Seminar 11 - S15.pptx by MNO DRAGONS TRUST

sda

1. Seminar 11 Intellectual Property

2. Intellectual Property Includes: Copyrights Trade Marks Patents and Registered Designs What is the broad purpose of IP Law?

3. Copyright Copyright is governed by the Copyright Act (all sections referred to in this part are with reference to the Copyright Act). Copyright protects the form of expression of ideas and not the ideas themselves. Copyright is automatic – ie : need not be registered. (Query: to enjoy protection must there be a © symbol?) However, for copyright to exist certain preconditions must be satisfied such as: It must be a “ authors’ work” or “subject matter other than a work” and There must be a connection between the author or the work itself, and Singapore (what if there is no connection – eg : a song was recorded by a recording company in the US and you downloaded it from the Internet?).

4. Authors’ Works To qualify as Authors’ Works, the work must be “original” ( ie : whether, skill, labour or judgment was exercised in the creation). Authors’ Works include: Literary Works (note: meaning of “Literary”). Musical Works Artistic Works

5. Subject Matter Other Than Works Subject Matter Other Than Works (also known as entrepreneurial works) includes: Sound Recordings Cinematograph Films Television and Sound Broadcasts Published Editions of Works Discussion Question: When a radio station broadcasts a song from a CD on radio, what are the copyrights involved? What copyrights are involved in X company’s advertisement in Y magazine?

6. Who Has Copyright? Generally the author/entrepreneur. Exceptions include (section 30): Copyright created in the course of employment belongs to the employer unless the parties agree otherwise. Copyright in photographs/drawings belongs to the commissioner of the work and not the person who took or made the work unless the parties agree otherwise. Discussion Questions: Does the lecturer or his university have the copyright in the power point slides created by the lecturer? X company designs an advertisement for Y company – who has the copyright in the advertisement?

7. Copyright – How Long Does it Last? Generally – For Authors’ Works – Life plus 70 years. For Sound Recordings/Cinematograph Films – 70 years after it was first published. For Broadcasts – 50 years from the time it was first broadcast. For Published Editions of Works – 25 years from publication. Discussion Question: Can you photocopy the whole of the 20 th edition of a book which comprises a Shakespeare play?

8. Rights Conferred by Copyright The exact type of rights conferred by copyright, depends on the type of work. For instance, for literary/musical work, right includes (section 26): Right to reproduce work in a material form Publish work ( ie supply reproductions of the work to the public) Perform work in public ( ie visual or aural presentation to the public) Communicate work in public ( ie transmit by electronic means/broadcast to the public) Discussion Question: based on the above paragraph, if you write a novel, what rights would copyright confer on you? Note also: copyright is an item of property which can be assigned or licensed. Queries: - (a) Who do you think has the copyright in your textbook – the author or the publisher? - (b) If a broadcast station wants to play a song from a record, what should they have done ? -

9. Copyright Infringement When a person without the consent of the copyright owner does (or authorizes another to do) any of the acts that only the copyright owner can do – there will be an infringement (section 31). In relation to reproduction – how much must be copied? ( Eg : would it make a difference whether you copied one line of a book or 15 pages of a book)?

10. Some Defences to Copyright Infringement – Generally Stated Innocence? Attribution of source? Implied licence ? – Fair dealing for any purpose, including research or study (note: if for research or study – and not more than 10% of the edition [pages/bytes] or 1 chapter is copied – that is deemed to be fair). - Eg : if a lecturer has incorporated copies of newspaper or internet articles on power point slides for the purposes of teaching in the classroom – is that fair dealing? Fair dealing for the purposes of reporting current events.

11. Consequences of Infringement: Civil Liability Remedies include ( eg : section 119): Damages Statutory Damages Account for Profits Injunction Delivery up of Infringing Copies How do these differ from contract law principles?

12. Consequences of Infringement: Criminal Liability (section 136) Selling/renting out/importing/distributing – for trade purposes infringing copies OR Willfully infringing – if the extent of infringement is significant and/or if it is done to gain a commercial advantage . Are these offences?: you buy a pirated CD from a shop you download a pirated movie online you sell copies of school examination papers in a HDB block

13. Trademarks Trademarks are governed by the Trademarks Act (all sections referred in this part are with reference to the Trademarks Act). Under section 2 - a trademark is essentially any “sign” which is capable of being graphically represented and which can distinguish your products or services from that of another: EXAMPLES OF SIGNS: LETTERS WORDS NAMES SIGNATURES SHAPES

14. Registration – Sections 5 and 6 To enjoy protection under the Trademarks Act, the sign must be registered – in respect of one of the classes of goods/services under the Trademarks Act. The person seeking registration must use or have a bona fide intention to use trademark in respect of that class. How long is registration valid for? What about international protection?

15. Some Bars to Registration – Section 7 If not distinctive ( eg : “Tom”) - No. But note exception: it may become distinctive because of a long use or because it is in a stylized form. If descriptive of quality, purpose, geographical original ( eg : “sweet” for chocolate) - No. But note: exceptions stated above also apply.

16. Some Bars to Registration – Section 8 Identical mark – identical goods/services – No. Identical/similar mark – identical/similar goods/services – No – if public would be confused. Identical/similar mark – identical/similar/different goods/services – No – if: (a) the earlier mark is “well-known in Singapore” and the new mark would indicate a connection between the two and is likely to damage the interests of the earlier trademark holder or (b) The earlier mark is “well-known to the public at large in Singapore” and the new mark would cause dilution in an unfair manner or would take unfair advantage of the distinctiveness of the earlier mark.

17. Some Bars to Registration Note: Difference between “well-known in Singapore” and “well-known to the public at large in Singapore”. Discussion Question: Can someone register the name McDonalds for a piece of computer gadget?

18. Rights of Trademark Holder Trademark holder can use the trademark and authorise others to use it. Trademark holder can assign or licence the trademark. For instance, if you are the franchisor – would you assign or licence out your trademark to the franchisee?

19. Assuming there is no consent - some forms of Infringement – Section 27 Section 27(1): Identical mark – identical goods/services. Section 27(2): Identical/similar mark – similar/identical goods/services – if public would be confused . Section 27(3): Identical/similar mark – different goods/services – if the earlier mark is “well-known in Singapore”, the new mark would indicate a connection between the two, confuse the public and is likely cause damage to the interests of the earlier trademark holder.

20. Assuming there is no consent - some forms of Infringement – Section 55 Note: section 27 relates to locally registered trademarks, whereas section 55 includes those registered in convention countries as well. Section 55(2): Identical/similar mark – similar/identical goods/services – if there will be confusion. Section 55(3): Identical/similar mark – different goods/services – - If the earlier mark is “well-known in Singapore”, the new mark would indicate a connection between the two and is likely cause damage to the interests of the earlier trademark holder OR - If the earlier mark is “well-known to the public at large in Singapore” and the new mark would cause dilution in an unfair manner or would take unfair advantage of the distinctiveness of the earlier mark.

21. Defences for Infringement – Section 28 Honest use of own name/descriptive marks - in relation to industrial/commercial matters. Non-commercial purposes. Discussion: Would there be a defence in the following situations: (a) A bakery advertises that it sells “Oreo” cheesecake. (b) A lecturer uses the trademark “Oreo” to illustrate some principle in his power point slides.

22. Consequences of Infringement Civil Remedies: Damages Statutory Damages Injunctions Account for Profits Delivery up of infringing copies Note: for a breach of section 55 (as opposed to section 27) – the innocent party can only get an injunction. Criminal Liability Counterfeiting/Importing Keeping in possession infringing copies for trade Eg : if you have a fake Prada bag, are you committing an offence? Discussion Question: from what has been discussed so far - how does passing off vary from trademarks?

23. Summary Various forms of intellectual property are protected in Singapore. However to enjoy protection, most forms of intellectual property have to be registered. If a person does what only the intellectual property holder can do - without his consent – that person would be infringing that intellectual property right – unless some defence applies. There are civil and in some cases, criminal liabilities, for the infringement of intellectual property rights.

24. Reading Chapter 14 RC and/or TB. But note: the following topics are not in the syllabus, though you may wish to read them for your own knowledge: Patents, Registered Designs, Performance Rights.