Intellectual Property Streetwise doc

There are several mechanisms by which the creator’s IP rights can be established over a work: copyright, patents, trademarks, indus-trial designs, performer’s rights, confidential know-h

What creative workers need to know about IP 3

Different IP mechanisms 6

Check your contracts 9

IP rights in different creative industries Writing and Publishing 13

Film and Video 14

Music and Broadcasting 16

Art and Craft 17

Heritage 17

General information 19

Νοτε:

The IP field is a complex one The purpose of this booklet is

to give general information only More information will be

available on the forthcoming Cultural Observatory

website (contact ubaduza@hsrc.ac.zafor details)

As a second phase of the project we hope to

develop specific guidance for authors, artists,

musicians and other people working in the

cultural industries

If you have a specific problem we advise you to contact

organisations in your sector, the government agency

respon-sible for administering IP rights (CIPRO) or a lawyer specialising

in a relevant area of intellectual property (contact the SAIIPL to find

one) See the end of this booklet for the relevant contact details

This paper was developed by the HSRC’s Social Cohesion and Integration Unit in Cape Town as part of the Cultural Observatory initiative of the Department of Arts and Culture

It was written by Harriet Deacon with the assistance of Sandra Prosalendis and Utando Baduza Advice on the legal aspects of the document was kindly given

by Monica Seeber and Lawrence Reyburn

We would also like to thank the following people for their assistance in drafting the document: Eve Gray, Arlette Franks, Leonard Shapiro, Gavin Tonks, Kit Reynolds, Steve Kromberg, Erica Elk, Elitha van der Sandt, Gerard Robinson, and Jill Galanakis.

Research Programme, Human Sciences Research Council (HSRC)

Published by HSRC Publishers

Private Bag X1982, Cape Town, 8000, South Africa

www.hsrcpublishers.ac.za

© Human Sciences Research Council 2004

First Published 2004

All Rights reserved No part of this book may be printed or reproduced or utilised in any form or by any electronic, mechanical , or other means, including photocopying and record-ing, or in any information storage or retrieval system, without permission in writing from the publishers.

ISBN 0-7969-2085-0

Production by ComPress

Ωηατ χρεατιϖε ωορκερσ νεεδ το κνοω

αβουτ ιντελλεχτυαλ προπερτψ

As creative workers, we rely on IP for our livelihood but are particularly vulnerable to transgression of our IP rights because we work on a small scale, do not usually earn enough to employ specialist lawyers or go to court, and find it difficult to access infor-mation about our rights This booklet is intended to provide some basic inforinfor-mation on what IP is and how to protect your IP rights

Intellectual property (IP) is a legal term, describing the fact that people can acquire rights as a result of their creativity and innovation IP rights cannot be held over ideas but only over the way they are expressed in material form: writing, painting or sculp-ture, film, music, designs, inventions, etc If you want to protect the IP rights to your

ideas try and express them as fully as possible in some material form, for example, by writing them down, recording them on tape, making a sculpture, music or artwork

Locking your work away in a drawer may sound like the best option for protecting your IP rights – but it won’t help you to earn money from or get exposure for your work Protecting your IP rights in something you make only benefits you financially when other people want to buy it, or when you can get a financial settlement by proving that others have copied your creative expressions and made money from them

There are several mechanisms by which the creator’s IP rights can

be established over a work: copyright, patents, trademarks, indus-trial designs, performer’s rights, confidential know-how, and indige-nous knowledge Some kinds of IP mechanisms (e.g copyright) are automatic and do not require registration, others require quite complex registration processes (e.g patents) Whatever route you take, make sure you have established your rights over the work in a way that can stand up in court Use the table in this booklet to find out what IP mechanisms you will be dealing with in your sector

Underlying IP law is the general idea that people who create original works should be recognised as the authors of those works and receive benefit from money generated by the commercial use, or economic exploitation, of those works Intellectual Property Rights (IPRs) are legal rights granted to people who have made an original creative work If you have created a work, you have IP rights over it irrespective of

whether you are a famous (or even a good)

artist, musician or writer, whether the work is a

good one, or even whether it is complete

Owning IP rights is different from owning

objects both because IP rights generally do not

last forever, and because IP rights often exist in

the creativity expressed in something rather

than in the object itself In order to establish

your claim to the IP associated with your

cre-ativity, you have to create something material

(e.g a piece of writing or an artwork) but your

rights to the IP in that book or artwork are not

tied to your possession of the material object

You can sell a sculpture or book, for example,

without selling your IP rights over it

IP rights are actually a bundle of different rights

that can be transferred to different people by

the original creator, usually for a payment of

some kind For example, the author of a book

owns the moral right to be identified as the

author and the copyright over the way words

have been used to express his or her ideas in

the book Through negotiations with the author,

a publisher may acquire the license to publish

the book the author has written, and a

film-maker may acquire the rights to produce a film

of the book (these rights are often limited to

specific countries, languages and specific time

periods) Rights owners do not have to transfer

all their intellectual property rights to one

per-son or company, but in some industry sectors

this may be the norm

Protect your IP rights: This can be done by

registering designs, trademarks and patents;

dating, signing and copyright-marking your

work Read more about how to do this below You can also sign contracts with people you work for or show your work to – see the checklist for contracts in this booklet

IT COULD HAPPEN

TO YOU…

These are fictional examples based on experiences in the sector

The price of a date: FB was a

visual artist who created stone and wood sculptures She

creat-ed designs that were copicreat-ed by

a company manufacturing gar-den gnomes and registered as industrial designs However when she looked into it with a lawyer, FB could not prove that the designs were initially hers because she had not dated her work This meant that the com-pany would not pay her any roy-alties and could actually sue her for copying their designs

Preventive measures: always

sign and date your work so you can prove you own the copyright should your rights be challenged

or transgressed Keep dated and signed records of your cre-ative processes – sketchbooks, logbooks, journals etc

Defend your IP rights: Any public exposure of your work exposes it to potential

unau-thorised use and copying – but it is necessary in order to earn money from the work It can be expensive to enforce your IP rights through the courts, but sometimes it is worth it – you need to work out the costs and potential benefits Don’t be afraid to negotiate costs with your lawyer

Don’t infringe other people’s rights: If you are borrowing creative ideas from other

people or registering your own trademarks and brands, it is important to make sure you are not infringing other people’s IP rights This is not only unethical, but it can also be costly if they challenge you, and it can lead to brand confusion or to loss of profits through unnecessary advertising and legal fees

IT COULD HAPPEN

TO YOU…

These are fictional examples based

on experiences in the sector

Stolen goods: Crafter NM from a

small town in the Eastern Cape sold a

number of beaded craft designs to a

foreign tourist visiting her town The

man went back to his country and

proceeded to mass-produce the

bead-ed designs there at low cost Although

NM could prove that she was the

author of the designs she was not

aware of the problem for some time

and in any event did not have the

money to pursue a court case

Fortunately an angry letter to the

press from a well-informed customer

in the foreign country highlighted her

plight and embarrassed the man’s

company into sending her some of the

royalties due to her Not everyone is

so lucky, however

Preventive measures: many people

have their designs stolen, both here and abroad, and it is difficult to seek low-cost remedies Public exposure of illegal and dishonest behaviour by large companies can sometimes work

as well as, if not better than, legal action However, you may find your-self in difficulties if you make allega-tions that cannot stand up in court Also, many designs are stolen by small concerns, not big companies

If you do go to court, it’s much easier

to prove your work has been copied if you have lodged a signed and dated copy of it with a lawyer or some other responsible third party before you start selling or displaying it Most designs can also be registered as industrial designs so that if your work

is copied without permission, you will find it easier to get a remedy in court However, design registration and court cases can be expensive

ΙΠ Μεχηανισµσ

Patents provide IP protection for original inventions that use a new process or result in

a new kind of product Patent protection means that the invention cannot be commer-cially made, used, distributed or sold without the ownerís consent Inventors can patent inventions with CIPRO and then sell or license these rights to someone else

Trademarks are words, images or symbols that distinguish one product from another in the marketplace They can be registered with CIPRO

Industrial designs protect IP rights in the shape, form, appearance, pattern, ornamenta-tion and configuraornamenta-tion of a product that has been registered as a funcornamenta-tional and/or aes-thetic design by CIPRO Industrial designs have to be able to be produced by an industrial process – they don’t have to be being produced in this way at the time of application

Performer’s rights require a performer or producer of a work to be paid for public uses

of the performance, not just the written or visual reproduction of the work In South Africa, performers’ rights now apply to traditional cultural expressions, such as tradi-tional ceremonies, performances or dances

Most creative workers find it too expensive to register patents, trademarks or industrial designs to protect the IP in their works Copyright is free, requires no registration, and gives protection for around 50 years, longer than patents (20 years) and industrial designs (10-15 years) (Trademarks can be renewed for an unlimited period.) For rea-sons of space, we will therefore give a bit more information on copyright

Χοπψριγητ

Copyright protects the right of the original creator to reproduce the work in any manner

or form unless he or she agrees to have someone else reproduce it Copyright does not prevent limited private or personal use of the work by others – it is focused on pre-venting personal gain accruing to others through the use on a commercial basis of a significant part of the work, or through unacknowledged use of the work Copyrights can be sold or licensed to others

South Africa’s Copyright Act (Act 98 of 1978, as amended) covers literary, musical and artistic works, cinematograph films, sound recordings, broadcasts, program-carrying signals, computer programs and published editions

The term ‘literary’ does not mean the work has to be of any special literary quality or standard; it merely means recorded - or made material - in written, printed or digital form Similarly, ‘artistic’ refers to works recorded by drawing, painting, photography, etc and not necessarily something of inherent aesthetic value For a work to be eligible for copyright protection, it does not have to be published or manufactured There is no copyright over ideas that have not been written down or otherwise made material

Εσταβλισηινγ χοπψριγητ

According to the Copyright Act (1978), a work is eligible for South African copyright protection if it has been made by a person or entity residing in South Africa, or has been first published or broadcast or made in South Africa All countries that are signa-tories to the Berne Convention (as is South Africa) are bound to protect the rights of authors from other member countries in the same way as they protect their own This

is known as the principle of national treatment

Copyright does not have to be formally registered in order to come into effect In South Africa there is, in fact, no compulsory registration for copyright: it arises automatically when you create your work But because of the way the Copyright Act is written, you have to be able to prove that you own copyright in order to enforce your IP rights in court You should therefore state explicitly on all your creative works that they are sub-ject to copyright Write “copyright”, or “©” followed by your full name and the year of creation or publication Posting your signed work to yourself and then keeping it in the sealed envelope is a method often used to prove that you wrote the work before a spe-cific date, but it may not stand up in court

Copyright in films and cinematography can be formally registered with CIPRO - regis-tered works will be listed in The Patent Journal This registration is not compulsory but

it can help to make authorship and other relevant factors easier to prove if a dispute arises

Some organisations help creative workers prove they own copyright in case of trans-gression by providing a voluntary but legally admissible registration service

Scriptwriters can for example submit a paper copy, computer disc, CD ROM or video tape of their script to the South Africa Script and Story Register for added protection against artistic and design theft For the same reasons, composers and lyricists can register their work through the Southern African Music Rights Organisation (SAMRO), while authors, poets and dramatists can register at the Dramatic, Artistic and Literary Rights Organisation (DALRO)

Ηοω λονγ δοεσ χοπψριγητ λαστ?

Sound recordings, radio and TV broadcasts: copyright remains in force for fifty

years from the date of first publication or broadcast

Films and cinematography: copyright lasts for 50 years from the date the film was

first made or shown

Photographs: copyright expires 50 years after the work is made available to the public

(published) If the photograph is not published within 50 years of its making, copyright expires 50 years after the photograph is made It therefore has nothing to do with the life of the author

Published editions: copyright lasts for 50 years from the end of the year in which the

edition is first published

Literary, musical and artistic works (excluding photographs): copyright lasts for 50

years after the death of the author (from the end of the year in which the author dies) But if the work has not been published before the author dies, the term of copyright continues to subsist for 50 years after the end of the year in which publication does take place If publication never takes place, the duration of copyright is perpetual In the case of joint authorship, ‘death of the author’ is deemed to be the death of the author who dies last

Anonymous works: copyright lasts for 50 years from the end of the year in which the

work was made available to the public (published) or from the end of the year in which

it is reasonable to presume that author died (whichever is the shorter) But if the

identi-ty of the author becomes known before this period expires, then copyright lasts for the life of the author plus 50 years

Μορε ινφορµατιον:

Dean, O Handbook of South African Copyright Law (Juta) DALRO (http://www.dalro co.za/) & CIPRO have specific information on copyright on their websites The full text

of the Copyright Act (1978) with amendments is available on the UNESCO Collection

of National Copyright Laws site.(http://portal.unesco.org/culture/en/ev.php@URL_ID

=15486&URL_DO=DO_TOPIC&URL_SECTION=201.html) The South African

Scriptwriters Association website (http://www.saswa.org.za/)has articles on copyright for scriptwriters The Writers’ Network website (http://www.thewritersnetwork.org/ index.htm) has articles on copyright for writers Register your scripts on the South African Script and Story Register (http://www.saswa.org.za/resources/register.html)

Χηεχκ ψουρ χοντραχτσ

Contracts can cover any kind of agreement between two parties Some common kinds

of contracts in the creative industries that deal with IP issues include confidentiality agreements (such as the submission release form used by scriptwriters), recording contracts, publishing contracts, and so on Confidentiality agreements may regulate the use of material in a situation where IP rights are not being ceded to another party Other kinds of contracts may specify what IP rights (e.g distribution rights) are being ceded by the rights owner (e.g the recording artist) to another party (e.g the recording company), where these rights apply (e.g world rights, national rights) and for how long

Τηεσε κεψ ισσυεσ ρεγαρδινγ ΙΠ ριγητσ µαψ βε χοϖερεδ

ιν α χοντραχτ:

1 Exclusive and non-exclusive rights: An exclusive license gives the person receiving the licence the only right to use the knowledge, rights or resources in the

ways specified A non-exclusive licence places no limits on

subse-quent licences or others using the same knowledge, rights or

resources Make sure that you are clear about which licences

your are granting or acquiring are exclusive, and why

Understand what the industry norms on this are

2 The duration, geographical scope and type of IP rights For

example, publishing contracts can assign (or license) rights

defined by format, medium, territory, duration and language For

instance, in a contract between an author and a publisher, the

contract may give a publisher the right to publish a book in the

English language only, or in all languages; in South Africa only, or

throughout the world; in volume form only, or electronically as well;

for a limited period of time, or for the duration of the copyright Remember: people can-not license to others any rights that they do can-not own themselves It’s also can-not a good idea to cede rights to others if they are not likely to use them

3 Primary and subsidiary rights The owner of IP rights may give permission for others

to negotiate licensing of further rights to third parties In publishing, for example, The primary right is the right to publish the book, whereas the subsidiary rights grant the publisher rights to issue sub-licences such as to reproduce extracts; to make a film; or

to adapt the work in some other way The publishing contract will always set out the moneys the author can expect to receive from the sale of such subsidiary rights

4 Royalties: Royalties are the payments given to rights holders in acknowledge-ment of their contribution to the product that is sold Composers, for example, negotiate a royalty fee or percentage of sales with a recording company Flat fees may be disadvantageous to the

compos-er if the product sells vcompos-ery well Make sure you understand how this percentage

is calculated, whether on gross receipts

or on net profits, and how overheads and expenses are factored into the net profits Discuss the issue with other people in your industry and find out what the indus-try norms are before going to sign any contract

5 Reversion of rights A contract should set out the circumstances in which rights granted will revert to the original rights-holder In the case of a contract for the publication of a book, rights normally revert when the book has gone out of print, the author has requested the pub-lisher to reprint it, and the pubpub-lisher fails

to do so after a certain period of time

6 Minimum performance clauses:

Original rights-holders can require a com-mercial company such as a publisher or

a recording company to take active steps

to promote the product, and put in place fallback mechanisms should this not be done Fallback mechanisms could include a reversion of rights or a switch

to a non-exclusive licence

7 Acquisition of rights to reproduce other rights-protected material In publishing, a manuscript frequently contains quotations

IT COULD HAPPEN TO

YOU…

These are fictional examples based

on experiences in the sector

Concept theft: HG was an author of

childrens’ books He was asked by his

publisher to come up with a concept

for a new book series In the process

of thinking through his ideas, he

dis-cussed them with some friends before

he had had a chance to write them

down One of the friends inadvertently

passed on a key idea to a rival

pub-lisher the next day, and this idea was

put on paper immediately and used as

the basis for developing their new

series Although it was HG’s original

idea, he had not established copyright

over it by writing it down or recording it

in some other way The rival publisher

owned the copyright because he had

put it in writing first

Preventive measures: record your

ideas on paper or tape in order to

pro-tect your IP rights over them before

you share them with others – ideas are

not copyrighted , only their material

form HG could find a legal remedy

under the law relating to unlawful

com-petition as a delict, however, especially

if there was an element of

confidential-ity implicit in the circumstances by

which the competitor got to hear of his

idea