Intellectual Property Protection for a Global

Marketplace

Damon Neagle, Design IPMolly Torsen, ITA

Overview

• I. Overarching Similarities and Differences in Foreign Copyright Laws;

• II. Difference Between Copyright and Other Intellectual Property Rights

II. Copyright v. Other IPRs• Copyright is a legal term describing rights given to creators

for their literary and artistic works. The kinds of works covered by copyright include: literary works such as novels, poems, plays, newspapers and computer programs; databases; films, musical compositions, and choreography; artistic works such as paintings, drawings, photographs and sculpture; architecture; maps and technical drawings.

• Trademarks are distinctive signs, used to differentiate between identical or similar goods and services offered by different producers or services providers. Trademarks are a type of industrial property, protected by intellectual property rights.

• A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. In order to be patentable, the invention must fulfill certain conditions (novel, useful, non-obvious).

I. International View of Copyright

• Berne Convention for the Protection of Literary and Artistic Works (1886)

• (a) Works originating in one of the contracting States (that is, works the author of which is a national of such a State or works which were first published in such a State) must be given the same protection in each of the other contracting States as the latter grants to the works of its own nationals (principle of “national treatment”)

• (b) Such protection must not be conditional upon compliance with any formality (principle of “automatic” protection)

• (c) Such protection is independent of the existence of protection in the country of origin of the work (principle of the “independence” of protection).

Background

• No “international copyright law”: Every contracting party has domestic law; Berne provides a floor. Substantial latitude in implementing Berne.

• Civil law and common law traditions – moral rights starkest difference.

• U.S. joined Berne in 1988; currently 164 Member Countries.

Some differences US-others

Fixation Requirement. US: Fixation in a tangible medium of expression. Berne: Does not specify. Some South American jurisdictions and others (Switzerland) don’t require fixation.

Neighboring Rights.US: Includes rights for broadcasting, ephemeral recordings, etc., within copyright law. Berne: Provides separate protections for “neighboring rights.”

Differences, continued

Duration.US: Life of the author + 70 years (when vested with author); 95 or 120 years from date of creation in scope of employment. Berne: 50 years.

Limitations and Exceptions (Fair Use).US: Fair Use. Judge-made law until 1976. Four factors. Berne: “Three-step test.” Common law jurisdictions tend to have ‘doctrines;’ civil law jurisdictions tend to lay out specific exceptions.

Copyright Exceptions /Fair Use

• Berne Article 10– (1) It shall be permissible to make quotations from a work which

has already been lawfully made available to the public, provided that their making is compatible with fair practice, and their extent does not exceed that justified by the purpose, including quotations from newspaper articles and periodicals in the form of press summaries.

– (2) It shall be a matter for legislation in the countries of the Union, and for special agreements existing or to be concluded between them, to permit the utilization, to the extent justified by the purpose, of literary or artistic works by way of illustration in publications, broadcasts or sound or visual recordings for teaching, provided such utilization is compatible with fair practice.

– (3) Where use is made of works in accordance with the preceding paragraphs of this Article, mention shall be made of the source, and of the name of the author if it appears thereon.

U.S. (Common Law)

• US Copyright Act• In determining whether the use made of a work in any

particular case is a fair use the factors to be considered shall include— – (1) the purpose and character of the use, including

whether such use is of a commercial nature or is for nonprofit educational purposes;

– (2) the nature of the copyrighted work; – (3) the amount and substantiality of the portion used in

relation to the copyrighted work as a whole; and – (4) the effect of the use upon the potential market for or

value of the copyrighted work.

Examples (Fair use)

• Ringgold v. Black Entertainment Television, Inc., 126 F.3d 70 (2d Cir. 1997). Not a fair use.

• A poster of a church quilt was used in the background of a television series for 27 seconds.

• Important factors: The court was influenced by the prominence of the poster, its thematic importance for the set decoration of a church and the fact that it was a conventional practice to license such works for use in television programs.

Examples (Fair use)

• Kelly v. Arriba-Soft Corp., 336 F.3d 811, 816 (9th Cir. 2003). Fair use found.

• A search engine’s practice of creating small reproductions (‘thumbnails’) of images and placing them on its own website did not undermine the potential market for the sale or licensing of those images.

• Important Factors. The thumbnails were much smaller and of much poorer quality than the original photos and served to index the images and help the public access them.

Examples (Fair use)

• Blanch v. Koons, 467 F.3d 244 (2d Cir. 2006). Fair use found.

• Artist Jeff Koons used portions of a fashion photo - a woman’s legs in Gucci sandals - in a painting, Niagara. The painting included a montage of popular culture images spread over a Dali-like landscape.

• Important factors: The court viewed Niagara as a transformative use because it commented upon the use of fashion imagery in consumer culture.

Blanch v. Koons

France (Civil Law)• French Intellectual Property Code

Art. L. 122-5. Once a work has been disclosed, the author may not prohibit:

l. private and gratuitous performances carried out exclusively within the family circle;

2. copies or reproductions reserved strictly for the private use of the copier and not intended for collective use, with the exception of copies of works of art to be used for purposes identical with those for which the original work was created and copies of software other than backup copies made in accordance with paragraph II of Article L.

3. on condition that the name of the author and the source are clearly stated:– (a) analyses and short quotations justified by the critical, polemic, educational, scientific

or informatory nature of the work in which they are incorporated;– (b) press reviews;– (c) dissemination, even in their entirety, through the press or by telediffusion, as current

news, of speeches intended for the public made in political, administrative, judicial or academic gatherings, as also in public meetings of a political nature and at official ceremonies;

– (d) complete or partial reproductions of works of graphic or three-dimensional art intended to appear in the catalogue of a sale by public auction held in France by a public or ministerial officer, in the form of the copies of the said catalogue that he makes available to the public prior to the sale for the sole purpose of describing the works of art on sale.

4. parody, pastiche and caricature, observing the rules of the genre.

Current Conversations in © at the SCCR / WIPO

• Limitations and Exceptions: Distance education; transborder issues; potential new rules for the visually impaired

• Protection of audiovisual performances: Developing international standards

• Protection of broadcasting organizations: Possible treaty drafting (ongoing for several years)

Design Law

• Copyright & Patent• Depends on jurisdiction– Several specific design laws. Design patents

in the U.S. Industrial design laws and regulations elsewhere, including the Hague System under WIPO.

• International Case Studies on Industrial Design and SMEs: http://www.wipo.int/sme/en/index.jsp?sub_col=sme-cs&cat=industrial%20designs

Thank you

Molly TorsenOffice of Intellectual Property Rights

International Trade AdministrationU.S. Department of CommerceMolly.Torsen@trade.gov