Week 10 - Rights management & Confidentiality

A license is not ownership

• Rightholder can license rights:

  • Grant permission for others to exercise some specified rights

  • For a term

  • Ina territory or “throughout the universe”

• In exchange for payment (fees/royalties)

  • Payment per unit

  • Percentage of revenue

Assigning copyright

• Entire copyright OR

• Partial assignment

• In exchange for a fee

Who owns copyright in social media posts?

• User retains ownership

• User grants license to servicce to use material for purpose in t&c

Commissioned work

• Default: Creator retains copyright, unless explicitly agreed transfer ownership in a contract

Contributed work

• Creator is owner

• Grant a license to (e.g. CNA) to use work

  • Implied license, if not explicit

• Creator retains copyright unless otherwise agreed

Work you do in scope of employment

Employer owns copyright

Journalists’ work done in scope of employment

• Writes article as part of job duties

• Default: Employer owns right to “first periodical publication”

• Journalist retain copyright

  • Including rights to republish

Advertising IP: Standard industry practice:

• Agency assigns all IP in ads to client

• Client pays agency fee

Book publishers have imprints

• Imprint targets specific genres and their audiences

• Aims to:

  • Build brand equity

  • Help readers identify titles of interest

Publishing: Primary right

• Rights to publication and distribution

  • Print or electronic

• Authors license - the right to publish and distribute the work

• Term: Either for duration of literary copyright or less

• Territorial restrictions are possible

Author’s revenue from the primary rights

Royalties based on publisher’s sales of each book

• Percentage of revenue at agreed-upon intervals

Author may get an advance on publishing royalties

• Author secure publisher before completing work

• Publisher may pay upfront payment while she is still writing

  • Won’t receive royalties until royalties generated > advanced payment

Author licenses subsidiary rights

• Authorisation to create derivative works/adaptations

  • Sufficiently different from original to be regarded as new workd with separate copyrights

Derivative work (or adaptation)

• Work based on pre-existing or underlying works…. may be adapted

• Require license (permission) to use the underlying copyrighted work

Producers typically own the copyright of a film or TV show

• Producers may have various shares of ownership of the copyright

  • Depends on their role in financing

• Those involved in making the film usually contractuallly assign any rights to the producers

  • Employees/freelancers who sign contracts assigning (transferring) their work (to the producer)

Option agreement for film adaptation of a literary work

• Producers pay an author a fee for an option

  • Exclusive license to explore exercising subsidiary right to make a film based on the work

  • For a limited period (e.g. 12-18 months)

• At the end of option period, producer may “exercise the option”

  • Producer purchase exclusive license from author for subsidiary rights to make a film based on the work

• If never exercise option, author free to seek other producers

Copyright term

• Life + 70 Years

  • Literary, dramatic, artistic, musical

• SG law for other works: 50-70 years

• Transferable to others after death

  • Does not extend copyright

Public domain

• All copyright terms expire

  • Works in public domain can be used without permission

Creative Commons

• Non-profit that creates international system to make such alternatives to “all rights reserved”

• Place work irrevocably in the public domain

Creative Commons licensing

• Allows others to share it…

• BUT impose any of the following conditions:

  • Require that users attribute the work to you

  • Require that users do not use it for commercial purposes

    • Share exact copies only

  • Allow others to create derivative works - but only share them under same license

CC licensing: The value of the share-alike requirement

• If don’t require that users use a “share-alike” license, defeats purpose of conditions

  • Require that use “Song 1.0” for non-commercial purposes

  • Jane use Song 1.0 for non-commercial purposes but creates and shares derivative work Song 2.0 under a new CC license that allows sharing of Song 2.0 for commercial purposes

  • Tami can use Song 2.0 which is a derivative work of your song for commercial purposes

Open culture

• Gallaries etc make copies of public domain workd easily available

• Some label such works using CC symbols or OA (open access)

Chain of title

• Title: ownership

• Chain of title: sequence of ownership transfers

Chain of title for video

• Documentation of:

  • Ownership of IP or permission to use IP

    • IP assigned or licensed to you

  • Waivers/releases of legal claims by various parties

1. Appearance releases

2. Talent agreements of cast and crew

3. Location releases

4. Copyright works used (e.g. source material that adapted into a film, art on screen)

5. Trademark use

Errors and Omissions insurance

• Insurance that provides coverage against legal liability arising from film

• Most film production companies, other investor and dsitributors require ir

  • Can be held liable

  • Could jeopardise financial returns

Appearance releases: Waiver of IP claims

• Talent release

• Personal release

• Actor/subj agrees to:

  • Grant rights to use/exploit filmed material to producer

  • …sometimes in perpetuity throught the universe, in any media

• Makes it clear that actor/subj has no claim to IP in their appearance

Location releases: Indemnification clause

• Promise to compensate for the cost of possible future damage, loss, or injury

  • “if anyone else sues you, I’ll pay”

Copyrighted work

1. Is the type of work copyright-protected?

2. Is it in the public domain?

3. Exception?

   1. Incidental use or de minimis use?

   2. Fair use?

4. Who owns any rights that must be cleared, and how can you clear them?

Copyrighted artistic works require clearance

• Owning copy DOES NOT entitle to reproduce the work on screen 

• Can be de minimis or fair use

Exception to infringement: Incidental inclusion

• Permissible to include artistic work if it is incidental to the main content of the programme

• Reasonable person standard

De minimis exceptions

• Common law of Uk US SG

• Exceptions in many legal contexts

• Cases are rarely litigated

• Law is undeveloped

De minimis: Among factors considered

1. Amount of work included in the video

   • Whole work? small part?

2. Substantiality

   • Important part?

3. Duration

   • Brief, fleeting appearance?

4. Focus on the work

   • Foreground or background?

5. Proportion of use

   • Small, non-essential, can be considered de-minimis

6. Contribution 

   • Thematic relevance?

7. Deliberately or incidentally selected?

Film titles can be trademarked

• Titles of single films can be difficult to protect

• Titles of film franchises can be trademarks

  • Used as branding - source identifier

Copyrighted art in trademark logo

• May infringe copyright

• Possible de minimis or fair use

Fashion designs generally lack copyright

• Insufficient origanality

• Fashion involves borrowing from current & past work

  • If need to obtain permission, would slow down the fast-moving market

Conceptually Separable Art

• Artistic element that could be separated from utilitarian aspects of a useful article

• Copyrightable (sufficiently original) if applied to another item or on its own

Registered industrial design

• New, novel design

• Design has aesthetic features that are not purely functional

• Design is applies by industrial process (NOT handcrafted)

• Rationale:

  • To incentivise aesthetic design

  • Protection for a specified term

  • International protection

• E.g. Tesla Cybertruck

Graphical user interfaces

• Novel, not purely functional, aesthetic visual

• Inseperable from the interface

Registered industrial design in videos

• Cannot be infringed by merely filming

• Only can be infringed by manufacturing or importing item with the design

Contractual obligations of confidentiality

• Writted (recorded) contracts

  • Employment contratcs

  • NDA

Automatic notices

• Deemed as insufficient

Common law breach of confidence: Plaintiff’s burden of proof:

1. D had duty of confidentiality regarding information

2. D breached the duty of confidentiality

Plaintiff shows: Defendant had duty of confidence when BOTH:

1. Info has necessary quality of confidence because BOTH:

   • Inaccessible to public

   • Worth protecting

   • For business concepts: original, identifiable, commercially attractive, developed emough to be actualised

2. Info imparted to discloser in cirucmstances importing an obligation of confidence. Among the considerations

   1. Notice of confidentiality to discloser

   2. Relationships may help import confidentiality

Recognised relationships

• Relationships may help import confidentiality

  • Relationships with recognised obligations of confidentiality

    • Dr etc

  • Marriage/friendship

  • Relationship implictly imports the obligation

Duty of confidence: Third parties:

• When does 3rd party have duty of confidence?

  • Colleague disclosed confidential info about medical condition to her manager

  • Then the manager tell you

• Do you (3rd party) have duty of confidence (to not disclose to others)?

  • YES, if P can prove you (3rd party) knew/should have known info was confidential

    • Mental state

Defences to breach

1. Overriding public interest in disclosuer

   • Public IMPORTANCE not CURIOSITY

2. Misconduct (iniquity) is exposed by discosure

   • e.g. sexual harassment case at workplace

3. P’s prior consent to disclosure

4. In public domain

Singapore: New defence to breach

• D can attempt to prove mental state & clear conscience

  • D’s access was accidental OR

  • D was unaware that info was confidential