding attorneys’ fees in copyright cases ing three policy studies – concerning software embedded in consumer In the spring of 2016, the US Supreme Court is considering the standard products, anti-circumvention protections and online service provider to be used for awarding attorneys’ fees to prevailing parties in copyright liability safe harbours. A study concerning monetisation and enforce- cases. The underlying case was one decided by the Supreme Court in ment of visual works is also pending. These follow recent major stud- 2013, which resolved a long-disputed question concerning grey market ies concerning the ‘making available’ right (February 2016), Orphan imports. After winning in the Supreme Court, the defendant sought Works and Mass Digitization (June 2015) and Copyright and the Music to recover attorneys’ fees, but the lower courts declined to make a fee Marketplace (February 2015), as well as a multi-year process in which award. Back before the Supreme Court, the principal question is how the House Judiciary Committee has reviewed the operation of numer- much weight courts should give to the reasonableness of a losing party’s ous aspects of US copyright law. At the same time, there have been calls position in deciding whether to award fees. A decision is expected by to modernise the operations of the Copyright Office and provide it with June 2016. more autonomy. The groundwork is being laid for major US copyright legislation, although it remains uncertain whether such legislation will Musical work licensing gain traction in the near future. Change may be on its way to the legal framework for licensing musical works in the US. For several years, music publishers have been seeking

37 Do terms of copyright have to be renewed? How? Application of these requirements in any particular case can vary widely Renewal does not apply to works created on or after 1 January 1978, or to depending on the nature of the defendant’s activity. In a traditional case earlier works that were not published or registered before 1 January 1978. focused on a single work, where the defendant did not copy the plaintiff’s Works first published or registered up until 1963 had to be formally renewed, work literally or in its entirety, there may be a substantial factual question through a renewal registration in the US Copyright Office, to maintain pro- as to whether the defendant even knew of the plaintiff’s work, and even tection. Failure to renew placed the work in the public domain. However, assuming the fact of copying, as to whether the defendant copied a suf- copyright protection was later restored to certain works of foreign origin ficient amount of the plaintiff’s work to consider the works ‘substantially that had fallen into the public domain due to failure to renew. For works first similar.’ In a case involving the legality of an unlicensed online service, it is published or registered between 1964 and 1977, renewal was automatic, but typically not disputed that the plaintiff’s works were used in their entirety; obtaining a renewal registration provides certain advantages. the questions typically are, instead, whether the service is of a type that implicates the copyright owner’s exclusive rights and whether the service 38 Has your jurisdiction extended the term of copyright provider is legally responsible for the activity. protection? 40 Does secondary liability exist for indirect copyright The US term of copyright protection has been extended many times. Most infringement? What actions incur such liability? recently, the Sonny Bono Copyright Term Extension Act of 1998 extended copyright terms by 20 years to yield the terms described in question 36. Secondary liability for indirect copyright infringement has been established While the extension was not applied to copyrights that had already expired, by case law, although it is not specifically prescribed by statute. Secondary it did extend the terms of existing copyrights. liability can be found under several theories: • vicarious liability, when the defendant has the ability to supervise the Copyright infringement and remedies infringing conduct, and benefits financially from the infringement; • contributory infringement, when the defendant has knowledge or 39 What constitutes copyright infringement? reason to know of the infringement, and contributes to, authorises or Copyright infringement occurs when a party violates any of the copyright induces the infringement; and owner’s exclusive rights described in question 7. Assuming ownership of a • inducement as discussed in the Supreme Court’s Grokster decision, valid copyright and no applicable authorisation, infringement requires both when the defendant acts with the object of promoting infringement, of the following: as shown by clear expression or other affirmative steps taken to fos- • the alleged infringer, as a factual matter, copied from the copyright ter infringement. owner’s work in the alleged infringer’s activities of a type that implicates the copyright owner’s exclusive rights described in question 7 (eg, 41 What remedies are available against a copyright infringer? reproduction, public performance); and Remedies for copyright infringement can include: • the alleged infringer appropriated enough of the copyright owner’s • payment to the copyright owner of any profits the infringer received original expression to give rise to liability. and of any losses suffered by the copyright owner, or ‘statutory damages’ as an alternative to actual profits and losses;

• a court order restraining the infringer from continuing the infring- or alter any notice of copyright appearing on a copy of a copyrighted work ing activity; with fraudulent intent. Moreover, it is a criminal offence to knowingly make • confiscation and destruction of the infringing items; and a false representation of a material fact in an application for copyright regis- • attorneys’ fees. tration, or in any written statement filed in connection with the application.

42 Is there a time limit for seeking remedies? 46 Are there any specific liabilities, remedies or defences for The statute of limitations for bringing a civil copyright infringement claim online copyright infringement? is three years (and five years for criminal actions). It is measured from the See question 3. time the claim accrued. In most courts, a claim is considered to accrue at the time the plaintiff knew or had sufficient reason to know that the 47 How may copyright infringement be prevented? infringement occurred. However, some courts may view a claim as accruing Copyright owners in the US employ a mix of strategies to control copyright at the time the infringement occurred. If, at the time of suit, the infringe- infringement, including: ment has been ongoing for more than three years since the claim accrued, • discouraging infringement by applying to their works a statutory copy- the copyright owner is able to pursue remedies for the infringements occur- right notice and sometimes other warnings against infringement, and ring within the past three years. However, where the essence of a copy- by registering their works with the Copyright Office; right claim is a dispute concerning ownership of the copyright, courts have • employing technological protection measures to frustrate infringement; rejected the assertion of an ongoing wrong and have dismissed the claim if • recording their works with CBP as described in question 2 to try to keep it was brought more than three years after it accrued. infringing copies out of the US market; • policing the market to identify infringements, including sometimes by 43 Are monetary damages available for copyright infringement? hiring specialised contractors to identify online infringements; Monetary damages are available for copyright infringement. A party found • invoking statutory or informal notice and takedown procedures to liable for copyright infringement may be found liable for either the copy- remove infringing material from online services; right owner’s actual damages and any additional profits of the infringer, • sending ‘cease and desist’ letters demanding that infringers stop or statutory damages, as provided by the Copyright Act. However, statu- infringing activity; tory damages are only available if registration for the infringed work was • bringing civil actions to pursue the remedies described in question obtained within certain time requirements. 41; and • in appropriate circumstances (see question 45), working with law 44 Can attorneys’ fees and costs be claimed in an action for enforcement authorities concerning possible criminal enforcement. copyright infringement? Both costs and attorneys’ fees can be claimed in a copyright infringement Trade associations and collecting societies representing copyright own- action. They may be awarded to a prevailing party at the court’s discre- ers also take various measures on a collective basis to control infringe- tion if the work was registered with the US Copyright Office within certain ment, including: time requirements. • supporting programmes to educate and inform the public concerning copyright compliance and legitimate sources of copyrighted material; 45 Are there criminal copyright provisions? What are they? • operating telephone ‘tip lines’ and investigating infringements; • facilitating collective enforcement action; and The Copyright Act has criminal provisions. It is a criminal offence to wil- • working with US government trade officials to resolve significant fully infringe a copyright if the infringement was committed: infringement issues abroad. • for either commercial advantage or private financial gain; • by the reproduction or distribution, including by electronic means, dur- Relationship to foreign rights ing a 180-day period, of one or more copies or phonographic records of one or more copyrighted works, which have a total retail value of more 48 Which international copyright conventions does your country than US$1,000; or belong to? • by the distribution of a work being prepared for commercial distribu- The United States is a party to: tion, by making it available on a computer network accessible to mem- • the Berne Convention for the Protection of Literary and Artistic Works bers of the public, if such person knew or should have known that the (1886, as revised); work was intended for commercial distribution. • the Brussels Convention Relating to the Distribution of Programme- Carrying Signals Transmitted by Satellite (1974); In addition, it is a criminal offence to place a fraudulent copyright notice • the Buenos Aires Convention (1910); on any article, or to publicly distribute or import for public distribution any • the Geneva Convention for the Protection of Producers of Phonograms article bearing such fraudulent notice. It is also a criminal offence to remove against Unauthorised Duplication of their Phonograms (1971);

Andrew H Bart [email protected] Steven R Englund [email protected] Susan J Kohlmann [email protected]

919 Third Avenue Tel: +1 212 891 1600 New York Fax: +1 212 891 1699 NY 10022-3908 www.jenner.com United States

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• the Universal Copyright Convention (Geneva 1952 and Paris 1971); 49 What obligations are imposed by your country’s membership • the World Intellectual Property Organization Copyright Treaty (1996); of international copyright conventions? • the World Intellectual Property Organization Performances and Each of the treaties identified in question 48 has its own unique require- Phonograms Treaty (1996); and ments. They generally require a certain minimum level of protection in • various bilateral copyright treaties. terms of the rights recognised and the duration of protection, and also create an obligation to honour the copyrights of citizens of other treaty par- The US has signed the Beijing Treaty on Audiovisual Performances (2012) ties by affording them copyright protection in the US on the same basis as and the Marrakesh Treaty to Facilitate Access to Published Works for US citizens. Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled (2013). However, at the time of writing, these treaties have not yet entered into force. The United States is also a member of the World Trade Organization and a party to various free trade agreements containing copyright- related provisions.

Venezuela

Matías Pérez-Irazábal Hoet Pelaez Castillo & Duque

Legislation and enforcement Agency 1 What is the relevant legislation? 5 Is there a centralised copyright agency? What does this The relevant legislation regulating copyright includes: agency do? • the Constitution of the Bolivarian Republic of Venezuela (1999); There is a centralised agency called the National Directorate on Copyright • the Copyright Law, October 1993; (DNAD), which is a part of the Intellectual Property Autonomous Service. • the Regulations of the Copyright Law; The Directorate has the following functions: • the Berne Convention; • ensuring compliance with the provisions of the Copyright Law and • the International Convention for the Protection of Performers, its Regulations; Producers of Phonograms and Broadcasting Organizations (1961); • keeping a registry of intellectual productions; • the World Intellectual Property Organization (WIPO) Copyright • deciding on the criteria required for the registration and deposit of Treaty (1966); works, products and productions, except in cases already regulated by • the WIPO Performances and Phonograms Treaty 1996; the Law and its Regulations; • the National Cinematography Law; • authorising and supervising the operation of organisations for the col- • the Statutory Deposit Law; lective management of economic rights in accordance with the provi- • the Law on Books (1997); sions of the Regulations; • the Law on Information Technology (2005); and • supervising the persons, natural or legal, who make use of protected • the Law on the Protection and Defence of the Cultural Heritage (1993). works, products and productions insofar as they give rise to the exercise of the rights provided in the law; 2 Who enforces it? • serving as arbitrator, when requested, to those concerned in disputes This legislation is enforced by the National Directorate of Copyright arising between: (DNAD), the mayors of local municipalities, the courts of first instance and • owners of rights; the National Integrated Service of Customs and Tax Administration. • collective management organisations; • such organisations and their members; and 3 Are there any specific provisions of your copyright laws that • collective management organisations or owners of rights and the address the digital exploitation of works? Are there separate users of the works, products or productions protected by the law; statutory provisions that do so? • imposing sanctions provided in the law, except for crimes, in which case the imposition of sanctions rests with the criminal courts; Venezuela’s Copyright Law does not establish any specific provisions • operating an information centre on works, products and productions, addressing the digital exploitation of works. Although Venezuela has rati- both national and foreign, that are used in Venezuela; and fied and published in the Official Gazette WIPO’s internet treaties, the • other functions specified in the Copyright Law or its Regulations. corresponding documents of approval of those treaties have not yet been filed with said organisation. Nevertheless, the Special Law on Computer Subject matter and scope of copyright Crimes provides that, when the copyright infringement is made through the use of an electronic device, it is considered an appropriation of intel- 6 What types of works are copyrightable? lectual property. Those who, without permission of the owner and with the The provisions of the Copyright Law shall protect all creative intellectual aim of obtaining profits, reproducing, modifying, copying, distributing or works, whether literary, scientific or artistic in character, and whatever disclosing software, or any other intellectual work obtained through any their nature, form of expression, merit or purpose. Neighbouring rights IT-related means, may be punished with imprisonment of one to five years, shall also be protected. and a fine of 100 to 500 tax units. The protection granted shall apply, in particular, to the following: • works expressed in writing, namely books, pamphlets and any other 4 Do your copyright laws have extraterritorial application to kind of work expressed in letters, signs or conventional marks; deal with foreign-owned or foreign-operated websites that • lectures, addresses, sermons and other works of a similar nature; infringe copyright? • musical compositions with or without words; Although Venezuela’s Copyright Law has territorial application, article 3 of • dramatic and non-dramatic musical works; the Special Law on Computer Crimes provides the following: • choreographed and mimed works; • cinematographic and other audiovisual works expressed by Extraterritoriality. When any of the offences provided in this Law any process; are committed outside the territory of the Republic, the perpetrator • works of fine art, including drawings, paintings, sculptures, engrav- will only be subject to its provisions if the offence has an effect within ings and lithographs; the territory of the Republic and the person responsible has not been • works of architecture; judged for said offence, or has evaded prosecution or conviction by • photographic works and works expressed by processes related foreign courts. to photography; • works of applied art; • illustrations, maps, sketches, plans, diagrams and three-dimensional works related to geography, topography, architecture or science; • computer programs; and www.gettingthedealthrough.com 109

• anthologies or compilations of assorted works, and also databases, Performances are protected by the Copyright Law as acts of public which, by the selection and arrangement of their contents, constitute communication, as follows: personal creations. • article 40 states that communication to the public shall be understood to mean any act by which the work is made accessible to two or more 7 What types of rights are covered by copyright? persons, in particular by means of stage performance, recitation, read- Copyright covers moral and economic rights. ing and public enactment of dramatic, dramatic-musical, literary and Moral rights include, in particular, the following: musical works by any means or process; and • to keep the work unpublished, or to disclose it; • article 48 defines fair use to include the protection of news of the day • to claim authorship of the work at any time; and in the following terms: • to object to any distortion, mutilation or alteration of the work that is detrimental to its integrity or to the reputation of the author. [...] the reproduction of news of the day or miscellaneous facts that have the character of mere press information, and that are published Economic rights include the exclusive right to carry out, authorise or pro- by the press or broadcasted, shall be lawful, provided that they do not hibit the following: constitute intellectual works by reason of their form, and without det- • reproduction of a work by any means or process; riment to the principles governing unfair competition. • communication of a work to the public by any means serving to convey words, signs, sounds or images; 14 Are moral rights recognised? • distribution of copies of a work to the public by means of sale, lending Pursuant to Venezuela’s Copyright Law, the author shall have the following or leasing; and inalienable, unmatchable, imprescriptible and non-renounceable rights: • translation, adaptation, arrangement or other transformation of • to keep the work unpublished or to disclose it; the work. • to claim authorship of the work at any time; and • to object to any distortion, mutilation or alteration of the work that is They also prohibit importation of copies made without the authorisation of detrimental to the integrity thereof or to the reputation of the author. the owner of the rights into the territory of any member country. In the event of the author’s death, the exercise of moral rights shall pass to 8 What may not be protected by copyright? his or her successors in title for a 60-year period. Once the economic rights The ideas contained in literary and artistic works, the ideological or techni- have lapsed, the state or designated agencies shall assume the defence of cal content of scientific works, and industrial or commercial exploitation the authorship and integrity of the work. are not eligible for protection. According to the current Copyright Law, The domestic legislation of the member countries may grant other legal texts, decrees, official regulations, public treaties, judicial decisions rights of moral character. and other official actions are not protected. Nevertheless, there is an exception regarding legislative collections and judicial sentences, which Copyright formalities can only be published with the permission of Ministry of People’s Power 15 Is there a requirement of copyright notice? for Domestic Affairs, Justice and Peace, the Ministry of People’s Power for No requirement of copyright notice exists. Foreign Affairs or the involved court. If permission is not granted, the competent authority may declare the work as unauthorised and as having no 16 What are the consequences for failure to display a copyright officialalidity. v notice? 9 Do the doctrines of ‘fair use’ or ‘fair dealing’ exist? Since there is no requirement of copyright notice, there are no consequences for failing to display one. The doctrine of fair use exists. In Venezuelan legislation it refers to use that does not interfere with the normal exploitation of a work or the unreason- 17 Is there a requirement of copyright deposit? able prejudice of the author’s legitimate interests. In general, there is no obligation for copyright deposit. Nevertheless, works 10 What are the standards used in determining whether a such as bibliographical productions, serials, non-bibliographical produc- particular use is fair? tions, printed on paper or similar material, as well as audiovisual works in a physical format, shall be deposited before the National Library. Fair use is determined pursuant to article 9(2) of the Berne Convention. 18 What are the consequences for failure to make a copyright 11 Are architectural works protected by copyright? How? deposit? Architectural works receive the same protection as any other works. As there is no requirement of copyright deposit, there are no consequences Illustrations, maps, sketches, plans, diagrams and three-dimensional for failure to make one. works related to geography, topography, architecture or science are also protected. 19 Is there a system for copyright registration? 12 Are performance rights covered by copyright? How? Yes. The works may be registered before the Intellectual Property Registry of the National Directorate of Copyright. An application for registration is Performance rights are covered by copyright. Performers have the exclu- filed along with two copies of the work. The Directorate evaluates the appli- sive right to authorise or prohibit the fixation, reproduction or public com- cation over a period of approximately six months, and decides whether to munication of their performances or interpretations through any means grant the registration or not. or procedure; they may not, however, oppose any communication to the public made on the basis of a fixation which they agreed to and published 20 Is copyright registration mandatory? with commercial purposes. Copyright registration is not mandatory; the right arises with the mere cre- 13 Are other ‘neighbouring rights’ recognised? How? ation of the work. Although failure to register or deposit shall not prejudice the acquisition and exercise of the rights established by law, registration Venezuelan law protects performers, audio producers and broadcasting is recommended in order to pre-constitute a proof of the existence of the organisations. In the case of audio producers, they have the exclusive right work and its authorship, thus it facilitates all further proceedings within the to authorise the reproduction of their recordings, as well as their importa- terms of the Venezuelan documentary system. All assignments, licences tion, distribution, rental or any other use, by any other manner or media. or agreements involving any right must be made in writing and recorded Additionally, the law establishes a remuneration right for public commu- before the National Directorate. nication of the recordings. Broadcasting organisations have the exclusive right to authorise the fixation, reproduction and rebroadcasting of their transmissions.

21 How do you apply for a copyright registration? 30 Are there compulsory licences? What are they? Application for a copyright registration is made by means of the registra- The compulsory licences provided in the legislation may not exceed the tion process provided by the National Directorate of Copyright. limits permitted by the Berne Convention for the Protection of Literary and Artistic Works or by the Universal Copyright Convention (article 11-bis 22 What are the fees to apply for a copyright registration? (2)). The fees applicable for copyright registration are the same as those related to registration forms and registration rights. The cost of having a work reg- 31 Are licences administered by performing rights societies? istered is about US$100. How? Remuneration rights are administered by the Venezuelan Association of 23 What are the consequences for failure to register a Performers and Producers of Phonograms (AVINPRO). In Venezuela, this copyrighted work? association administers performers’ and record producers’ rights. There are no consequences for failure to register a copyrighted work, but registration gives the advantage of establishing a presumption of author- 32 Is there any provision for the termination of transfers of ship in favour of the person who registered the work. rights? There is no provision for the termination of transfers of copyrights. Ownership and transfer 33 Can documents evidencing transfers and other transactions 24 Who is the owner of a copyrighted work? be recorded with a government agency? Primarily, the author is the owner of the copyrighted work, but any person Documents evidencing transfers and other transactions can be recorded other than the author, whether a natural or a legal person, may own the with the National Directorate on Copyright. Pursuant to the legislation, economic rights to the work according to the provisions of the legislation. contracts for the assignment of exploitation rights and licences for use must be evidenced in writing. 25 May an employer own a copyrighted work made by an employee? Duration of copyright On the one hand, according to the Copyright Law, all economic rights of works made under labour relations are presumed to have been assigned to 34 When does copyright protection begin? the employer by the employee, unless otherwise agreed by the parties. This Copyright protection begins from the creation of the work, even if not con- assignment is presumed to be unlimited and for the duration of the right. cluded. The law provides that the author of a work shall have, by virtue of In addition, delivery of the work by the employee to the employer is his or her creative act, a right to the work, including rights of moral and presumed to imply authorisation to the employer to disclose the work made economic character, as specified by the law. by the employee, to translate it and to perform any changes the employer considers necessary, as well as to use the title of the work and to defend the 35 How long does copyright protection last? moral rights as necessary for the exploitation of the work. The term of protection of the rights provided shall be no less than the life- On the other hand, the Venezuelan Organic Labour Law establishes time of the author, plus 60 years after his or her death. two important situations: • intellectual production generated under a labour relationship in the 36 Does copyright duration depend on when a particular work public sector, or financed through public funds, which originates intel- was created or published? lectual property rights, shall be considered of the public domain; and In general terms, copyright has a duration equal to the author’s life, plus 60 • in the private sector, it states that authors maintain their rights on an years after his or her death; however, audio-visual and radio works, as well unlimited basis and for the duration of each invention, innovation or as software, expire 60 years after their first publication. improvement, and the employer is authorised to exploit the work only while the labour relationship or the licence granted by the worker to 37 Do terms of copyright have to be renewed? How? the employer lasts, but the inventor shall be entitled to a share in its benefits when compensation for the work is out of proportion with the Terms of copyright do not have to be renewed. magnitude of the results of their invention, innovation or improvement. At the end of the labour relationship, the employer shall have 38 Has your jurisdiction extended the term of copyright a right of first refusal to acquire it within 90 days of the notification protection? given by the worker through the labour inspector or labour judge. No; the term of copyright protection remains the author’s life plus 60 years.

26 May a hiring party own a copyrighted work made by an Copyright infringement and remedies independent contractor? 39 What constitutes copyright infringement? The law establishes a presumption that any work made for hire belongs to the hiring party. In practice, when the registration of a copyright is applied Any use of a work without the specific permission of the copyright owner for, the National Directorate of Copyright requires a written declaration can result in copyright infringement. from the author of the work recognising that the work was made on behalf of the hiring party. 40 Does secondary liability exist for indirect copyright infringement? What actions incur such liability? 27 May a copyrighted work be co-owned? Venezuelan legislation does not have specific rules for indirect copyright According to Venezuelan legislation, only natural persons can be consid- infringement, neither for vicarious nor for contributory liability. ered as authors; therefore, co-authorship or works made in collaboration Regarding the subsidiary responsibility of internet service providers, can only be between natural persons. Venezuela ratified and published in the Official Gazette the WIPO’s inter- On the other hand, derived ownership (ownership originating from the net treaties, but the corresponding documents of approval of those treaties assignment of rights by any means, be it inter vivos or mortis causa) may have not yet been filed with WIPO. Therefore, the process for their entry apply to legal persons. into force in Venezuela has not been completed. Notwithstanding the above, there are actions that may apply for the 28 May rights be transferred? defence of the rights of the operators based on an interpretation of article 15 of the Telecommunications Law, which establishes the following: Assignment of exploitation rights and licences may be granted for legal use, but with the provision that they must be in writing. The duly accredited telecommunications service operators have the following rights: 1. To respect the user’s rights established in the 29 May rights be licensed? Constitution and in the law to proper and non-deceitful informa- Copyright rights may be licensed. tion about the content and characteristics of the goods and services www.gettingthedealthrough.com 111

border action before, during or after the nationalisation of goods protected Update and trends by IP regulations.

As a result of the new National Assembly elected in December 2015, 42 Is there a time limit for seeking remedies? a series of discussions have been started that are intended to amend the Law on Copyright and the Law on Industrial Property. The general provisions of the statute of limitations apply. The purpose of these amendments is to update Venzuelan laws to bring them in line with international treaties and include any topic 43 Are monetary damages available for copyright infringement? beyond the scope of this international system of protection. The law provides for the possibility of bringing actions for moral and material damages.

they consume, to the freedom of choice and to an equitable and digni- 44 Can attorneys’ fees and costs be claimed in an action for fied treatment. copyright infringement? Attorneys’ fees can be claimed through the courts, through an injunction Intellectual property rights are constitutionally recognised rights. for proceedings fees. Additionally, it is important to consider the provisions of the Special Law on Computer Crimes regarding crimes against the economic order. 45 Are there criminal copyright provisions? What are they? In particular, it is worth taking into account article 25 of said Law, which establishes the following: A term of imprisonment of between 6 and 18 months may apply if any person, intentionally and without a right to do so: Those who reproduce, modify, copy, distribute or divulge a software • makes use of the title of a work in violation of the law; or any other work of the intellect obtained through the access to any • communicates, in the original or a developed form, in their entirety or system which uses information technologies, without the authorisation partially, intellectual works, editions of the works of others or of texts, of its owner and with the purpose of obtaining some economic profit, or photographs or products obtained by a process equivalent to pho- shall be punished with imprisonment of one to five years and a fine of tography, or images recorded on cinematographic film, being equiva- 100 to 500 Tax Units. lent to photography; or • distributes copies of intellectual works protected by the law, including 41 What remedies are available against a copyright infringer? copies of recorded material, or retransmits a broadcast without the consent of the owner of the rights concerned. The Copyright Law sets forth the possibility of having the existence of a right declared by means of a court decision. Through this authorship A term of imprisonment of between one and four years may apply if any decree, the copyright owner may ask a judge for a declaration of his or person, intentionally and without a right to do so: her rights and request prohibition of the infringing activity. The copyright • reproduces in the original or a developed form, in their entirety or owner may ask the judge to issue an order to destroy or withdraw the illicit partially, intellectual works, editions of the works of others, texts, or copies. Furthermore, the copyright owner may also sue for damages. photographs or products obtained by a process equivalent to photogra- In addition, this Law provides the general measures intended to phy, or images recorded on cinematographic film, being equivalent to defend copyright as follows: photography; or • the court may order judicial inspections and expert studies, as well as • introduces into the country, stocks, distributes, sells or otherwise any other form of proof provided in the Code of Civil Procedure; brings into circulation unlawful reproductions of the intellectual works • the court may seize everything that constitutes a violation of the or products protected by the law. exploitation right; and • the court may order the seizure of the revenue accruing to the owner of 46 Are there any specific liabilities, remedies or defences for the disputed right of exploitation. online copyright infringement? Sequestration and seizure shall be ordered only if the request is accom- When copyright is infringed through the use of an electronic device, arti- panied by evidence constituting a serious presumption of the alleged cle 25 of the Special Act against Information Technology-related Crimes infringement, or if such presumption emerges from the production of any considers it an appropriation of intellectual property. This is punishable by of the aforementioned evidence. imprisonment of one to five years and a fine of 100 to 500 tax units for those Furthermore, the Anti-smuggling Law and the Administrative who are, without permission of the owner and with the aim of obtaining Decision on IP Rights Compliance regarding the Import and Custom profits, reproducing, modifying, copying, distributing, or disclosing soft- Transit of Goods, issued by the Venezuelan National Integrated Service ware or any other intellectual work obtained through any IT-related means. of Customs and Tax Administration (SENIAT), provide for the taking of

Matías Pérez-Irazábal [email protected]

Torre IASA, Piso 3 Tel: +58 212 2018611 Av. Eugenio Mendoza, Urb. La Castellana Fax: +58 212 2637744 Caracas 1060 www.hpcd.com Venezuela

47 How may copyright infringement be prevented? • the WIPO Copyright Treaty (WCT) of December 2004 (this treaty has The law does not provide measures for the prevention of copyright not yet been ratified); infringement. • the WIPO Performances and Phonograms Treaty (WPPT) of January 2005 (this treaty has not yet been ratified); Relationship to foreign rights • the Convention on the Protection and Promotion of the Diversity of Cultural Expressions 2005 (28 August 2013); 48 Which international copyright conventions does your country • the Convention for the Safeguarding of the Intangible Cultural belong to? Heritage (12 July 2007); and Venezuela belongs to: • the Convention on the Means of Prohibiting and Preventing the Illicit • the Berne Convention for the Protection of Literary and Artistic Works Import, Export and Transfer of Ownership of Cultural Property (21 of May 1982; June 2005). • the Universal Copyright Convention of April 1966; • the Geneva Convention for the Protection of Producers of 49 What obligations are imposed by your country’s membership Phonograms against Unauthorised Reproduction of their Phonograms of international copyright conventions? of December 1981; All obligations derived from the international conventions signed by • the Rome Convention for the Protection of Performers, Producers of Venezuela are imposed. Phonograms and Broadcasting Organisations of September 1995;

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Legal 500 – Leading Lawyer Law360 – Practice Group of the Year: For the second consecutive year, Andrew H. Bart, a Media & Entertainment contributing editor on this publication, is recognized as a Named a “Practice Group “Leading Lawyer” in the area of copyright, of the Year” in 2013, 2014 and 2015 one of just 12 lawyers to make the elite, nationwide list. as a result of “decisive copyright victories.”

Legal 500 The National Law Journal – Intellectual Property Trailblazer “A pre-eminent choice for copyright litigation” that is “widely regarded as Partner Richard L. Stone was named an one of the elite class” of copyright “Intellectual Property Trailblazer” practices, and offers “‘outstanding by The National Law Journal, recognizing him among a exclusive list of those who “continue to make their mark … at the expertise’ forefront of in various aspects of legal work in the areas of patent, copyright and new online technologies.” copyright, trademark and trade secret law.”

JENNER.COM © Copyright 2016 Attorney Advertising. Prior results do not guarantee a similar outcome. Jenner & Block LLP, 353 North Clark Street Chicago, IL 60654-3456. Jenner & Block London LLP is a limited liability partnership established under the laws of the state of Delaware, USA and is authorised and regulated by the Solicitors Regulation Authority with SRA number 615729. Jenner & Block London LLP is affiliated with Jenner & Block LLP. GETTING THE DEAL THROUGH Copyright 2016 Private Antitrust Litigation Private ClientPrivate EquityPrivate Product Liability Product Recall Project Finance Partnerships Public-Private Public Procurement EstateReal Restructuring & Insolvency Right of Publicity Securities Finance Securities Litigation Activism & Engagement Shareholder Ship Finance Shipbuilding Shipping AidState Structured & Securitisation Finance Controversy Tax on Inbound Investment Tax & Media Telecoms & CustomsTrade Trademarks Pricing Transfer Agreements Vertical Strategic Research Sponsor of the Sponsor the of Research Strategic ABA Section of International Law International of ABA Section 2016 Research Business

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