MEDIA MANAGERS IP KIT Module A Introduction to Intellectual Property

Overview of Intellectual Property Law

What is Intellectual Property? Justifications for Intellectual Property Protection The various branches of Intellectual Property Rights

What is Intellectual Property?

Anything valuable that is created from the result of an exercise of the intellect would be within the scope of Intellectual Property. Usually abbreviated to IP

Justifications for IP Protection

Natural right theories a person has a natural property right to the creations of his mind Fairness unfair that a person should work at creating something and then have the fruits of this work appropriated by another party who reaps where he has not sown

Justifications for IP Protection

The real reason is monetary. Theory is that persons will be encouraged to continue their creative activities and share them if they receive some incentive, which is provided by the grant of a proprietary right in relation to the product of their labours.

The Various Branches of Intellectual Property

(1)Copyright This protects the rights of authors in their original literary, dramatic, musical and artistic works; and grants similar protection to a wide range of other subject matter which also represent the result of creative effort, such as sound recordings, films and broadcasts. cf. Laws of confidentiality

(2)Trade Marks These protect the brands, words or logos, etc used by traders in relation to their goods or services so as to indicate the origin or trade connection of those goods or services.

The Various Branches of Intellectual Property

(3)Passing Off
This protects the goodwill and reputation in a product, service or business. cf. Trade Marks

(4)Law of Confidence This protects information, documents and materials that are disclosed in confidence from unauthorised disclosure.

The Various Branches of Intellectual Property

(5)Registered Designs
These grant rights in relation to the particular appearance of an article, provided that this appearance consists of features of shape, configuration, pattern or ornamentation which are novel or original. (6)Patents These protect the rights of inventors in their inventions, provided that the inventions satisfy certain threshold requirements, such as the need for novelty, inventiveness, utility and so on.

Trade Marks

Trade Marks
What is a trade mark?
A trade mark is the means by which a business identifies goods or services that are made or provided by that business; from the goods and services from other businesses therefore a trade mark is a way by which customers of a business may learn of its products or services; recognise its products or services in the congested markets; and recommend products or services which have impressed them; or identify those which have disappointed them

Trade Marks
Trade marks for products Egs. Nike, Apple Trade marks for services Egs. Google, KPMG Trade marks in the entertainment industry Egs. Services Dreamworks, The Picturehouse, Miramax Egs. Products Spiderman, Batman, Lord of the Rings

Trade Marks
Registration of a trade mark must be distinguished from registration of the companys name at ACRA. Registration of trade marks is administered in Singapore by the Intellectual Property Office of Singapore (IPOS). obtaining copyright protection over the logo of the company. A trade mark is usually attached to goods and services; whilst copyright must exist in a work which shall form separate matter. A trade mark is a registered trade mark in Singapore when it is registered under the Trade Marks Act (Cap. 332).

Trade Marks
Under the Trade Marks Act, a trade mark means
any sign capable of being represented graphically and which is capable of distinguishing goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person sign includes any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape, colour, aspect of packaging or any combination thereof

Trade Marks
Shapes Eg. a 3-dimensional shape of a primate in Class 18 in respect of luggage by VF International SAGL
.

Shapes Eg. a 3-dimensional bevelled box in Class 2 in respect of printing inks and inks in cartridges by IBM .

Trade Marks
Colour Eg. The colour green by BP in Class 4 in respect of containers for liquid petroleum gas

Eg. Three horizontal stripes in the colours orange, green and red on a white or neutral backdrop by 7-Eleven Inc in respect of convenience stores

Trade Marks
Sounds Eg. A five tone audio progression of the notes D FLAT, D FLAT, G, D FLAT and A FLAT by Intel Corporation in Class 9

Eg. A human voice singing the word ricola in accordance with the tune below by Ricola AG in Class 5

Trade Marks
The examiners at IPOS have guidelines on when a trade mark is registrable under the law. Note: you do NOT have to register a trade mark before you use it in trade. But although registration is not compulsory, it is cheaper and quicker to enforce rights in a registered trade mark than in an unregistered one. It also makes the ownership of the trade mark public. Compare with action in passing off

Trade Marks
So when is a trade mark registrable? Section 7 of the Trade Marks Act lists down the absolute grounds for refusal of registration of certain marks Section 8 of the Act lists down the relative grounds for refusal of registration. The idea is that if a trade mark does not fall within the two sections; it is registrable.

Registrable Trade Marks

Section 7 (1)(a): must be capable of being represented graphically; capable of distinguishing goods or services where those goods or services must be dealt with or provided in the course of trade Section 7 (1)(b): Must not be devoid of distinctive character means the sort of word or other sign which cannot do the job of distinguishing without first educating the public that it is a trade mark.

Registrable Trade Marks

Section 7 (1)(c): Must not be a sign or indication which describes the characteristics of goods or services in any way. Rationale: there is a likelihood that other honest traders will wish to use the same signs to designate characteristics of their goods and services. No monopoly rights should be granted over these words. Section 7 (1)(d): Customary Signs For e.g. generic words, devices of coloured bar for barbers, devices of stars for hotels, devices of chefs or the chefs hat for restaurant or catering services But there is a proviso: if the words or devices are arranged in a distinctive manner or drawn in a unique way, they may be registrable

Registrable Trade Marks

Section 7(3): A sign shall not be registered as a trade mark if it consists exclusively of (a) the shape which results from the nature of the goods themselves (b) the shape of goods which is necessary to obtain a technical result; or (c) the shape which gives substantial value to the goods.

Registrable Trade Marks

Section 7(2) Note that even if a sign is not considered inherently distinctive, it can still be registered it before the date of application, it has in fact acquired distinctiveness through use.

Registrable Trade Marks

Section 8: A trade mark shall not be registered if it is identical with an earlier trade mark and is to be registered for goods or services identical with the goods or services for which the earlier trade mark is protected; it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected; or it is similar to an earlier trade mark and is to be registered in respect of goods or services identical or similar to those for which the earlier trade mark is protected. But Section 9 allows registration where there is honest concurrent use

Registrable Trade Marks

Well-known marks A trade mark may not be registered if it is identical or similar to an earlier mark that is a well-known in Singapore, regardless of whether the earlier mark is used in respect of identical or similar goods or services Even if the well-known mark is not registered in Singapore, the owner of a well-known mark may take action against the use of trade mark under the following circumstances: (a) the use of the trade mark would indicate a connection between those goods or services and the well-known mark and is likely to damage the interests of the owner of the wellknown mark; or (b) the use of the trade mark would cause dilution in an unfair manner, or take unfair advantage, of the distinctive character of the well-known mark.

Rights Conferred by Registration

Duration of registration is 10 years from date of application, renewable every 10 years Rights are territorial Registration confers on the owner the right to prevent others from using in Singapore as a trade mark, a mark identical or similar to the mark registered, in respect of identical or similar goods or services.

Rights Conferred by Registration

indicates that the mark is a registered trade mark and hence protected under the trade mark law. is just a symbol used to indicate that the mark is being used by the company as a trade mark. It does not denote that the mark is registered.

Rights Conferred by Registration

Proper and continuous use to prevent the trade mark from becoming a generic word Egs. escalator scotch tape frisbee xerox Non-use of a registered trade mark for 5 consecutive years can result in removal from the register upon application by an interested party

Registration System
The scope of a trade mark registration is determined by the goods or services in relation to which the trade marks is registered. Singapore uses the International Classification of Goods and Services (ICGS) 34 classes of goods 11 classes of services Registration outside of Singapore: Individual applications in each country where protection is desired Madrid Protocol an international application but in respect of only a certain number of countries

Use of Trade Marks in Media Industry

Common classes: Class 41: entertainment services Class 16: printed material, stationery Class 25: clothing, footwear, headgear Class 28: games What can be protected as a registered trade mark? Titles Names of characters Animated characters

Infringement
Infringement occurs when a registered trade mark is used in the course of trade without the consent of the registered proprietor. An infringement may come about through the use of : an identical mark on identical goods or services; or an identical mark on similar goods or services, or a similar mark on identical/similar goods or services resulting in confusion on the part of the public.

Infringement
A person does not infringe a registered trade mark if: he is using his name or the name of his place of business; he uses a sign to indicate the kind, quality, quantity, intended purpose, value or geographical origin or other characteristic of the goods or services; or he uses the trade mark to indicate the intended purpose of goods AND such use as stated above must be in accordance with honest practices in industrial or commercial matters

Infringement

A person does not infringe a registered trade mark if such use: Constitutes fair use in comparative commercial advertising or promotion; is for a non-commercial purpose; or Is for the purpose of news reporting or news commentary

Copyright

Copyright
Singapore copyright law is governed by the Copyright Act (Chapter 63) As its name suggests, copyright is a right to prevent the copying of works or other subject matter It is a right to prevent the unauthorised reproduction by a third party of the tangible form in which a person has chosen to express his ideas, for example in a book, musical composition, theatre or film script, or a cinematograph film Copyright protects the form of idea and NOT the idea itself.

Original Works : How to acquire copyright?

(a) Originality (b) Material Form (c) Must have a separate existence from function (d) Connecting factor (e) 2 broad categories of subject matter which are copyrightable

(a) Originality
Copyright does not protect the central ideas or themes contained in a work; rather it protects the form in which these are expressed. No need for novelty in content. Therefore as long as it is shown that (a) the work emanates from the author and that he did not copy it, and (b) an amount of skill, labour, effort and judgment went into the creation of the work, then the work is original even if it is devoid of what critics term as creativity.

(a) Originality

The fact that another similar work is in existence at the time his work is produced is no bar to copyright subsisting in both, provided that the second has been independently created. No need for particular literary or artistic quality. As long as they are not slavish copies. Dictionaries, directories, etc. can be protected as copyright material.

(a) Originality
Walter v. Lane
reporters from the Times in England made shorthand notes of a series of public speeches made by Lord Rosebery they transcribed these notes into English and published them in the Times years later Lane reproduced these reports into a book he wrote called Appreciation and Addresses: Lord Rosebery. He admitted that he had copied the reports from the Times but denied that the Times had copyright over the speeches. The court held that the reporters had copyright in their written works; but emphasised that what was protected was the form in which each report took and not the speech. It was therefore open to anyone else to come along and make their own report after transcribing the speech himself; as long as he did not copy it from the Times.

(b) Material Form/ (c) Separate Existence

For copyright to subsist, the work must be reduced into material form. Follows from principle that ideas are not copyright material. Where a work is an integral part of a contrivance or device, copyright cannot subsist. Thus the figures and scales on a ruler would not be protectable but written instructions for use on an electrical appliance or the verse on a Christmas card, would.

(d) Connecting factor

Section 27 of the Act confers copyright to citizens of Singapore or to persons resident in Singapore. The Copyright (International Protection) Regulations widen this protection to citizens and residents of any country which is signatory to the Berne Convention or World Trade Organisation.

is not a requirement for protection unless for countries under Universal Copyright Convention.

(e) Different Categories of Works

(i) (ii) (iii) (iv)

Literary Works Dramatic Works Musical Works Artistic Works

(i)

Literary Works

To be a literary work literary merit is entirely irrelevant In my view the words literary work cover work which is expressed in print or writing Peterson, J. in University of London Press Ltd. v. University Tutorial Press Ltd A literary work is a work that comprises one or more words which are designed to offer information, pleasure or instruction to the reader. (Exxon Corp. v. Exxon Insurance Consultants International Ltd.) Therefore names and titles are generally (not always) not protected

(ii) Dramatic works

Contrasting with literary works, this category of works is concerned essentially with works which are intended to be performed or represented rather than read or narrated. Includes: (i) a choreographic show or other dumb show if described in writing in the form in which the show is to be presented; and (ii) the scenario or script for a cinematograph film, but does not include a cinematograph film as distinct from the scenario or script for a cinematograph film.

Dramatic Works compared to Literary Works

As with literary works, only the form is protected not the themes and ideas. Form includes scenic effects, characters, costumes, staging directions, dramatic devices. To determine whether a dramatic work has been infringed, you can look not only at the words which have been copied, but also the dramatic effects which have been copied.

(iii) Musical Works

Difficulty of describing music, but generally a liberal approach is taken. Used to be defined as including any combination of melody and harmony or either of them, printed, reduced to writing, or otherwise graphically produced or reproduced. Rap?

(iv) Artistic Works

The Act defines artistic works as: a painting, sculpture, drawing, engraving or photograph whether the work is of artistic quality or not; a building or a model of a building, whether the building or model is of artistic quality or not; or a work of artistic craftsmanship to which neither of the last preceding paragraph applies.

a)

b)

c)

Subject Matter Other Than Works

Four Classes of subject matter other than works are protected. (1) Sound recordings; (2) Cinematograph films (would include computer games); (3) Television and sound broadcasts; and (4) Published editions of works These are essentially manufacturers rather than authors rights so generally accorded shorter term of protection. No need for originality.

Subject Matter Other Than Works

These rights subsist quite independently from any copyright in works. For example, copyright may exist separately in the script and musical score for a film as original dramatic and musical works respectively but these will be distinct from the copyright which will subsist in the film when it is made. For example, a computer game which enjoys copyright as a cinematograph film comprises of different and separate works. Practical result : Multiple copyrights in one work owned by different persons.

Rights of Monopoly
The owners of copyright in musical works, dramatic works and literary works (and artistic works*) have the exclusive rights, in relation to their works to: Reproduce their work in material form* - eg. DVD; Publish their work if the work is not published* - disclosing work to the world; Perform their work in public - performance; Communicate the work to the public* - electronic form; Make an adaptation of their work; Do any of the above to an adaptation of their work

Duration
Generally, how long does copyright last for works? 70 years from the end of the calendar year in which the author dies However if the work has not during the authors lifetime been published, publicly performed, broadcast, or sold in the form of records Copyright period of 70 years does not start running until the end of the calendar year in which the first of those events occur For subject matters other than works, the duration is 70 years from the end of the calendar year in which the subject matter was first published or broadcast.

Who Owns Copyright?

Generally whoever creates a work owns it. Therefore The creators of the literary, dramatic, musical or artistic work OWN their works UNLESS They created their work under a contract of employment or as a work for hire, or where works have been otherwise assigned to another party by agreement Generally for a subject matters other than works such as a film or a game, the person who pays the money to commission the production of the product, which incorporates these underlying works, owns the product. He does not however own the underlying works unless he has contracted to own it with the creators.

Infringement
If any person, without the authority of the copyright owner, does one of the things for which the copyright owner has the exclusive right to do, there is direct infringement. The onus of proving copyright infringement is on the person who claims copyright and an independent creation, even if substantially similar or identical, is not an infringement. It is also a violation of copyright if anyone sells, lets for hire, by way of trade offers or exposes for sale or hire, imports for purposes of sale or trade, any infringing articles which he knows or ought reasonably to know that the making of the article constituted an infringement of the copyright residing in that article. This is secondary infringement.

Infringement
Infringement can occur without reproduction of the entire copyright work. It is infringement as long as a substantial amount of the work has been copied. What is a substantial amount? Qualitative, not merely quantitative Nature of the portion that has been copied. The expression of the idea, not the idea itself. Appropriation of elements or parts which contribute to originality are more likely to be qualitatively significant Does the portion copied constitute the primary part or essence of the work being copied? Does it bring to mind the work being copied?

The Fair Dealing Defences

Even when a person does something within the copyright monopoly of another person, there will not be copyright infringement if the act of the person falls within stated exceptions. The fair dealing defences are most usually claimed.

Fair Dealing Defences

Under Section 35 of the Copyright Act, a fair dealing with a literary, dramatic, musical or artistic work, or with an adaptation of a literary, dramatic or musical work, for any purpose shall not constitute an infringement of the copyright in the work. The purposes for which dealing may constitute a fair dealing includes research and study.

The Fair Dealing Defences

When considering whether there is fair dealing in a case, the court must consider:
the purpose and character of the dealing, including whether such dealing is of a commercial nature or is for non-profit educational purposes; the nature of the work or adaptation; the amount and substantiality of the part copied taken in relation to the whole work or adaptation; the effect of the dealing upon the potential market for, or value of, the work or adaptation; and the possibility of obtaining the work or adaptation within a reasonable time at an ordinary commercial price.

Fair Dealing Defences

Other fair dealing defences relevant to the media industry Section 36 of the Copyright Act, - a fair dealing with a literary, dramatic, musical or artistic work or with an adaptation of such work shall not constitute an infringement of copyright in the work if it is for the purpose of criticism or review, and a sufficient acknowledgment of the work is made Section 37 of the Copyright Act, - a fair dealing with a literary, dramatic, musical or artistic work or with an adaptation of such work shall not constitute an infringement of copyright in the work if it is for the purpose of, or is associate with the reporting of current events - in a newspaper, magazine or similar periodical and a sufficient acknowledgment is made - by means of broadcasting or a cable programme service or in a cinematograph film

Fair Dealing Defences

Case Studies

Suntrust v. Houghton Mifflin

US Court of Appeals had to decide whether The Wind Done Gone ("TWDG"), a fictional work admittedly based on Margaret Mitchells Gone With the Wind ("GWTW"), infringed the copyright of GWTW. It was not disputed that TWDG contained plotlines and major scenes from GWTW; explicitly refers to GWTW in its foreword; copied core characters, character traits, and relationships from GWTW; copied and summarised famous scenes and other elements of the plot from GWTW; and copied verbatim dialogues and descriptions from GWTW. But author of TWDG argued that although these were taken, there was no infringement because it only took ideas and not form; and alternatively, that fair use applied because it was a critique or parody.

Suntrust v. Houghton Mifflin

The court held that the characters, settings, and plot taken from GWTW are vested with a new significance in TWDG, but it does not change the fact that they are the very same copyrighted characters, settings, and plot. Therefore there was infringement unless the fair use exception applied. The purpose and character of the allegedly infringing work, has several facets. The fact that TWDG was published for profit is the first factor weighing against a finding of fair use. However, TWDGs for-profit status is strongly overshadowed and outweighed in view of its highly transformative use of GWTWs copyrighted elements. It is manifest that TWDGs aim is to parody GWTW. TWDG was entitled to a fair-use defence.

Campbell v. Acuff-Rose Music, Inc

The US Supreme Court had to decide if a rap song written by Luther Campbell and his rap group, 2 Live Crew, Pretty Woman, infringed the Roy Orbison rock ballard Oh Pretty Woman. 2 Live Crew took the distinctive bass riff from the Roy Orbison song Oh Pretty Woman and changed the lyrics. The music was identifiably the Orbison song but it also contained interposed scraper noises, overlays of solos in different keys and an altered drum beat. 2 Live Crew had attempted to obtain permission from Acuff-Rose the publisher of the original rock ballard but were denied permission. When Acuff-Rose brought a lawsuit against Campbell and 2 Live Crew, the defendants pleaded the fair use parody defence.

Campbell v. Acuff-Rose Music, Inc

The court accepted the 2 Live Crew version as a parody and evaluated the fair use defence as to whether a parody could claim protection under such a defence. The court ruled that the transformative value of the rap song overruled the motive of commercial gain. The court also believed that the songs were targeted at different audiences. In determining the amount and substantiality of the portion used in relation to the copyrighted work, the court acknowledged that parodies present a unique difficulty as the success of a parody depends on its use of the original work. The conjure up test was used, ie whether the parodist has appropriated a greater amount of the original work than is necessary to recall or conjure up the object of the parody. The court ruled that 2 Live Crew did not use any more lyrics than were necessary. 2 Live Crew were entitled to a fair use defence.

The Cat in the Hat Case

Dr. Seuss Enterprises, L.P., v. Penguin Books USA, Inc. and Dove Audio, Inc. Alan Katz and Chris Wrinn, respectively, wrote and illustrated The Cat NOT in the Hat! satirizing the O.J. Simpson double murder trial. The book depicted O.J. Simpson, wearing the Cat in the Hats distinctive red and white striped stove-pipe hat, holding a bloody glove, and commented on the trial using the style and format of Dr Seusss The Cat in the Hat. The defendants pleaded the fair use parody defence. The court held that because the book ridiculed Simpson and the murder case, rather than the original work or its author, it is not a true parody eligible for the fair use defense.

Thank You!
No part of this talk may be reproduced without permission of Samuel Seow Law Corporation No part of this talk shall or is intended to take the place of legal consultation Samuel Seow or Trina Ha can be contacted at Samuel Seow Law Corporation 541, Orchard Road, #18-01, Liat Towers Singapore 238881 Tel: 6887 3393 Fax: 6887 3303 Email: samuelseow@sslawcorp.com trinaha@sslawcorp.com