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Douglas McLachlan on Intellectual Property for the Creative Community
My name is Douglas McLachlan and I’m an intellectual property or IP lawyer here at Anderson Strathern. I’m going to do a surface skim of intellectual property and its importance to the creative community. I’ll start with some useful terminology. Copyright is probably one of the most ubiquitous terms, and one of the most important to the creative community generally. Trade marks are also very important. We are also going to talk about intellectual property, it is very clear when working with the creative community why is it important to you, but it is important to know that intellectual property works for just about any business at all. I’m not really talking about patents in this seminar because I don’t think it is particularly important for the creative community.
I am now going to talk about Copyright:
Copyright is probably the most important general right for the creative community. In the UK it is automatic, there is no registration required at all, it protects original musical, dramatic, artistic and literary works; so were talking about books, plays, film, and sound recordings, but also software is protected by copyright. Copyright is a property right, it can be sold, it can be licensed, and generally it lasts for 70 year after the death of the author or creator. Sound recordings are slightly different it is 70 years after the publication. The important point here is that the author is the winner of the copyright and generally that is the person that is creating it. The exception is that if you are employed by somebody, then the employer will own the copyright and the intellectual property but if you have self-employed consultants working for your company, one of the most important being photographers, they own their own copyright. If you have a company it’s very important to have information in your contracts about copyright. Copyright does not protect ideas, it protects the expression of the ideas. What it doesn’t do it give you unlimited rights over a particular idea. What does copyright protect? Well, it protects against copy, which includes photocopy, but it protects against tracing, transcripts, issuing copies to the public in print or online, translation and performance. There are some exceptions and some of these have recently expanded. You can use somebody else’s copyright in specific circumstances, say, if you are making a parody sketch or song, it’s really a question of degree, of what they call fair dealing. Quotation has been expanded as well, it used to be part of criticism and review but now you can pretty much quote sections of a work provided it is genuinely for the purpose of quotation and as long as you acknowledge where it comes from. There are exceptions for incidental inclusion, such as the inclusion of logos or paintings in photograph, and there are other exemptions fort things like teaching, research and private study.
Fair dealings is a legal term used to establish lawful copyright and copyright infringement. There is no particular definition of what fair dealings is in the UK, it’s all really a question of fact, degree and impression in each case, and asking the question of “How would a fair minded and honest person have dealt with the work?”. As far as some myths to debunk, the first and most important in the internet age is that copyright is dead, that everything you put on the internet is in some way copyright free. Copyright is alive, and there are no special rules in terms of the internet. My biggest warning to you is if you have a website and you go on to Google images and decide to take an image, which will likely be a copyrighted image, and put it on your website or on a brochure, you are infringing copyright. We’ve had a number of clients that have been sued for using a photographer’s work because they have taken it off the internet and thought, “well, it’s on the internet, it must be free” and it’s just not the case. Finally, the idea of posting yourself a copy of something you’ve done by registered post as some cast iron way of proving copyright, it’s not cast-iron proof, because it could easily be forged.
Next I will discuss Moral Rights:
Moral rights are related to Copyright and they protect the right to musical, dramatic, artistic and literary works. They include the right to be identified as the author, the right to object to derogatory treatment and the right not to suffer false attribution and rights to privacy of certain films and photographs. Moral rights are personal to you, so unlike copyright they can’t be assigned, and they can’t be sold, but they can be waived, so be careful of that. Briefly I’m going to talk about artists resale right, which is a relatively new innovation that entitles artist and successors to a percentage of the sales price of the original copyright artwork if it is resold through market professionals. This lasts for the period of copyright, so for artists who have been dead for less than 70 years. It is on a sliding scale and starts at about 3%. The artists do not collect this themselves, there are two collecting societies that collect the royalties: The design and artists copyright society or the artist collecting society.
I will now talk about Registered and Unregistered Designs
These protect the appearance of the whole or part of a product. There are two broad categories, registered and unregistered. Unregistered designs are more for technical things, drawing, articles. Registered designed are more for things in the fashion and design industry and they are more for the appearance of articles and they cover surface decorations. They provide a legal monopoly for up to 25 years, which is renewable every 5 years. A registered design needs to be novel, and needs to be of individual character. Individual character is based on the impression of an informed user. It covers the aesthetic rather than technical function of an object. There are also EU unregistered design, which have the same criteria as an unregistered design, but with 3 years duration. The thing about registered designs is that they can be quite easy to work around.
Now on to Trade marks
Trade marks are meant to denote the origin of goods. They can cover all sorts of things, names, logos, catchphrases, images, jingles, anything that can be represented graphically can be trade marked. There are two types of trade marks, registered and unregistered trade marks. In the UK a TM symbol means someone has a trade mark for something, but it doesn’t’ mean it is registered. If you see an R symbol then than is saying there is a registered trade mark. As a lawyer it is so much easier to enforce a registered trade mark rather than an unregistered trade mark. Domain names are very important these days, and I would urge you to be very careful with your domain names. Trade marks aren’t particularly expensive to register; the important thing is that they can continue indefinitely. They can be protected and then they can be continued every 10 years, unlike copyright that expires 70 years after the death of the author. Trade marks can go on forever and they can also be assigned a license which is why they are quite useful for commercializing.
Questions
Kate: Can you talk about how we use quotes and stars in a lot of our publicity, because I was sure I heard something about how we have to be more careful about how we use reviews. Total theatre award for instance, we will continue using that for as long as we can.
Douglas: If you get a good review and you want to use it in promotional materials I think you can continue to do that; as long as it is factual. I don’t think it is something you should worry about.
Kate: How much license do we have to make it shorter for instance? To use the best words out of that, because that is what we want for our posters.
Douglas: Well there is intellectual property and there is intellectual honesty. I don’t think legally it would be a problem. If the work has changed you may be getting into the realm of misleading advertising, stretching the tape like that is not so much an issue of intellectual property as it is advertising.
Anne: Could you briefly talk about a self-employed consultant owning IP if they’ve created it as part of their employment for an outside body?
Douglas: If I have a company and I contract an employee just by operation of law, all the IP created by the employee in the scope of their duties, it belongs to the company and what tends to happen is the contract tends to be very precise about the scope of the duties so that if that employee does some work over the weekend, that is not something that the company is going to own. But we can get grey areas, so it is really important to go through the employment contract. If you are engaging someone in a freelance piece, they are self-employed and so the rule about the employer owning the work, doesn’t apply. So what happens, if you are trying to bring together a lot of intellectual property to one place, then you should have contracts with your freelancers that effectively say, this is what you are doing and identifying who the owner of the intellectual property will be. Sometimes you can agree that the person who in engaging you can own the IP.
Anne: What happens if you do something on a wholly voluntary basis for a cultural, charitable, or educational organization and the graft is yours?
Douglas: If there is no contract with clear terms and conditions then the volunteer will own that IP, but if you are contracted and you sign something saying that everything you do is for the body.
Ebonie: This conversation about intellectual property is fairly new in Tonga, and it’s kicking up a whole lot of stuff, so I want to have your comment on a few things. Firstly, what are your thoughts on IP and cultural works? From my background so much of the creative work that is done is inspired by or based on ideas or symbols or stories that are shared by everyone.
Douglas: You always have to have something that is new there. If you are effectively telling the same story, but you write it down, that effectively becomes a new work.
Yvette: What about some of the weaving signs and symbols? The really important marks of cultural specificity?
Ebonie: Because they are not even specific to say, Tonga. They will be shared by other nations and so we are still trying to navigate…by claiming something as Tongan are we stopping neighbouring islands from using it?
Douglas: If you are doing something new and distinctive with the interpretation of the design, but if you are using a symbol that been around for thousands of years you are not going to suddenly acquire exclusive rights to that symbol.
Ebonie: One good example is that Fiji airlines took ancient symbols and now said that this is trade marked and no one else can use it
Douglas: They can trade mark the image that they are using in particular for aviation, but you would have to be using it in the context of the trade mark. Trade marks are divided into classes, and there is a different class for aviation; so it depends how widely they have registered it. You have to be careful when using licensed images or logos because people will come after you for using their trade marked image, say in a presentation. When you go online try to find images that are not subject to copyright, because there are big businesses who will come after you for using their pictures in presentation, on your brochure, on your website. They have technical ways of tracking you, they can decode pictures and find who has used them.
Rochelle: I’m a writer and share an office with a t-shirt designer. He designs novelty shirts with cute little sayings and drawings. His business is registered but very much like all the other islanders here our infrastructure is very minimal. So in terms of trade marking those images I want to know if it works in terms of, if you register or trade mark does that cover all designs, or do you have to trade mark each one?
Douglas: Each one, if each one is different. It’s a case of deciding what is worth the money for the trade mark. You can’t trade mark everything, so you trade mark what is important to you and if you find something is a big seller then that is the thing to trade mark.
Rochelle: In terms of what Ebonie was saying, our country, we invented the steel pan, but because it was invented in the 1930’s it was never patented. So now other Caribbean countries and even countries like Japan are saying “we invented it” and I just wanted to know if there is an expiration date on how long you can patent something after its been designed?
Douglas: Yes, it is up to 20 years. The deal with patents is you are contributing to global knowledge, so you have created a new piece of technology and you publish it, you tell the world exactly how you did it and then in return for that you get a monopoly right for that. But after 20 years, after it expires, anyone can do it.