Contributed by Paul Teo and Joyce Khoo, Ravindran Associates
More often than not, people in the advertising and design industries will be faced with the dilemma – “Do I own the copyright in my work?” It is important to know what your rights are, as this will allow you to profit from your own work. This can also be seen as a form of recognition of your skill, labour and effort in creating the work.
What is copyright?
Copyright protects the expression of ideas, but not the idea itself. This means that the idea must be put into a form capable of being expressed. Such works include literary works, dramatic works, musical works and artistic works. When advertising agencies and designers are asked to do free pitches to their prospective clients and later, they do not get the job but realize that their ideas are being used, there is no copyright subsisting in the idea conveyed to their prospective clients. Thus, it is always encouraged to protect such information via Non-Disclosure Agreements. Works must originate from the artist’s own skill, labour and judgment in order for copyright to subsist. In the case of Walter v Lane  AC 539 (“Walter v Lane”), the House of Lords held that even though the work produced by the reporter was a verbatim copy of a series of speeches, the reporter had expanded sufficient effort, skill and time to regard the published book containing the speech as original. Generally, copyright subsists for the lifetime of the author plus 70 years. The protection duration may differ for the various types of works.
Copyright owners and their rights
As a general rule, the copyright owner of a work is the author. However, there are certain exceptions (in the absence of contractual terms to the contrary). For example, for works created in the course of employment, the general rule is that the employer is the copyright owner, not the employee who created the work. For commissioned works, the situation is more complicated. This will be elaborated below. Suffice to say that to avoid any potential misunderstandings on the ownership of copyright, it is prudent to include clear and unambiguous terms in any employment or commissioning agreement as to IP ownership. Specific provisions also exist for works made by authors in pursuant to the terms of employment by the owner of a newspaper, magazine or similar periodical.
Copyright can be totally or partially assigned to another person. But it must be in writing and signed by or on behalf of the copyright owner. Copyright may also be licensed, which may not necessarily be in writing, although it would be advisable to do so.
The Copyright Act (Cap. 63) (“the CA”) confers upon the copyright owner the exclusive right to do, or authorize others to do, certain acts in relation to the work without amounting to an infringement. These exclusive rights will depend on the nature of the work being protected but generally include the right to reproduce the works, to communicate the work to the public (ie. via the internet) or to adapt the same.
The CA also provides for certain defences against copyright infringement. One of these defences, known as “fair dealing”, is an attempt to strike a balance between the interest of the copyright owners and the public interest. Purposes such as for research and study, for criticism and review, and reporting of current events are regarded as fair dealings. In considering what will amount to fair dealing, the court will take into account various factors, including the purpose and character of dealing (commercial or non-profit), nature of work, amount and substantiality of copying, effect of dealing on market value of item taken, and whether item can be obtained within a reasonable time at an ordinary commercial price.
Generally, a licence is required for reproduction or making an adaptation of a copyrighted work if such use does not fall under “fair dealing”. There are collective management organisations that manage the rights of copyright owners in their works. Users who wish to obtain a licence to use copyrighted work can obtain permission from these organisations. Click below for more information on these organisations.
Ownership of copyright in commissioned works?
Matters often get complicated when commissioning is involved. In the case where advertising agencies and designers are commissioned to produce a work, who owns the copyright in the work? Can the commissioner turn around and claim to be the owner of the copyright in the work produced since he had given substantial consideration to get the work produced? The position in this area is clear: if an artist is commissioned to produce a painting/photograph/engraving, his client owns the copyright in the work produced (subject to any contractual terms to the contrary). If the painting/photograph/engraving is required for a particular purpose, this purpose must be communicated to the artist. While the commissioner is the copyright owner, the commissioned party has the right to stop others from doing any act comprised in the copyright, unless such act is done for the particular purpose for which the painting/photograph/engraving is created. For other types of commissioned works (e.g. literary work, dramatic work, and musical work), copyright ownership belongs to the commissioned party, unless the commissioner and commissioned party otherwise agree. Nonetheless, artists may either assign the ownership of copyright or grant the commissioning party a license to use the work for purposes beyond what was previously agreed upon.
The idea expression dichotomy serves to limit the scope of what can and what cannot be protected by Copyright. It is important to know when such rights exist and who owns them. This will enable the correct parties to monetize and/or protect the same.