Intellectual Property Singapore Client Alert August 2016 For further information please contact Andy Leck Principal +65 6434 2525 email@example.com Cheah Yew Kuin Local Principal +65 6434 2644 firstname.lastname@example.org Faith Lim Yuan Associate +65 6434 2550 email@example.com Baker & McKenzie.Wong & Leow 8 Marina Boulevard #05-01 Marina Bay Financial Centre Tower 1 Singapore 018981 www.bakermckenzie.com Public Consultation on Proposed Changes to Singapore's Copyright Regime The Ministry of Law and the Intellectual Property Office of Singapore ("IPOS") have launched a public consultation on proposed changes to Singapore's copyright regime and the Copyright Act ("CA"). This is intended to ensure a copyright regime where rights are: (i) Reasonable - to balance copyright creators and protectors' interests with those of users'; (ii) Clear - where creators, producers, users and intermediaries understand the regime and how it can incentivise creation or provide access to works; and (iii) Efficiently transacted - ensuring that creators and producers can reach out to their audiences, and that interested users can easily seek permission to use creative works. The key proposals in the “Public Consultation on Proposed Changes to Singapore’s Copyright Regime” (the “Paper”) are: 1. Establishing a Voluntary Copyright Registry In Singapore, copyright protection is granted automatically upon the work's creation without need for registration. For greater certainty in establishing copyright ownership, the proposed changes include establishing either a "title" registry where a work's basic information is submitted to and displayed on a public register, or a "deposit" registry whereby a copy of the work is also deposited with the national office. Further, registration could lend a presumption of validity and ownership of copyright, and thus shift the burden of proof to the non-registered party alleging copyright ownership. 2. Granting Creators Default Ownership of Certain Categories of Works Currently, the first owner of a work's copyright in a work is the work's creator, with the following exceptions: (i) where a person creates a literary, artistic, dramatic or musical work in the course of his employment, the employer will have first ownership of the work; (ii) where a person creates a literary, artistic, dramatic work because he / she is employed by a newspaper, magazine or other periodical company and the work is created for the purpose of publication in such newspaper, magazine or periodical, the employer will own the copyright in the work for the purpose of publication in any newspaper, magazine or other periodical etc., but the journalist has the copyright to the works for other purposes; (iii) where a person is paid under an agreement for the creation of photographs, painted or drawn portraits, engravings, sound recordings 2 Intellectual Property Client Alert or cinematograph films, the person who paid for the creation of the work (i.e. the commissioning party) will automatically have first ownership of the copyright instead of the creator. Whilst the position regarding employees is uncontroversial and accords with normal industry practice, the position regarding commissioned works is slightly more complicated where the commissioning party would be deemed the first owner of the copyright only for a special class of commissioned works (i.e. photographs, painted or drawn portraits, engravings, sound recordings or cinematograph films). For any other types of commissioned works, the work's creator would be the first owner of the copyright. Consequently, the Paper proposes allowing creators of commissioned photos, portraits and engravings the first ownership of the copyright. This is intended to prevent such creators from unknowingly giving up their copyright. In relation to commissioned sound recordings and cinematograph films, since creators of sound recordings and cinematograph films could be companies or businesses, and could be better informed about copyright and commercial practices, the Paper is seeking input on whether the present default position (i.e. that the commissioning party is the first owner of the copyright) should be maintained. 3. Imposing an Expiry Date for Protection of Unpublished Works The expiry of copyright protection for certain types of creative works is calculated from the date of publication. This could lead to unpublished works enjoying perpetual protection. The Paper proposes standardising the expiry of copyright protection to 70 years after the creator's death, regardless of whether and when the work was published. With sound recordings, cinematograph films, literary, musical, dramatic or artistic works created not by a single identifiable human creator and where the creator is unknown, the duration cannot be calculated from the creator' death. The Paper proposes that such works will continue to enjoy 70 years of protection after first publication, if they have been published within 50 years after their creation. If such works are published only after 50 years postcreation or continue to remain unpublished, the duration of copyright protection will only be up to 70 years after their creation. 4. Establishing a New Right of Attribution Currently, a creator or performer has no right to be attributed or credited as the author, but has the right to prevent false attribution. To help creators build their reputation and provide an incentive in creating new works, the Paper proposes establishing a new right of attribution. In conjunction with the additional right of attribution, the Paper proposes extending the current defence of consent in relation to false attribution to the proposed right of attribution. The Paper also suggests including the defences of reporting current events, inclusion in an examination question and incidental inclusion of work. 5. Providing Information to Assist the Creators and Publishers / Producers' Relationship Creators who work with a publisher or producer are often unaware of copyright laws as compared to the experienced publishers / producers they deal with. To bridge this information gap, the Paper proposes creating a 3 Intellectual Property Client Alert website (to be set up at a later time) with template model agreements, explanations of common copyright-agreement terms, and comments on actual contractual terms. 6. Preventing Certain Exceptions to Infringement from Being Restricted by Contracts The CA provides certain exceptions for uses of works that would otherwise infringe copyright, but copyright owners may sometimes prevent a user from relying on such exceptions through contract. The Paper proposes amending the CA to specify that the following exceptions cannot be restricted by contract: (i) Fair dealing and "fair use"; (ii) Education; (iii) Libraries and archives; (iv) People with print disabilities; (v) Certain uses of software; (vi) Parallel importation; and (vii) Interface with registered designs. The Paper further proposes that certain activities relating to text and data mining, museum and galleries, and non-patent literature will be protected from being restricted by contractual terms. 7. Strengthening the "Fair Use" Exception One of the five non-exhaustive factors that the Singapore courts consider when determining whether the use of copyrighted works is "fair" is the possibility of obtaining the creative work within a reasonable time at an ordinary commercial price. This factor has become less relevant as copyrighted works today are not largely distributed in a physical medium and true unavailability of copyright works is less common. Thus, the Paper proposes removing this factor from the defence of "fair use". 8. Enabling the Use of Orphan Works The CA currently provides no exception to infringement for the use of orphan works, even where users may have already searched extensively but inconclusively for the work's owner. To facilitate the use of orphan works, the Paper proposes that Singapore adopt one of the following options: (i) Limitation of remedies - the remedies / fees to be paid to the owner in a case brought to a tribunal or court where the user has infringed copyright will be limited to a reasonable licence fee; (ii) The potential user will pay a government-determined licence fee to a government body and include their proposed use on the orphan works registry. Payment to the government will be made prior to use of the orphan work, so the copyright owner can obtain fees from the government body; or (iii) The user will pay a government-determined licence fee directly to the copyright owner if he / she approaches the user. The Paper also proposes that the user must first perform a minimum level of due diligence search prior to use, which possibly includes: (i) Performing Internet searches for copyright owners; (ii) Performing searches through local and foreign orphan works registries or copyright registries; or 4 Intellectual Property Client Alert (iii) Making enquiries at appropriate organisations, such as libraries, archives, known organisations operating in the copyright industry in the same sector. 9. Exemption from Infringement for Text and Data Mining for Data Analysis Purposes Text and data mining are techniques involving the automated analysis of large volumes of information and data. The Paper proposes an exemption for text and data mining to allow data analysis businesses more freedom in operating without the risk of copyright infringement. 10. Exemption from Infringement for Education Uses Disseminating educational materials through student learning portals is more common today. Where this situation is not clearly exempted from copyright infringement, it is uncertain whether such use is permitted. The Paper proposes creating a new exception for non-profit educational institutions to use copyrighted material without the owner's permission, where the purpose is for giving or receiving instruction. 11. Exemption from Infringement for Libraries and Archives Libraries and archives have started providing access to material (e.g. rare books, artefacts, letters or journals) in their collections through exhibitions to the general public. The Paper proposes creating a new exemption for libraries and archives to make copies of such material for public exhibitions. Further, it proposes simplifying the existing exceptions for better understanding and application. 12. Exemption from Infringement for Museums and Galleries In contrast to libraries and archives, there are currently no existing exemptions from infringements for museums and galleries. They may photograph, digitise or reproduce the items for record-keeping and preservation, but would require the copyright owner's permission. In recognition of the role and non-profit nature of museums and galleries, the Paper proposes the following exemptions: (i) Preservation - copies of materials may be made to preserve the original against loss or deterioration, and for record-keeping; (ii) Exhibition and related publicity - copies of materials may be made for exhibition; and (iii) Research and study - copies of materials may be made on request by people requiring access for research and study. Nonetheless, museums and galleries must continue to seek the copyright owners' permission for all other non-exempted uses. 13. Widening Exemptions for Print-Disabled Users Authorised entities that assist "persons with reading disabilities" currently have greater flexibility to create and distribute copies of copyrighted works in formats accessible to such persons. The Paper proposes extending the benefit to "persons with print disability", which more accurately captures the blind / visually-impaired community's difficulty with reading printed works. Moreover, the Paper proposes that copyright owners should no longer be permitted to demand compensation or equitable remuneration from authorised entities for such format conversions. 5 Intellectual Property Client Alert 14. Exemption for Dissemination of Non-Patent Literature Non-patent literature ("NPL") refers to any type of document or literature that is not part of a patent or patent application. A copy of the NPL is occasionally requested for patent applications by the applicant, which generally requires the NPL copyright owners' permission. Concurrently, the provision of NPL is generally regarded as important in strengthening patent quality and disseminating knowledge. Thus, the Paper proposes a new exemption for the following activities: (i) The making and giving of copies of NPL by and between IPOS, its patent examiners and other third-party experts engaged by IPOS for patent office functions, including search and examination and reexamination; and (ii) The giving of copies of NPL by IPOS to applicants and other IP offices upon request, for search and examination, Patent Cooperation Treaty and other patent office functions. 15. Exemption for Materials on Official Government Registers Many public agencies maintain official or statutory registers with materials that the public may inspect and copy. However, it is not always clear whether the private parties who submitted the documents had granted permission for the public to inspect these and make copies. As such, the Paper proposes clarifying that it is not infringement when public agencies collect such material and make it available for public inspection, or when members of the public make copies of the material for inspection with the public agency or government's authority. 16. Extending the List of Allowable Circumventions of Technological Protection Measures Generally, the CA prohibits users from circumventing technological protection measures ("TPMs"), subject to a list of certain exceptions. The Paper suggests extending the current list to include preservation by libraries and archives, preservation of abandoned software, educational uses of audiovisual works and circumvention in limited circumstances to investigate and fix security flaws. Comments The public consultation closes on 24 October 2016. All interested parties may give feedback in writing or online. The Ministry of Law and IPOS will also hold a briefing on the public consultation on 8 September 2016. More details of the changes and the public consultation are available at this link. As the public consultation covers a broad range of areas, companies should consider the potential impact which any proposed changes may have on their business operations and raise any relevant concerns during the public consultation. ©2016 Baker & McKenzie. All rights reserved. Baker & McKenzie International is a Swiss Verein with member law firms around the world. In accordance with the common terminology used in professional service organizations, reference to a “partner” means a person who is a partner, or equivalent, in such a law firm. Similarly, reference to an “office” means an office of any such law firm. This may qualify as “Attorney Advertising” requiring notice in some jurisdictions. Prior results do not guarantee a similar outcome.