1. WIPO-NIFT TRAINING THE TRAINERS WORKSHOP ON INTELLECTUAL PROPERTY RIGHTS New Delhi, June 20 to 24, 2005

2. 2 Benefiting From Your Copyright Lien Verbauwhede Consultant, SMEs Division World Intellectual Property Organization (WIPO)

3. 3 This Presentation 1. Introduction: Copyright vs. industrial design 2. Generating income from creations 3. Licensing 4. Merchandising 5. Conclusions

4. 4 1. Introduction Copyright vs Industrial Designs

5. 5 Original works –painting, drawing, photograph, sculpture, engraving, illustrations, etc No formalities Longer term Automatic all Bern countries Not goods related Only prevents actual copying Ornamental/aesthetic aspect of an article –shape, configuration, pattern, ornament, composition of lines or colors Applied to article by industrial process or means Registration + fees Max. 15y in India Territorial For goods registered Monopoly CopyrightInd. Design

6. 6 Copyright and designs protection are essentially different in nature and scope Wine bottle holder Amrita Shergill

7. 7 Occasionally, the subject matter of an industrial design may appear to coincide with the subject matter of artistic copyright Monopoly game Carpet Table mat Start of life as an artistic work Are capable of reproduction as products entitled to design protection Pottery vase

8. 8 In principle... The application of an artistic work to an article as a design will infringe copyright in that work because its a reproduction of that work in the absence of any statutory provisions preventing this.

9. 9 Possible scenarios Copyright + design Either copyright or design Lose copyright when industrial use –reproduced in products Copyright not available during industrial use Loose copyright when you register design Loose copyright + design right if no registration

10. 10 No dual protection in India ! No dual protection in India ! Art 15 Indian Copyright Act Design registered under the Designs Act No copyright Design capable of being registered, but not been so registered Copyright ceases as soon as article to which the design has been applied has been reproduced >50 times by an industrial process

11. 11 When do you need to consider registering your art as a design? If you start making multiples of an artwork If you incorporate artwork in an article In India: Consider registering your art as an industrial design Overseas: Obtain separate advice. The interaction between design and copyright law varies from country to country Register a design BEFORE articles made are sold or published!

12. 12 2. How can you generate income from your creations protected by copyright?

13. 13 (a) Commercialize your works yourself –Exploit your works individually : Simply sell the products Make copies of the products and sell them Reproduce the works on t-shirts, posters, etc. Exhibit the works in museums, craft exhibitions, fairs, etc.

14. 14 If you sell your work, do you lose your IPRs over it? Mere sale of a copy of a work protected by copyright does not automatically transfer copyright to the buyer Idem: –Mere sale of a work that incorporates an industrial design does not automatically transfer design rights to the buyer –Mere sale of a patented work does not transfer patent rights to the buyer

15. 15 The property rights over a physical object (work) are completely independent from the IP rights of the creator. The buyer of a work acquires the physical object, but not the copyright, design rights, etc. over the work –pigments, canvas, frame, stretcher IP rights in the work remain with the creator unless he expressly assigns it by written agreement to the buyer

16. 16 Selling an article does not mean loosing copyright Selling an article does not mean loosing copyright

17. 17 Buyer cannot make copies and sell them (reproduction right) Buyer cannot print the sculpture on postcards and sell them (reproduction right) Buyer cannot exhibit the sculpture in art gallery or other public place (exclusive right to show the work in public) Example. Artist sells his sculpture...

18. 18 Buyer cannot alter the work in a way that is prejudicial to the honour or reputation of the author (moral right to object to derogatory treatment) Ex. Geese in Canada Ex. Painting burned in chimney after dispute with wife

19. 19 (b) Sell your IP rights –You can transfer all or part of your exclusive rights to someone else Assignment Irrevocable transfer of the owners entire interest in all or some part of the intellectual property In writing + signed May be partial (type of right / time) –Buyer becomes the new owner of the transferred rights (trademark, design, copyright)

20. 20 Example. Artist sells copyright in his sculpture... Buyer can exhibit the sculpture, reproduce it on postcards, take a photograph of it, etc. Artist cannot reproduce it on postcards, etc. without explicit authorization from the copyright owner BUT: Moral rights remain with the artist No derogatory treatment Right to be identified as author

21. 21 (c) Authorize someone else to reproduce or use your work –Artist can authorize someone else to exploit his IP rights, against payment –Authorized person (licensee) can only use the rights in the specific form and under the specific conditions allowed by the license E.g. only one reproduction, in specific magazine, in color, with a biography of the artist, etc.

22. 22 –License Transfer of rights Artist (licensor) retains the IP rights –Artist can authorize several people to exploit the works simultaneously –Exclusive vs. non-exclusive licenses Licensee does not acquire any ownership of the IP rights

23. 23 3. Licensing

24. 24 (a) What is licensing? License is an agreement between the owner of the IP right (licensor) and another person (licensee) in which the licensor permits the licensee to use the IP right in the manner and for the time period specified in the agreement. only right to use (not own) the rights only in a specific manner

25. 25 (b) Examples of licensing Trademark… - Word + figurative element - Spain CTM (registered with the OHIM) - For toys, especially maquettes (sailing boats, wooden cars, teddy bears, etc.)

26. 26 Industrial designs… Owner of industrial design grants to someone else certain rights related to the design. This may include such things as the right to use, manufacture and sell the design.

27. 27 Copyright… Consider licensing You are an artist/designer and dont want to be involved in manufacturing You dont have capacity to produce more items You dont want to produce elsewhere (in India/abroad) You dont have capacity to distribute elsewhere You want to benefit from a better reputation of a partner

28. 28 Copyright… Embroidery Stock design: Library of designs for commercial embroidery companies to sew on garments for sale Download online License agreements to use design Allows embroiders to choose according to their preferences and project needs

29. 29 (c) Why should artist/artisan consider licensing? Income: Can generate lucrative fees and royalties New markets: Allows to enter into new product categories or in new geographical areas in a relatively risk- free and cost-effective way Marketing tool: Increases the artists / artisans exposure and recognition

30. 30 (e) How to develop a proper licensing strategy ? 1. Protect your IP rights –Deposit and register, if possible –Keep confidential information secret –Place notice on the works ©, Lien Verbauwhede, 2005 "Protected Design, Lien Verbauwhede, 2005 Lienky® Other logos/notices

31. 31 2. Find right licensee –Look for potential users –Internet, licensing organizations, specialized merchandising companies, etc. E.g. International Licensing Industry Merchandisers Association (LIMA) –Trustworthy and diligent partner

32. 32 3. Assess foreign markets –Usually, the licensee will be responsible for local manufacture, localization, logistics and distribution –Protect your IP in the relevant markets IP rights are territorial (but copyright...) International treaties Differences in national IP laws (term, etc)

33. 33 4. Preserve control over the commercial use of your works –Licensee must place IP notice –Require samples of the products QUALITY

34. 34 5. Tailor scope of license to actual needs of licensee –Avoid assignment of rights –Prefer non-exclusive licenses –Limit the scope to the specific needs and interests of the licensee (intended business goal) If assignment or exclusive license negotiate fair compensation Once you assign your rights, you loose all its future income earning potential

35. 35 6. Draft a solid license agreement –Content –In written + signed –In many countries: must be registered with Copyright Office in order to be able to enforce rights against others (unlike India)

36. 36 7. Negotiate fair compensation –Fee –Royalty

37. 37 8. Take action against infringements

38. 38 ( f) What should be mentioned in a licensing contract? –Parties: Who bill be bound by it –Subject matter: What exactly is being licensed –Goods: Types of products/services the IP right will be used for –Targeted Use: manufacture and/or distribution of the goods sale of those goods use on corresponding packaging and advertising materials use for advertising campaign, Internet skip

39. 39 –Territory: Countries where the goods will be sold or manufactured –Term: Number of months/years; or number of units; or time to achieve the intended business goal Can the agreement be prolonged after that period? Can the agreement be terminated before that period under certain conditions? Consequences of such early termination –Conditions after termination

40. 40 –Compensation One-time payment (flat fee); periodic payments (royalties); combination Basis of calculation of royalties (sales, hits) Timing of payment –Exclusive or non-exclusive? –Sub-licenses? If allowed prior agreement? –Materials to be provided to the licensee E.g. mould of sculpture

41. 41 –Requirements as to the use of the work Size, placement, format, quality, resolution Attribution (copyright notice, trademark notice, etc) Prior approval (reproduction proof) –Requirements as to the commercialization of the products: Selling points Minimum production Obligation to inform about the number of products manufactured, distributed or sold, etc. Marketing duties –Requirements as to publicity and promotion In television, newspaper, radio, etc.

42. 42 –Third party infringements Obligation for the licensee to keep you informed about any infringements of your IP rights by third parties of which he becomes aware –Indemnification clause Licensee will protect you from any lawsuit that might arise from licensing activities –General clauses Applicable law Jurisdiction Dispute resolution Confidentiality, etc

43. 43 4. Merchandising

44. 44 (a) What is merchandising? Merchandising is a form of marketing whereby IP rights (typically trademarks, industrial designs and copyright) are used upon corresponding goods Generally through licensing : No assignment of rights, only an authorization to use the work in a specific manner

45. 45 (b) Examples of merchandising Paintings… Picasso Botero

46. 46 Drawings and cartoons … Panda from the WWF Fido Dido < Joanna Ferrone and Susan Rose

47. 47 Architectural works … Eiffel Tower, Paris Atomium, Brussels Taj Mahal, India

48. 48 Photographs … Guerrillero Heroico < Alberto Korda (1960) Key rings, agendas, hats, socks, bed linen, kitchenware, etc. However, Alberto Korda received only very little financial remuneration for the use of his photograph

49. 49 –For the artist: His work is promoted, and will gain recognition and value in the market Receives additional and continuing remuneration (+ heirs) Maintains ownership over his rights and controls the uses of his works –For the merchandisor: Can use the attractiveness of a work to promote the sale of his products

50. 50 Case Study: Mary Engelbreit Mary Engelbreit is known throughout the world for her colorful and intricate designs, and has become a pioneer for art licensing. Beginning: "drawing to order" for free-lance clients. Wanted to be a children's book illustrator. Went to New York "mild reception" from publishers Suggestion: illustrating greeting cards

51. 51 Several well-known card companies bought her designs, and sales were brisk.

52. 52 Other companies were anxious to merchandise Mary's distinctive artwork on a wide range of products including calendars, T-shirts, mugs, gift books, rubber stamps, ceramic figurines and more.

53. 53 1986: Mary Engelbreit greeting cards had blossomed into a million-dollar-a-year business. She decided to license her cards to Sunrise Publications to free up more time for her art and to grow her business in other areas. Mary Engelbreit Studios now has contracts with dozens of manufacturers who have produced more than 6,500 products in all. Mary takes extreme care in choosing only the best companies to work with and goes to great lengths to make certain that her artwork is reproduced as faithfully to her original work as possible.

54. 54 2001: Mary saw her original dream come true when she signed a contract to illustrate children's books for publishing giant HarperCollins. When Mary was young, people told her that being an artist was not a realistic way to make a living, but Mary Engelbreit was never one to be easily discouraged. "I believed in myself," she says, "and now I'm living my dream." Source: www.maryengelbreit.com

55. 55 5. Conclusions

56. 56 Owners of copyright have great power to define how their works are used. Important to consider a range of possibilities to commercialize your works. Possible to simultaneously grant various licenses for one single work: –To different users –For specific manners of exploitation –For limited period of time –In limited territory –For specific purpose

57. 57 Protect your IP Choose the right protection Beware of overlap provisions

58. 58 Thank you ! Lien Verbauwhede www.wipo.int/sme/ Thank you ! Lien Verbauwhede www.wipo.int/sme/