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SECTION 1 COPYRIGHT AND NEIGHBOURING RIGHTS
 
A. Introduction to copyright
 
(1) Copyright refers to bundle of negative rights to prevent copying
 
 
(2) Copyright only protects way in which ideas are expressed
 
12.1.2 There is no copyright in ideas, information, principles and facts as such. Rather, copyright only protects the way in which they are expressed. Further, copyright protects the skill, labour and/or judgment used in creating the expression. In particular, copyright subsists in literary, dramatic, musical and artistic works (“works” or “a work”), such as novels, plays, musical compositions, paintings, sculptures and compilations, as well as in subject-matter other than the works, such as sound recordings, films, broadcasts, cable programmes and published editions of works. Additionally, copyright protection is available in respect of live performances and rights management information, such as information identifying the author of a work and the terms and conditions relating to the use of the work.
 
(3) Copyright subsists immediately upon creation
 
 
(4) Duration of copyright
 
12.1.4 G enerally, copyright in a literary, dramatic or musical work, or in an artistic work other than a photograph, subsists during the life of the author plus 70 years after his death. In the case of a sound recording and film, copyright subsists until the expiry of 70 years after the expiry of the calendar year in which the recording or film was first published. The duration of copyright protection for a broadcast and cable programme is 50 years from the end of the calendar year in which the broadcast was made or the programme was first included in a cable programme service. The duration of copyright protection for a published edition of a work or works is 25 years from the expiry of the calendar year in which the edition was first published.
 
(5) Ownership of copyright
 
12.1.5 The general rule is that the person who created a work is the owner of the copyright in the work. However, another person is the owner if
  • the copyright was assigned to that person; or
  • the work was created by the creator in the course of his employment by that person.
 
12.1.6 Additionally, if the person who created the work
  • was doing so in the course of his employment as a journalist or a writer for a newspaper, magazine or periodical or under a contract of service or apprenticeship, the proprietor of the newspaper, magazine or periodical would be the owner of the copyright, but only for the purpose of publishing or reproducing the work in the newspaper, magazine or periodical;
  • is a photographer or artist engaged to take a photograph of a person or to draw the portrait of a person, the person would be the copyright owner and he has the right to prevent the photographer or artist from using the photograph or painting for any purpose that he has not agreed to.
 
B. Exclusive rights and infringement
 
(1) Copyright owner has exclusive right to do or to authorise others to make primary infringements
 
12.1.7 The CA confers on the copyright owner the exclusive right to do, or to authorise others to do, certain acts (‘primary infringements’) in relation to a work, or subject matter like sound recordings, and films, such as:
  • to reproduce the work in a material form;
  • to publish the work if the work is unpublished;
  • to perform the work in public;
  • to make an adaptation of the work or to do any of the above in relation to an adaptation;
  • to communicate the work to the public;
  • to make a copy of the sound recording or film;
  • to enter into a commercial rental arrangement in respect of the recording; and
  • to cause the film, insofar as it consists of visual images, to be seen in public.
 
(2) Copyright infringers are those who commit primary infringements without owner’s consent, or who make secondary infringements
 
12.1.8 Copyright infringers are therefore those who do any of the above acts without the copyright owner’s consent. The owner’s rights are also infringed by such acts (‘secondary infringements’) as
  • importing, selling, offering for sale and exhibiting in public of any article where the infringer knows, or ought reasonably to know, that the article was made without the copyright owner’s consent;
  • falsely attributing the authorship of a work or the identity of the performer of a performance; and
  • falsely removing or altering the rights management information electronically attached to a work.
 
 
C. Copyright infringements can constitute offences
 
12.1.9 The primary and secondary infringements can also be the subject of criminal proceedings initiated by the copyright owner. The proceedings are available for a primary infringement if it is wilful and significant and the infringer commits the infringement to obtain a commercial advantage, in which event he would be liable, if convicted, to a fine not exceeding $20,000 and/or imprisonment for a term not exceeding 6 months. In the case of a second or subsequent offence, the maximum fine and imprisonment term are $50,000 and 3 years respectively.
 
12.1.10 As regards the secondary infringements, the penalties generally range from a fine not exceeding $10,000 per article or $100,000 in the aggregate, whichever is the lower, and/or an imprisonment for a term not exceeding 3-5 years. The courts have imposed both fines and custodial sentences on offenders who deal in a large number of infringing items and who commit the infringements in an organised fashion (eg. as part of a syndicate).
 
D. Permitted acts
 
(1) Provisions in the CA strike fair balance between interest of copyright owners and public interest
 
12.1.11 The CA has several provisions permitting certain acts which do not constitute copyright infringements. These acts are intended to strike a fair balance between the interest of copyright owners and the public interest. They include acts (popularly known as “fair dealings”) for the purposes of research and study, criticism or review, and reporting current events. To constitute fair dealing for research and study, not more than an article in a periodical or a reasonable proportion of a work (generally, 10% of the pages or a chapter) is to be taken, and the court is also to have regard to such factors as the nature of the work, the amount and substantiality of the part of the work that was copied in relation to the whole work as well as the effect on the potential market. In respect of fair dealing for criticism or review, or for reporting current events, there must also be a sufficient acknowledgement of the work.
 
(2) Additional defences available
 
12.1.12 In addition, there are defences catering to a variety of more esoteric acts, such as
  • reproduction for purposes of judicial proceedings, professional advice or simulcast;
  • temporary, incidental or transient reproduction of a work as part of the technical process of making or receiving a communication
  • observing, studying or testing the functioning of a computer program in order to determine the ideas and principles which underlie any element of the program;
  • making a backup of a non-infringing copy of a computer program if it is made for the sole purpose of being used in lieu of the original in the event that the original is lost, destroyed or rendered unuseable;
  • incidental inclusion of a work in a film, television broadcast or cable programme; and
  • reading or recitation of an extract of a reasonable length from a published literary or dramatic work in public.
 
E. Dealings in Copyright
 
(1) Copyright, being property right, can be transferred in a variety of ways
 
12.1.13 Being a property right, copyright can be licensed, assigned or otherwise transferred in a variety of ways. For instance, the copyright owner can license or assign the right to reproduce his work in a material form to one person and the right to perform the work in public to another person. He can also license or assign the copyright in terms of the whole or part of the copyright period or by geographical area. As a result, there can be a bewilderingly large number of licensees and/or owners of different parts of the copyright in a work.
 
(2) Assignment of copyright must be in writing and signed by copyright owner
 
12.1.14 An assignment of copyright (whether total or partial) must be in writing and signed by or on behalf of the assignor (the copyright owner). An assignment can also be entered into in respect of copyright that has yet to come into existence, in which event the assignment will only be effective to transfer ownership of the copyright as soon as the work is created.
 
(3) Licence need not be in writing, although advisable for it to be so
 
12.1.15 A licence need not be in writing, although it is advisable that it should be so, especially in the case of an exclusive licence (see below). A licence which is not in writing does not bind subsequent assignees of the copyright except a bona fide purchaser for value who does not know of the licence. A licence may be exclusive or non-exclusive. An exclusive licence even excludes the licensor (i.e. the copyright owner) from doing whatever the licence permits – that is, the exclusive licensee is almost the owner of the copyright. Indeed, section 123 of the CA treats an exclusive licensee as the owner for many purposes connected with remedies, as it states that the rights and remedies of an exclusive licence are concurrent with those of the copyright owner.
 
F. Remedies for infringement
 
12.1.16 The range of remedies which the Court can order in infringement proceedings includes an injunction, either damages or an account of profits, an order for delivery up and/or disposal of infringing articles in relation to the copyright. In lieu of damages or an account of profits, the copyright owner can elect for an award of statutory damages, for which the court can grant not more than $10,000 for each work or subject matter in respect of which the copyright has been infringed but not more than $200,000 in the aggregate, unless the owner proves that his actual loss from such infringement exceeds $200,000. In awarding statutory damages, the court shall have regard to a number of factors, including
  • the nature and purpose of the infringing act (e.g. whether it was of a commercial nature);
  • the flagrancy of the infringement;
  • whether the defendant acted in bad faith;
  • the need for deterrence;
  • any loss that the plaintiff has suffered or is likely to suffer by reason of the infringement; and
  • any benefit shown to have accrued to the defendant by reason of the infringement.
 
 
 
SECTION 2 INDUSTRIAL DESIGNS
 
A. Source of law
 
12.2.1 Protection of industrial designs is available under the Registered Designs Act (Cap 266, 2005 Rev Ed) (the ”RDA”). This Act is modelled on the UK Registered Designs Act 1949 (as amended in 1988), and therefore many fundamental concepts in this regime of protection are traceable to English registered design law.
 
B. Formalities of registration
 
(1) Registration may be obtained through domestic or international application
 
12.2.2 Registration may be obtained in two ways: through (i) a domestic application filed with the Registry of Designs within the Intellectual Property Office of Singapore (IPOS), or (ii) an international application filed in accordance with the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, designating Singapore as a country where protection is sought.
 
(2) Person who has earlier filed application in Paris Convention/ WTO country may claim right of priority
 
 
(3) Application must specifiy article(s) in respect of which registration is sought
 
 
C. Subject matter of protection
 
(1) Subject matter must be a ‘new’ ‘design’
 
12.2.5 There are two key criteria for registration: the subject matter must be (i) a ‘design’, which is (ii) ‘new’.
 
(2) Definition of ‘design’
 
(a) ‘Design’ means features of shape, configuration, pattern or ornament applied to article by any industrial process
 
12.2.6 A ‘design’ means features of shape, configuration, pattern or ornament applied to an article by any industrial process. Unlike in some other jurisdictions, there is no additional requirement that the design should have ‘eye appeal’ or ‘individual character’. But there are limits to this broad definition of ‘design’. The following cannot be registered:
 
  • Designs which are dictated solely by the function which the article has to perform (the ‘functionality’ exclusion).
  • Designs which are dependent upon the appearance of another article, of which it is intended by the designer to form an integral part (the ‘must match’ exclusion).
  • Designs which enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function (the ‘must fit’ exclusion).
  • Methods or principles of construction.
  • Computer programs or layout designs of integrated circuits.
  • Designs for articles which are of a primarily artistic character such as wall plaques, medals, book jackets, dress-making patterns.
  • Designs the publication or use of which would be contrary to public order or morality.
 
(b) Examples of registrable designs
 
 
(c) Example of unregistrable design
 
 
(3) Definition of ‘new’
 
(a) Design is new if it is not substantially same as any other design registered or published in Singapore or elsewhere
 
12.2.9 A design is new if it is not the same, or substantially the same, as any other design that has been registered or published in Singapore or elsewhere. Publication includes sale or use of any article which embodies the design.
 
(b) Novelty of design assessed as at date of application for registration
 
 
(c) Certain prior disclosures disregarded when assessing novelty of design
 
 
D. Ownership and dealings of design
 
(1) Owner of design usually person who created it
 
12.2.12 The owner of a design is usually the person who created the design, and he is the one entitled to apply for registration of the design. There are two notable exceptions to this general rule:
 
  • Design created in pursuance of a commission – unless there is an agreement to the contrary, the commissioning party shall be treated as the owner.
  • Design created by an employee in the course of employment - unless there is an agreement to the contrary, the employer shall be treated as the owner.
 
(2) Registered designed is personal property and may be assigned as such
 
12.2.13 A registered design or any right in it is personal property and may be assigned as such, absolutely or by way of security. Licences may also be granted for the use of the registered design. Such dealings should be registered with the Registry of Designs; failure to do so means that the assignment or licence is ineffective as against a person acquiring a conflicting interest in the registered design in ignorance of it.
 
E. Maximum duration of rights conferred is 15 years
 
12.2.14 The maximum duration of the exclusive rights conferred by registration is 15 years.
 
F. Exclusive rights and infringement
 
(1) Registered owner has exclusive rights to make or import articles which embody the registered design
 
12.2.15 The registered owner has the exclusive rights to make or import for the purposes of trade (eg. sale, hire) articles, in respect of which his design is registered, which embody the registered design (or one that is substantially the same).
 
(2) Infringement occurs when person does exclusive rights without authorisation or certain preparatory acts
 
12.2.16 Infringement occurs not only when a person does any of the above exclusive rights without authorisation; there can also be infringement in respect of certain preparatory acts, for example, making something that enables the infringing article to be made.
 
(3) Protection conferred by registration limited to allow for certain acts
 
12.2.17 The monopoly conferred by registration is limited to allow for certain acts such as:
 
  • Acts done for a private non-commercial purpose.
  • Acts done for the purpose of evaluation, analysis, research or teaching.
  • Acts done in relation to genuine articles, that is, those marketed in and outside of Singapore, by the registered owner or with his consent (conditional or otherwise).
 
G. Remedies for infringement
 
12.2.18 The range of remedies which the Court can order in infringement proceedings includes an injunction, either damages or an account of profits, an order for delivery up and/or disposal of infringing articles in relation to the registered design. However, if the registered owner does not succeed in his claim of infringement, he may find himself liable for a claim for making groundless threats of design infringement. The remedies in such a claim can include an injunction against the continuance of the threats, damages as well as a declaration that the threats are unjustifiable.
 
F. Protection available under the RDA only when there is overlap with copyright protection
 
 
12.2.20 Where there is such an overlap, there is no cumulative protection under registered design and copyright law: protection is available under the RDA only. Also, if a design is registrable under the RDA but has not been registered, the design falls to be covered by neither the registered design nor the copyright regime. Therefore, if the artistic work is a registrable design and the intention is to industrially apply it, steps should be taken to register it under the RDA; otherwise, there would be no protection for the design at all.
 
 
 
SECTION 3 PATENTS
 
A. Source of law
 
12.3.1 Inventions are protected in Singapore under the Patents Act (Cap 221, 2005 Rev Ed) (the ”PA”). It is based on the UK Patents Act 1977, but there are some important differences.
 
B. Formalities of registration
 
(1) Registration may be obtained through domestic or international application
 
12.3.2 Registration may be obtained in two ways: through (i) a domestic application filed with the Registry of Patents within the Intellectual Property Office of Singapore ('IPOS'), or (ii) an international application filed in accordance with the Patent Cooperation Treaty, with the Registry acting as the Receiving Office for the application.
 
(2) Person who has earlier filed application in Paris Convention/WTO country may claim right of priority
 
 
C. Subject matter of protection
 
(1) Patent may be granted for invention which is product or process
 
12.3.4 A patent may be granted for an invention which is a product or a process. The invention must satisfy the following conditions:
 
  • it is new;
  • it involves an inventive step;
  • it is capable of industrial application; and
  • the publication or exploitation of the invention would not generally be expected to encourage offensive, immoral or anti-social behaviour.
 
Behaviour is not to be regarded as offensive, immoral or anti-social merely because it is prohibited by any law in force in Singapore.
 
(2) Invention is ‘new’ if it does not form part of state of art
 
 
 
(3) Invention involves ‘inventive step’ if it is not obvious to person skilled in art
 
 
12.3.8 To determine whether an invention is obvious, the court would
 
  • first identify the inventive concept embodied in the patent;
  • then assume the mantle of the normally skilled but unimaginative person in the art at the priority date of the patent and impute to him what was, at that date, common general knowledge in the art;
  • identify what, if any, differences exist between that knowledge and the patented invention; and finally
  • consider whether, without knowledge of the invention, those differences constitute steps which would have been obvious to the person skilled in the art or whether they require any degree of invention.