Understanding the IP Framework

UK Intellectual Property Office

Today’s Session
• Brief overview of intellectual property rights
• Copyright
• The basics
• Ownership
• Commercialisation and digital projects
• Obtaining permission
• Exceptions
• Orphan works

• Enforcing / defending intellectual property infringement

• Further sources of information
• Practical examples
What is Digital Culture?

“The UK’s future will be built at the nexus of our artistic and cultural creativity and our technical
brilliance” - Matt Hancock, March 2018

Born out of the Culture White Paper, the Project

and the #CultureisDigital online consultation
were launched in April 2017 and the report
delivered in March 2018.

Its aim has been to explore how culture and

technology can work together to drive audience
engagement, boost the capability of cultural
organisations and unleash the creative potential
of technology.
In the Eyes of the Animal, Abandon Normal Devices AND Festival 2015. Photo
by Luca Marziale

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Intellectual Property

The report identified that “Cultural organisations often fail to realise the benefits of their digital assets,
missing out on opportunities to extend audience reach and brand awareness via non-commercial
distribution or not pursuing commercial exploitation.”

This session is being delivered as one of the policy commitments of the DCMS Culture is Digital
Project (CiD) in order to help the culture sector increase knowledge of the IP framework and its
relevance to them.

We’re interested in making sure these sessions are relevant and beneficial to the culture sector so
please give feedback and tweet impressions using #cultureisdigital

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The Intellectual Property Office (IPO)

• 1000+ staff based in Newport in South

Wales, 50 based in Victoria, London

• Our task is to help stimulate innovation

and raise the international
competitiveness of British industry
through Intellectual Property Rights
(IPR)
What is Intellectual Property?
An invention

A business’
name/image
Creative works
 What is a patent?
Patents protect technical inventions which are both new and inventive
when the patent application was filed.
Patents give their owners an exclusive right over their invention for up to
20 years, which can be a huge competitive advantage.
What is a design right?

“the appearance of the whole or part of a product resulting from the features
of the lines, contours, colours, shape, texture or materials of the product or
its ornamentation”
Registered Designs Act 1949
 Features and Benefits of Design Protection
Registered Design
Application to be made to
IPO/EUIPO/WIPO
Lasts for up to 25 years
Onus on other party to prove they have
not infringed your rights
You obtain a grant certificate from the
IPO/EUIPO evidencing your rights
Rights are exclusive to you and licenses
would need to be authorised by you
Criminal Sanctions
2D and 3D protection
Design Right (Unregistered Design)
Automatic right
Lasts between 10-15 years (UK only –
European Unregistered Design lasts 3
years)
Onus on you to prove intentional copying
You have to show evidence of the
existence of your rights
License of Right automatically granted to
other parties in the last five years (UK
only)
No Criminal Sanctions
Only protects shape – 3D (EU covers 2D &
3D)
 What is a Trade Mark?
Any sign which distinguishes your goods or services from that of another – “a badge of origin”

Your trade mark must be unique. It can include:

• words
• sounds
• logos
• colours
• a combination of any of these

A trade mark should not describe the goods or services it will relate to. It’s your property –
you can licence,
Makes it easier to sell, franchise as
take legal action desired!
against anyone who
May put people off
uses your trade
using your trade
mark without your
mark without your
permission
permission
Copyright
What is Copyright?

Copyright rewards the making of, and

investment in, creative works while
also recognising the need for use be
made of those works.
It’s everywhere! Copyright is the one
IP right that everyone creates, owns
uses and almost certainly infringes…
How to gain copyright protection
Copyright is an automatic right: no official register, no forms or fees

Proof of protection – all optional

• Mark the work with ©, name and year
• Keep notes and drafts of works
• Apply metadata to digital files
• Technological protection measures

Extra measures
• Lodge the work with a solicitor/IP specialist
• Unofficial registers?
• Post/email it to yourself?
What is not protected by copyright?

• Ideas – i.e. only the expression of the idea is covered

• Facts

• Works in the public domain - e.g. if the copyright has expired or the right
holder has chosen to make it available without restriction
What is protected: criteria for copyright protection
• The work must be recorded in a material form
• The work must be “original” – i.e. must be ‘the author’s own intellectual creation’

Copyright basics
• A property right
• Gives the owner certain exclusive rights
• Finite term of protection
• No need for artistic merit
• It is multi-layered
• Some exceptions – but very limited
What does copyright do, exactly?
• Reproduction
Economic rights: copyright • Distribution
gives the rights holder the • Rental and lending to the public
right to prevent certain • Public performance
uses of their works
• Communication to the public
without permission
• Adaptation

• The right to be identified as author/director

Moral rights: even if the • The right to object to derogatory treatment
creator sells their • The right to object to false attribution
economic rights, they
• The right to privacy (commissioned photographs
retain
and films)
Types of copyright works

Novels Plays

Software Song
coding lyrics

Literary Dramatic
Ballet Mime
works works

Training
Poems
manuals

Newspaper Radio
Articles plays
Continued…

Songs Paintings
Film
Drawings score
Sculptures
Operas Soundtracks

Musical Artistic
works works
Maps Diagrams
Musical
Jingles
theatre

Symphonies Photos Engravings

Continued… Wax
cylinder,
vinyl,
tape, CD
etc
mp3 /
Recordings other
of lectures digital
Broadcasts
and Sound
Recordings

Interviews Broadcasts

Oral
histories
Length of copyright protection

Type of work How long copyright usually lasts

Literary, dramatic, musical and artistic work Lifetime of the author, plus 70 years
Sound and music recording 70 years from when it’s first published
70 years after the death of the director,
Films
screenplay author and composer
Broadcasts 50 years from when it’s first broadcast
Layout of published editions of written, dramatic
25 years from when it’s first published
or musical works
Lifetime of the author, plus 70 years
Unpublished works [or 2039 (if the creator died before 1969 and work
unpublished before 1989) – whichever is later]
Ownership
Who owns copyright?
Ownership generally belongs to the creator (author) except for the following rules
• Films: producer & principal director; sound recordings: producer; broadcasts:
broadcaster; typographical arrangements: publisher; Crown copyright: monarch

• The employer will own the copyright of a work if an employee produces it in the
course of their employment

• A contractor, a consultant or other third party will retain ownership unless their
contract is explicit to the contrary

• The creator assigns (transfers) their rights to another party e.g. publisher
Commercialisation
and digital projects
Digital projects

• Digital projects can be all shapes and sizes: a virtual reality experience of
your collection, an app to engage younger visitors, streaming an event etc.
• For digitisation projects, you will need to know the copyright status of the
underlying works.
• Digitising out of copyright works may not attract their own
copyright protection – it depends if the digitised version meets
the requirement of a creator’s own intellectual creation.
Licensing

Bear in mind
Creative
any
If you own Licensing can Commons
underlying
the IP in new be for a fee or licences are
terms and
content, you free, include internationall
conditions on
can decide any terms and y recognised,
your website,
how to conditions or with different
or other
licence it. none. levels of
websites (e.g.
restrictions
social media)
Making new IP material
Some considerations:
• Who is creating the content? Is it in-house or commissioned? What will your
contract need to say?
• Are you using volunteers? Have you got agreements in place with them?
• Do you have partners in the project, either for funding or to provide content?
Have you agreed what to do with derivative uses?
• Will you licence your content to others in the future? Will you charge for this?
• Does the project use material in which you own the copyright, or a third party?
Might you need permission?
Obtaining permission
(rights clearance)
Locating the right holder

There are several places you might try, such as:

• The creator
• Their heirs – try probate records, genealogy websites
• Publisher/distributor of the work
• The creator’s employer
• A collective management organisation (CMO, or collecting society)
• Special interest organisations – e.g. official or local associations
• Other archives
• General internet searching
• Advertising in media – e.g. social media and crowdsourcing

What are your options if you cannot locate the right holder?
Exceptions
Exceptions useful for individuals (and others)
• Non-commercial research/private study: single copies can be made of
copyright works for research and private study (educational or leisure);
attribution/acknowledgement required
• Quotation/criticism and review/news reporting: work must have been
published/made available to the public and does not apply to photographs;
attribution required where possible
• Disability: A visually impaired person may have a literary, dramatic, musical
or artistic work made into a format that allows them to access the work, such
as a Braille copy
• Parody, caricature and pastiche
All of the above are subject to ‘fair dealing’ NB this is not an exhaustive list!
Fair Dealing
• Certain exceptions only apply if the use of the work is a ‘fair dealing’.
• There is no statutory definition of fair dealing - it will always be a matter of fact,
degree and impression in each case. The question to be asked is:
• how would a fair-minded and honest person have dealt with the work?
• does using the work affect the market for the original work? If a use of a work acts
as a substitute for it, causing the owner to lose revenue, then it is not likely to be fair
• is the amount of the work taken reasonable and appropriate? Was it necessary to
use the amount that was taken?
• This would be decided on a case by case basis by the courts.
Exceptions useful for libraries, archives, museums
• Archiving and preservation: any copyright work in your permanent collection that
is not available on loan to the public may be copied for preservation purposes if it
cannot readily be replaced
• Research and private study: works may be copied onto a dedicated terminal to
provide access to users for research and private study
• Recordings of folksongs: a recording may be made for the purpose of archiving
of folksongs; words must be unpublished and of unknown authorship
• Public reading or recitation: copyright is not infringed if it is a reasonable extract
from a published literary or dramatic work; attribution required

NB this is not an exhaustive list!

Exceptions useful more widely
• Education: copyright is not infringed if it is to illustrate a point for instruction and it
is not done for commercial purposes; also subject to fair dealing.
• Anonymous works: if it is not possible to ascertain the identity of the author and it
is reasonable to assume that copyright has expired/more than 70 years have
passed since the author died, copyright will not be infringed by relevant acts
• Incidental use: copyright is not infringed by incidental inclusion in an artistic work
• ‘Panorama’: copyright not infringed by photographing or making other artistic work
of it, if permanently situated in public place or premises open to the public; applies
only to buildings, sculptures and works of artistic craftsmanship

NB this is not an exhaustive list!

Orphan works
Orphan works?

• In 2014, we estimated that there were 96m orphan works in the UK. This
is likely a large under-estimate.
• Orphan works are creative works or performances for which one or more
right holders is unknown or cannot be found.
• This means that the possible uses would be limited to exceptions because
permission could not be obtained.
• Two additional methods for using orphan works are available for the
cultural heritage sector.
Orphan works exception
• Based on the EU Directive on orphan works. Cultural heritage organisations
can digitise and place orphan works on their website for non-commercial use.
• Excludes standalone visual art (but does include embedded visual art e.g.
illustrations in books or journals)
• Diligent search must be completed, plus registration with the EUIPO database.
• Bulk upload facility available for larger projects.
• Free to use, only negotiate fair compensation with the rights holder if they
come forward.
• Any ideas who might use it?
NB Brexit
UK Orphan Works Licensing Scheme
• Run by the IPO: anyone can obtain a licence to use orphan works in the UK,
commercially or non-commercially, for a maximum of 7 years
• Online application, diligent search must be completed and uploaded and an
application fee paid (£20 for one work, rising to £80 for 30 works)
• Non-commercial use £0.10 + VAT. Commercial licence fees reflect fees in the
market as far as possible. Licence fee only payable if application is successful.
• Licence fees are held by the IPO for 8 years in case the right holder comes forward
How diligent is a diligent search?
• There are some sources which you would
always check, e.g. the orphan works register
and the EUIPO database. Otherwise it would
be case by case.
• Some things to consider:
• How much do you know already about the work
and the rights holder?
• Are there clues in the work to help you identify
them?
• Do you have information about their
descendants?
• What information was provided when the
material was deposited?

• Would you check the British Society of Underwater

Photographers if it were an aerial photograph?
Why use the Orphan Works Licensing Scheme?
• Although you have to pay to use it, you have business certainty for 7 years
– if the right holder comes forward, they get the fee but your licence
continues
• Reduce the risk – if you have any uncertainty about copyright status or the
rights holders, licensing means you will not infringe copyright
• There are lots of creative ways to use orphan works and only
limited exceptions – licensing can give you real choice!
Worked example
• Archive holds 20 film shorts by one unknown filmmaker.
• Archive may qualify to digitise the film shorts for non-commercial purposes under
the EU Directive. Free.
• Archive or third party can make application to the UK orphan works licensing
scheme for 20 works: £60 (no VAT on application fee).
• Non-commercial licence for using at a free film short festival (and all other non-commercial
uses), all works £2 + VAT.
• Commercial licence will depend on type of use, where it is being used, length of clip etc.
VAT will be added.
• Licence lasts up to 7 years for use in the UK.

• Can apply for all works and then remove them if the licence is granted (e.g. if not
sure which ones will be in the final cut).
Enforcing your IP rights /
defending infringement
claims
Copyright infringement

• Usually a civil matter, it is up to the copyright owner to take action:

Intellectual Property Enterprise Court (IPEC) or High Court for high value
cases. Website blocking orders can be sought from High Court.
• Serious (e.g. commercial level) infringement can be a criminal matter.
• To infringe, someone must take ‘all or a substantial part’ of a work and use
it in breach of a restricted act
• A ‘substantial part’ is an original part – i.e. one which reflects the author’s intellectual
creation.
• A word or mundane phrase is unlikely to be substantial.
Enforcing your IP ownership

Before you decide what to do about the infringement it’s crucial to think about your
objectives. What do you want to achieve?
• Getting the infringer to stop infringing your IP rights through informal contact.
• Agreeing to license the infringer to use or sell your IP-protected goods or works, in return for royalties/a
licence fee.
• Getting compensation. Your starting point is that a court or tribunal will aim to put you in the same
financial position as if the infringement hadn’t happened.

• Alternative dispute resolution, such as mediation.

• Formal legal action is usually a last resort.
Further sources of
information
What is actually on GOV.uk?

• General IP guidance
• More information on IP services offered by the IPO such as IP for business
• Guidance on copyright exceptions
• Copyright notice service
• Diligent search guidance (for general use as well as orphan works) and
sample diligent searches
• Eligibility questionnaire for using the orphan works exception
• Case studies about using copyright material
Other useful contacts
IP learning materials from the IPO – https://crackingideas.com/

UKPATLIB – UK Patent Libraries

www.ipo.gov.uk/whyuse/business/business-patlib.htm

WIPO – www.wipo.org

EUIPO orphan works database -

https://euipo.europa.eu/ohimportal/en/web/observatory/orphan-works-db

Project EnDOW diligent search tool - http://diligentsearch.eu/

Public domain calculator (only available for some EU member states, not UK) -
http://outofcopyright.eu/

Creative Commons - https://creativecommons.org/

Practical examples
(discussion)
What are the copyright issues here?

1. A filmmaker wants to use a 15 second clip from an hour-long film in your

archive in a new documentary
2. Your museum wants someone to compose music for an interactive part of
an exhibition
3. Someone puts pictures they took of your permanent collection on a blog
4. You want to create a humorous nod to a recent TV show to advertise your
institution on social media
5. You are digitising art works by local artists but not all of them are signed
and the records are incomplete
What are the copyright issues here? (continued)

6. A set of unique recordings of local dialects on cassette tape in your

collection has degraded and is at risk
7. You have created a touchscreen for an exhibition to allow visitors to see
multiple pages of a war diary
8. The rights holder refuses their permission to use their work
9. The performers in a recorded storytelling in the gallery do not want it put
online
10.An employee writes content for your institution’s guide and wants to use it
in a self-published history book
 Questions?

information@ipo.gov.uk