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CROSS-BORDER COPYRIGHT LICENSING

Law and Practice

CARLO SCOLLO LAVIZZARI, RENÉ VILJOEN

Copyright Licensing can no longer be considered purely from the perspective of the licensor’s home territory. This practical and wide-ranging reference work provides comprehensive coverage of the law and practice of cross-border licensing in a number of major territories, including China, the EU, India, Mexico, Russia, Singapore, South Africa, and the USA. The book, written by expert authors with insight from practice and from their home jurisdictions, focuses on both copyright licensing and competition law and, specifically, the inter-relation between these legal fields. The book is uniquely structured to provide both thematic coverage and detailed analysis of each territory’s applicable laws and regulations, highlighting and addressing the legal issues that are most critical in and relevant to licensing practice. Cross-Border Copyright Licensing is an essential starting point for anyone considering or advising on the implementation or enforcement of a copyright licensing program, in either developed and emerging markets.
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APPENDIX

 

Table A.1    Major amendments to the Indian Copyright Act

YEAR

ACT

MAJOR CHANGES

1983

The Copyright (Amendment) Act, 1983 (23 of 1983)

(wef 9 August 1984)

• Omission of Radio diffusion [section 2(v)]

•  Insertion of Broadcast definition [section 2(dd)]

•  Insertion of definition of communication to public [section 2(ff)]

1984

The Copyright (Amendment) Act, 1984 (65 of 1984)

(wef 8 October 1984)

• Addition of Computer programmes in the definition of literary works [section 2(o)]

• Addition of provision for mandatory inclusion of full particulars of creator of work and publication of work [section 52A]

• Enhancement of criminal penalties [sections 63 and 63A, 65, 68A]

1992

The Copyright (Amendment) Act, 1992 (13 of 1992)

(wef 28 December 1991)

•  Increase in the term of protection to 60 years after author’s death [section 22]

1994

The Copyright (Amendment) Act, 1994 (38 of 1994)

(wef 10 May1995)

• Producer recognized as the owner of cinematographic film [section 2 (d)(v)]

• Wider definition of communication to the public [section 2(ff)]

• Addition of databases in the definition of literary works [section 2(o)]

• Amendment in the definition of musical works to incorporate the need of Indian classical music [section 2(p)]

• Introduction of Performer’s rights [section 2(q), (qq), sections 38, 39, 39A]

• Introduction of the definition of Producer [section 2(uu)]

• Introduction of reprographic rights [section 2(x)]

• Introduction of droit de suite rights [section 53A]

• Widening scope of copyright protection to cover a substantial part of work as well [section 14]

• Exclusive rights granted to computer programme [section 14(b)]

• Introduction of rights in 3D reproduction of 2D artistic works and vice versa [section 14(c)(i)] and corresponding omission of [section 52(1)(w)]

• Defining the scope of assignments and licenses [sections 19 and 30A]

• Widening the scope of copyright societies and collective administration of rights

1999

The Copyright (Amendment) Act, 1999 (49 of 1999)

(wef 15 January 2000)

• Term of performer’s rights increased to 50 years [section 38]

• International Copyright Order [section 40A]

2012

The Copyright (Amendment) Act, 2012 (27 of 2012)

(wef 21 June 2012)

• Introduction of Rights Management Information [sections 2(xa) and 65B]

• Introduction of technological protection measures [section 65A]

• Mandatory royalty regime for authors of literary and musical works [sections 18 and 19]

• Increasing the term of photographs to life plus 60 years [section 22]

• Introduction of statutory licensing for benefit of disabled, version recordings, broadcasting organizations and translations [sections 31A, B, C, D and 32]

• Strengthening of copyright societies and their administration and regulation [sections 33, 34, 35]

• Addition of exclusive rights and moral rights for Performers [section 38(A) and (B)]

• Fair dealing provisions extended to all works [section 52]

• Strengthening enforcement of infringing imports by Customs Department [section 53]

• Moral rights to exist in perpetuity [section 57]

 

Table A.2    List of countries with whom India has singed DTAA

1.   Armenia

2.   Australia

3.   Austria

4.   Bangladesh

5.   Belarus

6.   Belgium

7.   Botswana

8.   Brazil

9.   Bulgaria

10. Canada

11. China

12. Cyprus

13. Czech Republic

14. Denmark

15. Egypt

16. Estonia

17. Ethiopia

18. Finland

19. France

20. Georgia

21. Germany

22. Greece

23. Hashemite Kingdom of Jordan

24. Hungary

25. Iceland

26. Indonesia

27. Ireland

28. Israel

29. Italy

30. Japan

31. Kazakastan

32. Kenya

33. Korea

34. Kuwait

35. Kyrgyz Republic

36. Libya

37. Lithuania

38. Luxembourg

39. Malaysia

40. Malta

41. Mauritius

42. Mongolia

43. Montenegro

44. Morocco

45. Mozambique

46. Myanmar

47. Namibia

48. Nepal

49. Netherlands

50. New Zealand

51. Norway

52. Oman

53. Philippines

54. Poland

55. Portuguese Republic

56. Qatar

57. Romania

58. Russia

59. Saudi Arabia

60. Serbia

61. Singapore

62. Slovenia

63. South Africa

64. Spain

65. Sri Lanka

66. Sudan

67. Sweden

68. Swiss Confederation

69. Syrian Arab Republic

70. Tajikistan

71. Tanzania

72. Thailand

73. Trinidad and Tobago

74. Turkey

75. Turkmenistan

76. UAE

77. UAR (Egypt)

78. Uganda

79. UK

80. Ukraine

81. United Mexican States

82. USA

83. Uzbekistan

84. Vietnam

85. Zambia

 

Table A.3   Basic components of IP object agreements in Russia

‘Definitions’

Information about the meaning of definitions such as ‘Composition’, ‘Phonogram’ or ‘Video’ in the agreement and appendixes thereto.

‘Subject of the Agreement’

Information about the type of licence, permitted ways of use, duration and territory, or provision about alienation of rights in full amount.

‘Rights and Obligations of Parties’

Description of how IP objects shall be delivered; whether a licensor has the right to use objects him/herself in the case of exclusive licences; provisions regarding possible sublicensing and whether a licensee has obligation to receive licensor’s previous approval for each sublicence (or other use of IP objects); rights to use IP objects in advertising or marketing campaigns, etc.

‘Licensor’s/Right holder’s Warranties’

Confirmation from a right holder that he/she has all rights to IP objects and indemnifies a licensee or an acquirer of rights from any claims or losses connected with possible conflicts of rights to IP objects. Parties may also describe protective measures for a licensee for cases when a licensor’s warranties turn out to be false (e.g. fines, compensation for damages/losses, licensee’s right to terminate an agreement, etc.).

‘Financial Provisions and Statements’

Agreement on remuneration; payment terms; terms for providing statements (if any) and their form (paper or digital); procedure for exchanging accounting documents; taxation, etc.

‘Liability of Parties’

Specification of fines or penalties for the failure of each party to fulfil its contractual obligations.

Indication of a court and possible term for pre-judicial negotiations and considering claims.

‘Miscellaneous’

Information about date, when an agreement comes into force; automatic prolongation – if necessary; provisions regarding termination of the agreement; applicable law; etc.

 

Table A.4    Brief history of Russian legislation on copyrights and related rights

 

Legal document

Commencement date

1

Part IV of the Civil Code of the Russian Federation

1 January 2008

2

Federal Law ‘On Implementation of Part IV of the Civil Code of the Russian Federation’

(contained temporal provisions regarding Part IV coming into force)

partly on 22 December 2006 and

partly on 1 January 2008

3

Russian Law ‘On Copyright and Related Rights’

3 August 1993

4

Regulation of the Supreme Soviet of the Russian Federation ‘On Implementation of the Law of the Russian Federation ‘On Copyright and Related Rights’

(contained temporal provisions regarding the Law ‘On Copyright … ’ coming into force)

3 August 1993

5

Fundamental Principles of Civil Legislation of the USSR and Soviet Republics

1992

6

• Civil Code of the Russian Soviet Federative Socialist Republic (RSFSR) (Section IV) of 1964

•  Fundamental Principles of Civil Legislation of the USSR and Soviet Republics (Section IV) of 1961

• Sub-legislative documents

1964

7

Fundamental Principles of Copyrights

1925

1928 (new version)

8

Law of the RSFSR ‘On Copyrights’

1928

 

Table A.5   International conventions/agreements joined by Russia

 

Title

Date joined

1

Berne Convention for the Protection of Literary and Artistic Works

1995

2

Convention Establishing the World Intellectual Property Organization (WIPO)

1968

3

Universal Copyright Convention (Geneva, 1952)

1973 – USSR

1995 – Russian Federation

4

Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations

2003

5

Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms (Geneva, 1971)

1995

6

Brussels Convention Relating to the Distribution of Programme-Carrying Signals Transmitted by Satellite

1989

7

WIPO Copyright Treaty (WCT)

2009

8

WIPO Performances and Phonograms Treaty (WPPT)

2009

 

Table A.6 The main differences between assignment and licensing in Russia

 

Assignment (alienation)

Licensing

Parties to the agreement

Assignor or right holder and

assignee or acquirer/purchaser

Licensor and licensee

Transfer of exclusive (property) right

• Exclusive (property) right is transferred in full.

• Acquirer becomes the new, sole and exclusive right holder (owner) of the IP object and can use and dispose of it at his/her own discretion.

• Exclusive (property) right is not transferred to a licensee, and remains with its owner.

• Licensee receives only the right to use IP objects within the licensed scope of usage, duration and territory.

Scope of exclusive (property) rights given under agreement

Full scope of exclusive rights to IP object is transferred to an assignee (acquirer), so s/he can use the IP object at his/her own discretion by any legal ways, without limitation of territory, during all term of validity of exclusive right to IP object.

However, duration of use should not be indicated in the assignment agreement, otherwise in case of a dispute a court can recognise it as a licence agreement.

• Scope is limited by licensed ways of use/time period/territory, which are set in the agreement.

• Licensor can set in the agreement a provision that some forms/ways of use are permitted only with licensor’s previous consent (e.g., in musical industry licensors often demand that use of musical compositions/phonograms in advertising or in movies should be previously agreed by licensee with licensor in each case).

Opportunity for sub-licensing and further transfer of rights to third parties

An assignee, as a new owner of rights, can license or assign rights to an IP object to third parties, without any limitations, at his/her own discretion.

• A licensee has right to grant sub-licences to third parties, if the licensor gives such permission directly in the licence agreement.

• At the same time licensor can add into licence agreement an obligatory prior approval of each sub-licensee by licensor (or receipt of written notifications from licensee about each granted sub-licence).

• If a licence is non-exclusive, a licensor can grant similar licences to other third parties.

Rights remaining with an assignor/licensor

• An assignor loses right to use IP objects him/herself.

• If an assignor needs such option (e.g., to use assigned IP object in portfolio), he/she must receive assignee’s permission directly in the agreement or after signing the agreement – separately and better in writing.

• In cases of non-exclusive licences, licensor can use IP objects by him/herself.

• In cases of exclusive licences, licensor can use IP objects by him/herself, if he directly describes this opportunity in the agreement.

Reports/statements regarding use of IP objects

Assignee has no obligations to provide reports about use of IP objects to assignor.

Licensee is obliged to provide reports about use of IP objects to a licensor (upon licensor’s demand or under terms set in the agreement), unless it is directly set out in the agreement that no reports are needed.

Cases of violation of obligations under agreement

If an assignee substantially violates his/her obligation to pay remuneration to an assignor in terms set in the agreement:

a) if an exclusive right has already been transferred to an assignee – the assignor has right to claim in court a transfer (recall) of exclusive right back to the assignor and claim compensation of damages;

b) if an exclusive right has not yet been transferred to an assignee – an assignor has right to refuse from agreement unilaterally and claim compensation for damages caused by termination of an agreement.

The agreement is terminated 30 days after an assignee receives assignor’s notification of refusal from agreement, if an assignee fails to pay remuneration during this period of time.

If a licensee substantially violates his/her obligation to pay the remuneration to a licensor in term set out in the agreement, a licensor has the same option as described for assignor in point (b) in the left column, i.e.:

the licensor has right to refuse from agreement unilaterally and claim compensation of damages caused by termination of an agreement.

The agreement is terminated 30 days after a licensee receives a licensor’s notification about refusal from agreement, if a licensee fails to pay remuneration during this period of time.

Termination of agreement

If an assignee does not violate payment obligations, an agreement cannot be terminated.

If a licensee does not violate payment obligations, parties may terminate agreement upon mutual consent, or, if it is directly set in the agreement, each party or one of the parties may terminate an agreement unilaterally in terms and under provisions set out in the agreement.

 

Table A.7   Administrative fines for the violation of copyrights/related rights

for physical persons/citizens

1 500 to 2 000 roubles

(app. 23 to 31 euro)

for officials

10 000 to 20 000 roubles

(app. 154 to 308 euro)

for legal entities (companies, organisations)

30 000 to 40 000 roubles

(app. 460 to 615 euro)

 

Table A.8    Remuneration percentages and terms set out in the Russian Civil Code and Regulations of the Russian Government

 

Usage of IP object

Right holders entitled to remuneration and percentage thereof

Payers of remuneration

Collecting society that collects and distributes remuneration to right holders

1

Free reproduction for private (non-commercial) purposes of phonograms and audiovisual works

Phonograms:

Importers and

producers of

equipment

and physical carriers,

which are

used for the

free reproduction

of phonograms and

audiovisual works

for private purposes

Payments are not

collected from:

– producers of

equipment/material

carriers, which

are objects

of export

– producers and

importers

of professional

equipment not

intended

for use at homes

RUR (or RSP) – the Russian Union of Rightholders

– authors of works

(e.g. musical compositions with or without lyrics) fixed in phonograms

40%

– performers, whose performances are fixed in phonograms

30%

– producers of phonograms

30%

Audiovisual works:

– authors of audiovisual works (director, script writer and composer of musical work created especially for audiovisual work)

40%

– performers, whose performances are fixed in audiovisual works

30%

– producers of audiovisual works

30%

2

The public performance of phonograms

Performers – 50%

Producers of phonograms – 50%

Public catering establishments, restaurants, clubs, cultural and entertainment centres (complexes) as well as other leisure facilities, enterprises and passenger transport organisations, health and/or recreation centres, boarding houses, shops and establishments that provide public services, hotels, parks, gardens and other open spaces where public performances occur

VOIS – the Russian Organisation for Intellectual Property

3

The broadcast of phonograms or making phonograms public via cable

Performers – 50%

Producers of phonograms – 50%

Broadcasting companies (TV and/or radio), which transmit phonograms on-air, as well as organisations that make phonograms public via cable, wire, or optical fibre

VOIS – the Russian Organisation for Intellectual Property

 

Table A.9    Overview of South Africa’s double taxation agreements and protocols up to 11 December 2015

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