Wednesday, 7 July 2021

DIFC Trade Secrecy Law

Jane Lambert
 







In November 2019 the Dubai International Financial Centre ("DIFC") enacted a new intellectual property law (see DIFC Intellectual Property Law (Law No 4 of 2019)). I described its structure in my Introduction to, and Overview of, the New DIFC Intellectual Property Law on 11 Dec 2019 and discussed its provisions relating to patents and utility certificates, industrial drawings and designscopyrights and neighbouring rights and trade marks and trade names in subsequent articles. In this article, I discuss the provisions relating to trade secrets (arts 52 to 55). There was already an action for breach of confidence under the Law of Obligations which I discussed in DIFC Law of Confidence on 27 Jan 2011.

According to the table to para 3 of Sched. 1 of the Intellectual Property Law, the term "Trade Secret" includes the following:
"all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, programs, devices, formulas, designs, prototypes, methods, techniques, processes, procedures, or codes, whether tangible or intangible, and whether or how stored, compiled, or memorialised physically, electronically, graphically, photographically, or in writing
Art 52 of the Law provides that a Trade Secret can be protected when it meets each of the following criteria:
"(a) the information involved constitutes a Trade Secret, or part thereof; 
(b) the information derives actual or potential economic value from not being generally known to other persons who may obtain economic value from its disclosure or use; and 
(c) the person lawfully in control of the information has taken reasonable measures to keep the information a secret."

 This is not dissimilar to art 2 (1) of  Directive (EU) 2016/943 of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure (OJ 15.6.2016 L 157/1) ("the Trade Secrets Directive"):

"(1) ‘trade secret’ means information which meets all of the following requirements: 
(a) it is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question; 
(b) it has commercial value because it is secret; 
(c) it has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret."

As in the Trade Secrets Directive, the owner is deemed to be the person lawfully in control of the Trade Secret and he or she is defined as "a  person lawfully in control of the Trade Secret is every person having the right of its disclosure, use and storage" (see art 53 (1) (a) and art 53 (2)).  Such person has "the right to licence (sic), transfer, s4 hare, or assign lawful control of the Trade Secret to any person in return for a consideration or otherwise" under art 53 (1) (b) and also "to prevent any person from misappropriation of the Trade Secret, and shall have the right to claim compensation for any damage caused due to misappropriation thereof by any person" under art 53 (3).

Art 54 provides that the following acts shall constitute misappropriation of a Trade Secret and prohibited under the Law: 

"(a) the acquisition of a Trade Secret by Improper Means; 

(b) the disclosure or use of a Trade Secret by a person who used Improper Means to acquire knowledge of the Trade Secret; 

(c) the acquisition, disclosure or use of a Trade Secret by a person who at the relevant time knows, or ought to have known, that the knowledge of the Trade Secret was: 

(i) derived from or through a person who had utilised Improper Means to acquire it; 

(ii) acquired under circumstances giving rise to a duty to maintain its secrecy or limit its use; or 

(iii) derived from or through a person who owed a duty, towards the person lawfully in control of the Trade Secret, to maintain its secrecy or limit its use. 

(d) the disclosure or use of a Trade Secret by a person who knows, or ought to have known, that it was a Trade Secret and that knowledge of it had been acquired by accident or by mistake."

"Improper Means" is defined in the above-mentioned table to include "fraud, forgery, theft, bribery, misrepresentation, breach or inducement of a breach of a legal or contractual duty to maintain secrecy, or espionage through electronic or other means."   

The following acts, however, are permitted by art 55:

"(a) the discovery, acquisition or use of information from public sources, or known and available information; 

(b) the discovery, acquisition or use of information as a result of scientific research, innovation, invention, development, modification and improvement exerted by persons independent of the person lawfully in control of the Trade Secret; 

(c) the discovery of information pursuant to a licence, transfer, sharing, or assignment of the information; or 

(d) the discovery of information through reverse engineering."

This is an important branch of the law because every invention starts life as a trade secret and there are some technologies that can only be protected by trade secrecy law.  In the next few days, I shall write a short article with some practical tips on how inventors, entrepreneurs and others can safeguard secret technical or commercial information.  It will be angled for a British audience but it should apply equally to the DIFC.

In the meantime, anyone who wishes to discuss this article or trade secrecy and confidentiality generally may call me during UK office hours on +44 (0)20 7404 5252 or send me a message through my contact form. 

Wednesday, 10 February 2021

DIFC Space Courts

Author European Space Agency Licence CC BY-SA 3.0 IGO 


Jane Lambert

Just a few days before a probe from the United Arab Emirates was due to enter Mars orbit, the Dubai International Financial Centre Courts and the Dubai Future Foundation announced a Courts of the Future initiative known as Courts of Space (see Courts of Space launches into orbit in support of global space economy press release 1 Feb 2021 04:49 PM).

The initiative has three main objectives:
  • An international working group from the public and private sectors  will consider the types of dispute that might arise from space research and travel;
  • The working group will compile or procure the compilation of a Space Disputes Guide; and
  • Training judges in the resolution of space disputes.
I discussed the Courts of the Future, The Courts of the Future Forum Charter and the draft Part 40,000 of the DIFC Court Rules in Dubai's Courts of the Future Initiative on 18 Nov 2017.

The international space working group will find that the UN General Assembly proposed the Outer Space Treaty (Treaty on Principles Governing the Activities of States in the Exploration and Use of Outer Space, including the Moon and Other Celestial Bodies) as long ago as 16 Dec 1966.  There is a UN Office for Outer Space Affairs with responsibility for Space Law.

A number of countries including the United Kingdom have enacted legislation in accordance with the Outer Space Treaty.  The Outer Space Act 1986 provided for the licensing of space activities and the registration of space objects.  More recently, the Space Industry Act 2018 was passed to enable British businesses to increase their share of a global market estimated to be worth between £155 and £190 billion in 2018. I discussed the topic in Commercial Exploitation of Space: Space Industry Act 2018 on 10 April 2018 in NIPC Law.  The House of Commons last discussed the space industry in its debate on the UK Space Industry on 4 Feb 2021 (see Hansard 4 Feb 2021).

Considerable revenues are already generated from such activities as remote sensing, telecommunications, tourism and weather forecasting.  The absence of gravity and an atmosphere is an opportunity for low orbit manufacturing which opens the possibly of new products and processes that will require legal protection.  Confereneces on IP in space have been held in Luxembourg and the USA which I discussed in Forthcoming Conference in Luxembourg on Innovation, Space Technologies, and Patents on 30 July 2018 in NIPC News and The Role of Intellectual Property in Space Commerce on 18 July 2019 in NIPC Cornwall.

I am following the space industry not out of sheer intellectual cutisoity but because there are opportunities for businesses of all sizes throughout the workd including the Gulf and that these businesses will require advice and representation in respect of their research, development and marketing of new products and manufacturing processes.  Anyone wishing to discuss this article or any of the topics mentioned in it should call me on +44 (0)20 7404 5252 during UK office hours or send me a message through my contact form.

Sunday, 20 September 2020

The New DIFC Intellectual Property Law - Trade Marks and Trade Names

Author Mostafameraji Licence CC BY-SA 4.0  Source Wikipedia Tourism in Dubai


 














Jane Lambert

Last November the Dubai International Financial Centre ("DIFC") enacted a new intellectual property law (see DIFC Intellectual Property Law (Law No 4 of 2019)).  I described its structure in my Introduction to, and Overview of, the New DIFC Intellectual Property Law on 11 Dec 2019 and discussed its provisions relating to patents and utility certificatesindustrial drawings and designs and copyrights and neighbouring rights in subsequent articles.  In this article, I discuss the provisions relating to trade marks (arts 43 to 49) and trade names (arts 50 and 51).   There was already an action for passing off under the Law of Obligations which I discussed in The DIFC Law of Passing Off on 7 April 2011.

What is a Trade Mark?
The table in paragraph 3 of Schedule 1 to the IP Law defines a trade mark as:
"any signs or combination of signs or names, words, signatures, letters, numbers, Drawings, Symbols, addresses, Hallmarks, stamps, pictures, vignettes, notices, packages, colour or combination of colours, or any other mark or combination of marks having a distinctive form and used or intended to be used to distinguish goods, products or services. Sound and smell can be considered as trade marks."

That is broadly consistent with art 2 of Federal Law No. 37 of 1992 on Trademarks (as amended by Law No. 19 of 2000 and Law No. 8 of 2002).

Registration
The DIFC Intellectual Property Law makes no provision for registering trade marks in the DIFC.  Instead, art 43 of the Law provides that a trade mark registered under the Federal trade mark law is recognized for the purposes of the DIFC IP Law and is valid and enforceable in the DIFC.  "Federal trade mark law" is defined in the table in paragraph 3 of Schedule 1 as "UAE Law No. 37 of 1992 as amended by UAE Law No. 8 of 2002 and its implementing regulations, any other future amendment or Federal Law with respect to trade marks."  I have already discussed that statute including registration in UAE Trade Mark Law on 20 May 2013.  According to the WIPO, the UAE is not yet a party to either the Madrid Agreement or Protocol.  It appears from Saba Al Sultani and Rob Deans that trade mark law has been harmonized among the Gulf Cooperation Council states but there is not yet a unitary GCC trade mark on the lines of the GCC patent or EU trade mark (see Al Sutani and Read GCC Trademark Law Coming Soon Sept 2014 WIPO Magazine).

Prohibited Marks
The following marks will not be recognized in the DIFC unless they are registered under Federal trade mark law:
"(a) a mark which is not distinctive; 
(b) a mark consisting of a generic name used in relation to goods, products or services; 
(c) a mark that contains one or more familiar drawings or common pictures of goods; 
(d) a mark that is contrary to the public order or morality of the UAE; 
(e) a mark containing the insignia of the UAE, any governmental body in the UAE, flags and other symbols pertaining to the UAE (or any emirate thereof), Arab or international organisations (or any agencies thereof), or any foreign country except with the authorisation of those parties, as well as any imitation of such insignia, flags or symbols; 
(f) a symbol of the Red Crescent or the Red Cross, or any other similar symbol or mark which is an imitation thereof; 
(g) a mark which is identical or similar to a symbol of a purely religious nature; 
(h) a geographical name, where the use thereof may cause confusion as to the origin or source of the goods or services; 
(i) a name, surname, photograph or emblem of a third party, unless his, or his legal successors’, prior consent has been obtained. 
(j) a mark containing a title of honour, where the person applying for registration cannot prove that he is lawfully entitled to its use; 
(k) a mark which may mislead the public or which is identical or confusingly similar to a mark or marks of another party, even though not registered, or which contains false information as to the origin or the source of products or services, or about their other characteristics, as well as a mark containing an imaginary, imitated or forged trade name; 
(l) a mark owned by a person with whom it is illegal to deal with under Federal Law or Dubai Law. 
(m) a mark which, if used for certain classes of products or services, would diminish the value of other products or services distinguished by such mark; 
(n) a mark containing the word or expression: "Patent", "Patented", "registered", "registered Design", "copyright" or "Imitation is forgery" or similar words and expressions; 
(o) a mark containing national and foreign decorations, coins and paper currency; or 
(p) a mark that constitutes a translation or imitation of a well-known mark or the main part thereof or other previously registered mark, where the registration would confuse consumers as to the identity or origin of the goods or services that are distinguished by the mark or similar goods or services" (art 44).

The Commissioner of Intellectual Property ("the Commissioner") may levy a $5,000 fine upon anyone using a mark that falls within sub-paragraphs (d) to (p) pursuant to art 48 (1) and art 59 (see my Introduction to, and Overview of, the New DIFC Intellectual Property Law of 11 Dec 2019).

Well Known Marks
Art 45 (1) of the DIFC Intellectual Property Law protects well-known trade marks of international reputation ("well-known marks") that surpass their country of its origin and acquires fam in a relevant sector among consumers in the UAE. The decision as to whether a mark is or is not a "well-known mark"appears to be one for the court.   In making that decision, art 45 (2) enables the following factors can be taken into account{

"(a) the degree of public knowledge or recognition in a relevant sector; 

(b) the duration, extent and geographical area of use; 

(c) the duration, extent and geographical area of any promotion of the goods or services to which the trademark applies; 

(d) the duration and geographical area of any registrations, or any applications for registrations, to the extent that they reflect use or recognition of the trademark; 

(e) the record of successful enforcement of rights in the trademark, in particular, the extent to which the trademark was recognised as well known by competent authorities; or 

(f) the commercial value associated with the trademark."

Nobody may use a mark that is identical or confusingly similar to a well-known trade mark in the DIFC (art 45 (3)).  Transgressors of this rule can be fined US$15,000 by the Commissioner.  

Owners of well known marks also have the following rights of action under art 45 (4) and (5):

  • the right to prevent any party from using in the DIFC identical or confusingly similar marks, to distinguish goods or services that are not identical to those in respect of which, the well-known trade mark is registered, if: 
    • the use of the mark indicates a possible connection between goods or services and the owner of the well-known trademark; and 
    • the interests of the owner of the well-known trade mark are likely to be damaged by such use; and
  • the right, to prevent another person’s commercial use of a mark or trade name in the DIFC, if such use began after a well-known trade mark has become well-known and the use of the mark or trade name causes dilution of the distinctive quality of the well-known trade mark.
The Commissioner can fine anyone using a trade mark in a way that may cause dilution to a well-known trade mark US$15,000.

Trade Mark Owner's Rights of Action
Art 46 confers upon the proprietor of a trade mark that is registered in the United Arab Emirates the exclusive right to exclude others from the import, export, use, sale, offer for sale, advertising, transit, distribution or use in any manner of goods or services distinguished by an identical or confusingly similar trade mark 

Defences
Art 49 provides that the following acts shall not infringe a trade mark or well-known mark:

"(a) to indicate the intended purpose of the goods or a service related thereto, provided that such use is necessary and in good faith;
(b) in news reporting, news commentary or parody; or
(c) by another person in comparative commercial advertising or promotion to identify competing goods or services, provided that such use is in good faith and in accordance to honest practices in commerce."

Should a defendant allege that the trade mark in suit is invalid or should be cancelled for other reasons, art 48 (2) requires him or hee to must issue proceedings in a court with jurisdiction to cancel the registration and satisfy the DIFC court that there are clear and solid grounds for such proceedings.  If he or she does so, the infringement proceedings in the DIFC will be stayed until the court of competent jurisdiction has ruled on the cancellation claim.  If the defendant does not do so, the infringement proceedings in the DIFC will continue.

Punishable Infringements
The following infringements are punishable with the following fines:

  • US$30,000 for "counterfeiting or imitating" a registered trade mark, or a well-known trade mark, with the intent or effect of misleading the public (art 48 (1) (b));
  • US$25,000 for unlawfully using a registered trade mark or a well-known trade mark without the proprietor's consent (art 48 (1) (c));
  • US25,000 for unlawfully using a trade mark that is confusingly similar to a registered trade mark with the intent to, or effect of, causing confusion and misleading the public (art 45 (1) (d))'
  • US$25,000 for knowingly selling, offering for sale or possessing with purpose of selling goods or services bearing a trade mark, or well-known trade mark, that is counterfeited, imitated or unlawfully used (art 48 (1) (e),

Licensing
Art 47 (1) permits the owner of a trade make by a written instrument, grant a licence to any person to use the trade mark for all or part of the goods or services in respect of which the trade mark is registered.   The owner of the trade mark may also use the mark contemporaneously with the licensee unless otherwise agreed in writing (art 47 (2).  Such a licence is known as a sole licence as opposed to exclusive licences which can be used by the licensee to the exclusion of the licensor and all other persons and non-exclusive licences that can be used by the licensor and any number of licensees.   

A licensee may not assign its rights to any other party, or grant a sub-licence in respect thereof, unless expressly allowed by the terms of the licence agreement (art 47 (3)).

Unless the licence agreement provides otherwise, a licensee is entitled to call on the owner of the trade mark to take infringement proceedings in respect of any matter which affects the licensee’s interests by virtue of art 47 (5) If the owner refuses to act in accordance with a request by the licensee, or fails to do so within two (2) months of being called upon to do so, the licensee may bring such proceedings in his or her own name, as if he or she were the registered owner of the trade mark.

Any act of a licensee in contravention of a licence agreement shall constitute trade mark infringement pursuant to art 47 (4) and may be punished by the Commissioner with a US$30,000 finr.

Trade Names
A trade name is defined in the table to paragraph 3 of Schedule 1 "as every name used in trade to designate particular business and registered with the competent authority."  Art 50 requires of persons registered, incorporated, licenced or permitted to operate in the DIFC to comply with the provisions of the Operating Law (DIFC Law No 7 of 2018) in relation to trade names, and to display such names conspicuously displayed on the fa├žade of their business premises in the DIFC. Failure to display the name in accordance with the law attracts a fine of US$5,000.   Art 51 enables the Commissioner to resolve any conflict between a trade name registered in the DIFC and a trade mark, or a well-known Trademark, which is likely to damage the interests of a person, cause confusion or mislead the public.   Failure to comply with an order of the Commissioner to change a trade name in conflict with a trade mark may be punished with a fine of US$10,000.

False Claims
Art 48 (1) (f) prohibits falsely representing that a mark is registered as a trade mark, or as a well-known trade mark, or making any statement with the intent or the effect of leading others to such a conclusion.  The Commissioner can impose a US$5,000 fine for such misconduct.

Comment
Because DIFC law differs from English and EU trade mark law in a number of important respects, particular care should be taken in drafting a trade mark licence or assignment or a franchising, distribution or other agreement to be governed by DIFC law or likely to affect the DIFC.   Should it be necessary to enforce a trade mark or resist enforcement proceedings in the DIFC courts, members of the bar of England and Wales in good standing can obtain quickly and easily the right to appear before those tribunals. Actions to cancel UAE trade marks will have to be undertaken by Emirati lawyers.

Anyone wishing to discuss this artiucle or DIFC law generally should call me on +44 (0)20 7404 5252 during normal UK business hours or send me a message through my comtact form;  

Tuesday, 21 July 2020

PRS v Qatar Airways - Is London the appropriate forum for a claim against a Qatari state owned corporation for the alleged infringement of many countries' copyright laws?

By Sunnya343 - Own work, CC BY-SA 3.0,
https://commons.wikimedia.org/w/index.php?curid=34010373





















Jane Lambert

In  Copyright - Performing Right Society v Qatar Airways Group 20 July 2020 NIPC Law, I discussed the decision of Mr Justice Birss, a judge of the High Court of Justice of England and Wales, in Performing Right Society Ltd v Qatar Airways Group QCS [2020] EWHC 1872 (Ch) (17 July 2020).  That was an unsuccessful application by the national flag carrier of Qatar to stay a copyright infringement action against it by the Performing Right Society ("PRS"),  a United Kingdom collecting society.  The airline had argued that appropriate forum for the proceedings was Doha rather than London.

The PRS alleged that the airline's inflight entertainment system infringed the copyrights in its members' music on every flight from the moment its aircraft picked up passengers to the opening of the cabin doors at the destination.  Copyright is granted by national authorities and applies to national territories.  Nearly every country in the world has its own copyright laws.   Qatar's is Law No. 7 of 2002 on the Protection of Copyright and Neighboring Rights which I mentioned in Qatar Intellectual Property Law on 1 May 2012.

The PRS contend that that Law applies when an aeroplane is parked at Doha Hamad Airport and continues to apply while it remains in Qatari airspace.  However, the moment that it crosses the border of another country the copyright laws of that country applies for as long as the aircraft remains in its territory.   For instance, if a flight is bound for Manchester the Copyright, Designs and Patents Act 1988 would apply as the aeroplane approaches the North Sea coast.  The Act would continue to apply while the aeroplane is on the ground at Ringway.   Indeed it would continue to apply until the aircraft clears United Kingdom airspace on its next flight.

In the action that the PRS has brought against Qatar Airways, the collecting society has claimed relief not just for alleged infringements of the Copyright, Designs and Patents Act 1988 for flights to and from the United Kingdom but also for alleged infringements of Law No 7 of 2002 while the Qatari aircraft are on the ground in Doha, in Qatari or international airspace, infringements of the copyright laws of the territories the Qatari aircraft cross and also infringements of the laws of those aircrafts' ultimate destinations.

Now, most of the journeys made by Qatar Airways neither start nor end in the United Kingdom and go nowhere near it.  QR 0908, for example, is scheduled to take off from Doha Hamad International Airport at 23:35 local time tomorrow evening and land at Kingsford Smith Airport in Sydney at 20:25 the next day.  The PRS claims relief for alleged infringements of Qatari and Australian copyright law in the English proceedings.

How could that be possible?   The answer is that in Lucasfilm Ltd and others v Ainsworth and Another  [2011] 4 All ER 817, [2012] 1 AC 208, [2012] 1 All ER (Comm) 1011, [2011] 3 WLR 487, [2011] FSR 41, [2011] UKSC 39, [2012] EMLR 3, [2011] ECDR 21, [2011] Bus LR 1211, the Supreme Court of the United Kindom decided that the courts of England and Wales can have jurisdiction over claims for infringement of foreign copyrights by actions that take place outside the UK so long as the alleged infringer is within their jurisdiction.

The fact that an English court can decide whether a foreign copyright has been infringed and award damages or other relief if it decides that the copyright has been infringed, does not mean that it should decide such issues.   The exercise of that jurisdiction is subject to an important doctrine called "forum non conveniens".    If it is more appropriate for a court in another country to try the action, the English court should stay (that is to say, stop) all further proceedings in England and allow the parties to resolve their dispute in that other court.


Qatar Airways tried to invoke the forum non conveniens doctrine in the proceedings before Mr Justice Birss.   In order to succeed, a defendant has to satisfy the English court that there is another forum which is clearly and distinctly the natural forum, that is to say, the "forum with which the action has the most real and substantial connection".   Now the court has to look at the issue of convenience not just from the point of view of the defendant but also from the point of view of the claimant.   In his judgment, Mr Justice Birss considered the following factors:

"i) the personal connections the parties have to the countries in question;
ii) factual connections which the events relevant to the claim have with the countries;
iii) applicable law;
iv) factors affecting convenience or expense such as the location of witnesses or documents."

On the first point, England was obviously likely to be more convenient for the claimant than Qatar as it is an English company and Qatar more convenient for the defendant but the defendant flew frequently to and from the UK and had plenty of interests here.   As to the factual connections, the defendant's aircraft flew everywhere so the alleged infringements will have taken place everywhere.  Issues on the applicable laws included such matters as language, the costs that could be recovered and each country's rules on conflicts of laws.  On a number of issues, the practice of the English courts was compared to the practice of the courts of Qatar. The claimant's witnesses were in England whereas the defendant's were in Qatar.  There would have to be a lot of translation wherever the case was held.   The judge took all these matters into consideration and concluded that the defendant had not shown that Doha was more appropriate than London.

Factors that the judge appears to have taken into account were that Qatar us a civil law and not a common law jurisdiction, proceedings would take place in Arabic and not English, costs awards in Qatar tend to be much lower than in England, it is not clear whether, and if so how, the Qatari courts would apply foreign copyright law and there are no specialist intellectual property courts in Qatar.  As I mentioned in my article yesterday, there is another court in Qatar where none of those objections would apply.  The Qatar International Court is an English speaking common law court with judges from the UK and other common law jurisdictions. Its President is Lord Thomas of Cwmgiedd.  Its conflict rules are modelled on those of England and Wales.  It awards costs on the same scale and upon similar principles as the courts in London.   There is no mention of the Qatar International Court in the judgment and the airline does not appear to have suggested it as an appropriate forum.  Whether it would have made the difference to Mr Justice Birss's judgment will never be known but it is certainly worth consideration should there be any other similar case involving Qatar or indeed Abu Dhabi, Dubai or Kazakhstan which also have English speaking common law courts.

Anyone wishing to discuss this topic may call my clerk on +44(0)7986 948267 or send me a message through my contact page while this emergency continues, I shall gladly respond by phone, VoIP or email.

Sunday, 28 June 2020

The New DIFC Intellectual Property Law - Copyright and Neighbouring Rights

Dubai Media City
Author Francisco Anzola Licence CC BY 2.0 Source Wikimedia Commons


















Jane Lambert

This is the fourth of my articles on the new DIFC Intellectual Property Law (Law No 4 of 2019). I have already written an introduction and overview and discussed the provisions of the Law that relate to patents and utility certificates and industrial drawings and designs. This article considers Part 3 on copyrights and neighbouring rights.

Overview
Part 3 of the DIFC Intellectual Property Law consists of 25 articles (arts 17 to 42).  There was already a law on copyright and neighbouring rights that applied to the whole of the United Arab Emirates ('UAE') including Dubai and the DIFC, namely the Federal Law No. (7) of the Year 2002 Concerning Copyrights and Neighboring Rights,  I discussed that law in Copyright and Related Rights in the United Arab Emirates: Part I 4 Jan 2012 and Copyright and Related Rights in the United Arab Emirates: Part II 11 Feb 2012.    The federal law continues to apply to the DIFC and copyrights subsisting under that law are expressly recognized by art 17 of the DIFC Intellectual Property Law.  Part 3 consists of 2 Chapters.  Chapter 1 is entitled "General Rules on Copyright" though it also provides for rights in performances and moral rights as well as economic rights. Chapter 2 is entitled "Copyright Infringements" but it appears to cover conduct for which the Commissioner of Intellectual Property can impose fines.  Unlike most of the laws of the DIFC which are based on the laws of England and Wales, Part 3 bears very little resemblance to the UK's Copyright, Designs and Patents Acy 1988. It resembles most closely the UAE copyright law though some of its concepts and terminology seem to derive from the US Copyright Act of 1976. There are a number of lacunae in the legislation on such matters as subsistence and the treatment of works of citizens, residents and corporations of countries other than the UAE but there are very detailed provisions on collaboration which may have been drafted with a view to promoting Dubai's film and TV industries

Copyright
It may be inferred from art 29 that copyright in the DIFC means  the 'exclusive economic rights of an author to exploit a work, through any means, including:
(a) the licensing of the use of the work;
(b) copying, reproduction, electronic loading and storage of the work;
(c) any form of representation, broadcasting or re-broadcasting, public performance, translation, adaptation, modification, alteration, leasing, lending of the work; or
(d) any form of publication of the work, including providing access thereto through a computer or information networks, communication networks or any other means.

Copyright in Sound Recordings and Broadcasts
Record producers and broadcasting organizations have additional economic rights.

Art 30 provides that a 'Record Producer' (defined in the table to paragraph 3 of the first schedule ("the Table") as "a natural person or corporate entity who/which does a first time recording for a performing artist or records other audio material") has the following rights in that person's 'Sound Recordings':
"(a) to prevent any exploitation of the Sound Recording in any manner, without the Record Producer’s prior written authorisation, which exploitation shall include (without limitation) reproduction, renting, broadcasting or making them available through computers or any other means; and
(b) to make the Sound Recording available to the public by wire or wireless means or through computers, software or any other means."
'Sound Recordings" are defined in the Table as "works that result from the fixation of a series of sounds making up a specific performance, regardless of the method of fixation and the nature of the material objects in which they are embodied. This includes fixing audio with video to create an audiovisual work absent contrary agreement." 

A 'Broadcasting Organization" is defined in the Table as "an entity that carries out radio or television Broadcasting or radio and television Broadcasting." Art 31 provides that a "Broadcasting Organization shall enjoy the following exclusive economic rights in the DIFC:
"(a) to authorise the exploitation of its Works, programs and recordings; and
(b) to prevent any Public Broadcasting of its Works, programs and recordings without their prior written authorisation, of their television recordings, including, in particular, fixation by way of recording, reproduction, sale, rental, re-broadcasting or communicating such Works to the public through any means, including the removal or destruction of any technical protection of such programs by coding or other means."
Rights in Performances
'Performing Artists" are defined in the Title as "actors, singers, musicians, dancers and other persons who deliver a speech, sing, play (music) or give any kind of performance in the context of a literary or artistic work or otherwise which is protected under this Law or is public property."  Art 32 (1) confers on 'Performing Artists' the following exclusive economic rights in the DIFC:
"(a) the right to broadcast non-fixed performances and communicate it to the public;
(b) the right to fix performances in any form of recording; and
(c) the right to reproduce a performance fixed in any form of recording."
Subsistence of Copyright
Art 18 (1) provides:
"Copyright protection in the DIFC under this Law shall be granted to an original Work of authorship fixed to a tangible medium."
There appear to be 3 conditions for the subsistence of copyright.  First, there must be something that falls within the definition of 'Work of authorship.'  Secondly such work must be original. Thirdly, it must be fixed to a tangible medium.

Work of Authorship
The term 'Work of authorship' is not defined in the law though the Table has definitions for 'Work'. 'Work of Co-Authorship' and 'Work of Joint Authorship.'  Work' is defined in the Table as "any original work in the areas of literature, arts or science, whatever its description, form of conveyance and expression, significance or purpose".  The following categories of works are specifically included within that definition by art 18 (3):
"(a) books, booklets, articles and other literature;
(b) computer software and applications whether in source code or machine language, Databases, graphic user interfaces and similar Works;
(c) lectures, speeches, sermons and similar Works;
(d) plays, musicals and pantomimes;
(e) musicals, whether or not accompanied by dialogue;
(f) audio work, video work and audio visual work;
(g) architectural work, architectural plans and drawings;
(h) Work involving drawing, painting, sculpting, etching, lithography, screen printing, relief and intaglio prints and other similar Works of fine art;
(i) photographic Works;
(j) Works of applied art and plastic art;
(k) charts, maps, plans, 3-D modelling for geographical and topographical applications and architectural designs; and
(l) Derivative Works, subject to the protection afforded to the Works upon which they are based."
That list is almost exactly the same as the one in paragraphs (1) to (12) of art 2 of the federal law and echoes art 2 (1) of the Berne Convention.  Interestingly, art 18 (4) provides that the protection provided by this article shall extend to the title of a work if created, as well as the creative concept devised for broadcasting material.  That may be in reaction to such decisions as Exxon Corp v Exxon Insurance Consultants International Ltd. [1982] Ch. 119, [1981] 3 W.L.R. 54,[1981] 3 All E.R. 241, [1981] 6 WLUK 106, [1982] R.P.C. 69, (1981) 125 S.J. 527, Times, June 13, 1981, [1981] C.L.Y. 326 and Green v Broadcasting Corp of New Zealand  [1989] 2 All E.R. 1056, [1989] 7 WLUK 239, [1989] R.P.C. 700and [1990] C.L.Y. 73.

Original
Art 18 (1) requires every type of "Work" to be original and not just artistic, dramatic, literary and musical works as is the case in the UK. Originality is not defined in the law and of course, there have been no cases so it is not clear whether the "independent skill and labour" requirement that applied before Infopaq (Case C-5/08, Infopaq Int'l A/S v. Danske Dagblades Forening [19 July 2009] ECR I-6569), the "author's intellectual creation" test that has applied since that case or some other standard applies.  There is a clue in the proviso to art 19 (2). The paragraph excludes from copyright certain types of works but the proviso allows "protection if there is an innovative element in the way in which it is compiled or arranged, or in the effort involved in creating the Work, in which case copyright protection shall extend to the compilation, arrangement or creative effort involved." The last sentence of the paragraph states that the proviso shall apply to databases.  The words 'innovative element' suggest novelty which is consistent with the author's intellectual creation test.

Fixed in a Tangible Medium
The reason why works must be fixed in a tangible medium is provided by art 19 (1):
"Copyright does not protect ideas, procedures, methods of doing business, mathematical algorithms and basic principles and facts but only the expression thereof."
 Although art 2 (2) of the Berne Convention permits but does not require contracting parties to prescribe that works in general or specified categories of works may not be protected unless they have been fixed in some material form, the adage that copyright protects the expression of ideas rather than ideas themselves has been a fundamental tenet of the law of copyright since the decision of the US Supreme Court in Baker v Selden 101 US 99. 

Ownership
Art 21 provides that the 'Author' of a 'Work' is the first owner of any copyright in it subject to a number of exceptions such as whether the 'Author' created the 'Work' in the course of this employment.

Author
The Table defines an 'Author' as"the person who creates a Work or whose name appears on the Work or to whom the Work is attributed at the time of publication unless proven otherwise." The Table adds:
"An author shall also be a person who publishes a Work anonymously or under a pseudonym or by any other means provided there is no doubt as to the identity of the author. In the case of doubt, the publisher or producer of the Work, as a natural person or corporate entity, shall exercise the rights of the author on his behalf until such time as the identity of the author is established."
Art 20 (1) extends the definition of "author" to the following
"(a) a person who translates Work into another language, converts it from one form of literature, art or science into another form, summarises it, alters it, amends it, illustrates it, comments on it, catalogues it or performs any other action which makes the Work appear in a new form, subject to Article 20 (2); 
(b) a performer who conveys to the public a Work of others, whether or not this performance is by singing, playing a musical instrument, rhythm, recital,  photography, drawing, movement, steps or any other method; and 
(c) Authors of encyclopaedias, collections, compiled data and compilations which are granted protections by virtue of this Law."
It would appear from sub-paragraph (b) that an 'Author' can also be a 'Performing Artist.'

Collaboration
The DIFC IP Law draws a distinction between 'Joint Authorship' and 'Co-Authorship.'  According to art 23 (1)
"In a Work of Joint Authorship, each contributor shall be considered an Author in equal parts with each other Authors (sic) of the Work, unless otherwise agreed between them in writing."
The Table defines a 'Work of Joint Authorship' as "a Work where more than one (1) person contributes in the creation of a Work in  such a manner that it is impossible to distinguish the contribution of each person in the Work."  In a 'Work of Co-Authorship', however, art 24 (1) provides
"each Co-Author shall have the right to independently exploit the economic rights in his part, without prejudice to the rights of other Co-Authors to do the same, unless otherwise agreed between them in writing."
A 'Co-Author; is defined in the Table "as an Author contributing to a Work of Co-Authorship" and a 'Work of Co-Authorship' as "a Work where more than one (1) person contributes in the production of a Work, where the contribution of each person belongs to a different category of production or art."  The big difference between 'Joint Authorship' and 'Co-Authorship' comes with enforcement.  Art 23 (2) provides:
"An Author in a Work of Joint Authorship may not separately exercise his rights as Author of a Work, without the written consent of all other Authors of the Work."
By contrast, art 24 (2) enables an author in a work of joint authorship may to exercise his rights as Author of a Work, without the written consent of all other Authors of the Work.   Art 24 (3) also provides:
"Where a Co-Author dies without leaving a legal successor, such a Co-Author’s share in the rights to the Work shall devolve proportionally to the remaining Co-Authors, or their legal successors, unless otherwise agreed between them in writing prior to the death of such a Co-Author"
There is no equivalent to art 24 (3) in art 23 but it may be inferred from art 24 (3) that 'Joint Authors' hold the DIFC copyright in their work as joint tenants and that the rights of a deceased joint author devolve to the surviving joint author or authors on the deceased joint author's death.

The concept of co-ownership applies conveniently to 'Audio-Visual Works', 'audio Works', 'visual Works' and 'Derivative Works'.  The Table defines an 'Audio-Visual Work' as a "work that consists of a series of related images which are intrinsically intended to be shown by the use of machines or devices such as projectors, viewers, or electronic equipment, together with accompanying sounds, if any, regardless of the nature of the material objects, such as films or tapes, in which the works are embodied."  It adds that such works include, among others, TV programmes, films and video games.  A 'Producer of an Audio-Visual Work' is defined as "a person or corporate entity who/which provides the means necessary to accomplish an audiovisual work and assumes the responsibility of accomplishing the work."   There is no definition of 'audio Work; in the table but it may be surmised that it would fall within the definition of 'Sound Recording' mentioned above,  Similarly, there is no definition of a 'visual work' but it is likely to include silent films, TV programmes, animations and video games.  A 'Derivative Work' is defined in the Table as a "work which is built upon an underlying Work provided that its arrangement or presentation makes an original contribution in the process of transforming the underlying Work in order to be entitled to a new and separate copyright "

Art 26 (1) designates the following as 'Co-Authors' of  Audio-Visual Work, audio Work or visual Work in the DIFC:
"(a) an Author of a scenario or written idea for a program;
(b) a person adapting an existing literary Work for an Audio-Visual production;
(c) an Author of dialogue;
(d) a composer of music composed specifically for the Work; and (e) a director who materially contributes to the making of the Work."
Where a co-author of an audio-visual work, an audio work, or a visual work fails to complete his or her part of the derivative work, art 26 (5) states that the other co-authors may not be prevented from using the completed portion of that co-author's part of the work without prejudice to his or her rights as a co-author of the completed part of the work so used by the other co-authors.

Art 26 (2) provides that where a work is derived from an original work, the following persons shall be considered as co-authors of the new work in the DIFC:
(a) an author of a scenario in the new work;
(b) a person who makes an adaptation of a literary work in the new work;
(c) the author of dialogue in the new work; and
(d) the director of the new work.
Thay paragraph also gives those persons the right jointly to transmit or project the new work, despite any objection by the Author of the original work. Paragraph (3) makes clear that that shall be the case even if the author of the original work becomes a co-author of the derivative work.  The author of the literary portion of the new work may publish his or her portion as a separate work unless the other co-authors agree otherwise pursuant to art 26 (4).

Throughout the period of the agreed exploitation of an audio-visual work, an audio work or a visual work, the 'Record Producer' (as defined above) or the 'Producer of Audio-Visual Work' shall represent the authors of the work, and their legal successors, in any agreement for the exploitation of the work by virtue art 26 (6).  That right of representation shall be without prejudice to the rights of the authors of the quoted or adapted literary or musical parts of the work. Unless otherwise agreed in writing, the 'Sound Recording Producer' or 'Producer of the Audio-Visual Work' shall be considered as the publisher of the work.  He or she shall enjoy a publisher's rights with respect to the work and copies of the work within the limits of its permitted commercial exploitation.

There is yet another type of collaborative work for which the DIFC law provides, namely 'Collective Works'.  That is defined in the Table as
"a work created by more than one Author under the direction of a person or corporate entity who/which would oversee the publication of the Work in his/its name. The Authors would individually contribute to the common goal envisioned by that person such that it would be impossible to separate or allocate any distinction to the Work of each Author." 
The person who supervises the creation of a Collective Work has exclusive moral rights and economic rights over the Work under this Law unless agreed otherwise in writing with all other relevant persons involved pursuant to art 25 (1).

Employment
An exception to the rule that the author of a work is the first owner of the copyright in the work is where the author creates the work in the course of his or her employment.  Art 22 (1) of the IP law provides:
"If an employee creates a Work within the scope of employment pursuant to an employment contract or the employee uses the experience, information, instruments or materials of an employer in creating such Work, the copyright in the Work shall be owned by the employer."
Aer 22 (3) further provides that a work is deemed to be created within the scope of the author's employment in any of the following circumstances:
"(a)  the Work was created in the course of the normal duties of the employee, or in the course of duties falling outside the employee’s normal duties, but specifically assigned to the employee, and the circumstances in either case were such that the Work might reasonably be expected to result from the carrying out such duties; or
(b) the Work was created in the course of the duties of the employee and, at the time of creating the Work, because of the nature of his duties and the particular responsibilities arising from the nature of his duties he had an obligation to further the interests of the employer."
However, art 22 (2) provides that if a work is created by an employee that is not related to the business of an employer, and the employee is not using the experience, information, instruments or materials of the employer, then the copyright in such work will vest in the employee.  Art 22 (4) makes clear that the employer and employee can agree in writing to treat copyright in work created during an employment relationship differently.  For these purposes, art 22 (5) (b) states that reference to an employee shall include a worker employed by an employer by way of any type of work-for-hire arrangement.  Also, art 22 (5) (a) requires an employer and employee relationship to either involve work in or from the DIFC or to be subject to DIFC law.

Recognition of UAE and Foreign Copyrights
As I noted above, art 17 of the DIFC Intellectual Property Law provides:
"Notwithstanding Article 19, a Work recognised as subject to copyright protection under the Federal Copyright Law is recognised as valid for purposes of this Law and is protected and enforceable in the DIFC."
The Table defines "Federal Copyright Law" as Federal Law No. 7 of 2002 regarding Copyright and Related Rights, as amended by Federal Law No. 32 of 2006 and its implementing regulation, any other future amendment or Federal law with respect to Copyright."  Art 44 of the federal law provides:
"In the domain of conflict of laws the provisions of this law shall apply on the works, performances, phonograms, broadcasting programs related to foreigners on conditions of reciprocity, and without prejudice to the provisions of the international agreements applied in the State."
As the UAE is party to the Berne and Rome Conventions, a copyright or right in performance of a citizen, resident or corporation of a country other than the UAE is likely to be protected and enforced by the DIFC courts under art 17 of the DIFC law and art 44 of the federal law.

Term of Copyright
Copyright (as defined above as the exclusive economic rights of the owner) in a work subsists for the life of the author plus 50 years from 1 Jan of the calendar year following the author's death pursuant to art 39 (1).  In the case of a work of joint authorship, art 39 (2) provides that copyright shall last until 50 years after 1 Jan of the year following the death of the last surviving author.  If a collective work was created under the direction of a natural person, art 39 (3) (b) provides that copyright shall subsist for 50 years from 1 Jan of the year following that person's death. If it was created under the direction of a corporation, copyright shall for 50 years from 1 Jan of the year after publication.   

A right that appears to be equivalent to 'publication right' under reg.16  of The Copyright and Related Rights Regulations 1996 of the UK lasts for the following period as provided by art 39 (4):
"The economic rights in respect of Work that is published for the first time shall expire fifty (50) years after the death of the Author, starting from the first day of the calendar year following the year in which the Work was published for the first time."
This is the only reference to such right in the DIFC law but art 20 (3) of the federal law contains the following provision:
"The economic rights of the works published for the first time after the death of their  author expire after fifty years starting the first day of the next calendar year of its first publications."
The DIFC courts are likely to have regard to that provision of the federal law when construing art 39 (4) of the DIFC law.

Art 39 (5) provides for the copyright in a work that was published anonymously, or under a pseudonym, to subsist for 50 years from 1 Jan of the year following the year in which the work was published for the first time. However, if the identity of the author becomes known, the copyright in the work shall last for the life of the author plus 50 years from 1 Jan of the year following the author's death.

Copyright in a work of applied art subsists for 25 years from 1 Jan of the year following the date on which it was first published (art 39 (6)).  Copyright in a sound recording subsists for 50 years from 1 Jan of the year after it was first published.  If the recording had never been published, art 39 (10) provides for copyright to subsist for 50 years from 1 Jan of the year after the recording was made.  Copyright in a broadcast shall last for 20 years from 1 Jan of the year after the broadcast was made.

A right in a performance lasts for 50 years from 1 Jan of the year after the performance unless the performance was recorded. If the performance was recorded, the rights last for 50 years from 1 Jan of the year after fixation took place.

Exceptions
There are two kinds of exceptions:
  • works in which copyright cannot subsist; and
  • acts that do not constitute infringements of copyright.
Art 19 (2) provides that copyright does not extend to any of the following:
"(a) official documents, whatever the source or language, such as provisions of law, regulations, decisions, international conventions, court judgments, arbitrators’ awards and decisions issued by administrative committees in relation to court matters;
(b) news of current events and issues that are strictly media coverage."
However, there is the proviso that I mentioned when discussing originality that  "any of the foregoing is eligible for protection if there is an innovative element in the way in which it is compiled or arranged, or in the effort involved in creating the Work, in which case copyright protection shall extend to the compilation, arrangement or creative effort involved."  Though copyright may not subsist in a judgment, it appears that it could subsist in a law report, with a headnote, summaries of counsels' arguments and cross-references.  Similarly, it could subsist in a searchable database of judgments.

Art 40 (1) permits the following acts:
 (a)  performing the work in the family context or student gathering within an educational institution, to the extent that no direct or indirect financial remuneration is obtained; 
(b)  making a single copy of the Work for that person's exclusive personal use, provided that such a copy shall not hamper the normal exploitation of the work nor cause undue prejudice to the legitimate interests of the author or a copyright holder; 
(c) making a single copy of a computer program for archiving purposes or to replace a lost, destroyed or invalid original copy of the computer program provided that the single copy of the computer program shall be destroyed upon expiration of the right to use the computer program; 
(d) adapting a computer program, even if such adaptation exceeds what is necessary for the use of the computer program provided that: 
(i) the adaptation remains within the limits of the purpose for which consent for use of the computer program was initially granted; and
(ii) the adapted copy of the computer program shall be destroyed upon expiration of the right to use the computer program; 
(e) analysing a work, or making excerpts or quotations therefrom, for the purpose of criticism, discussion or information; 
(f) reproducing parts of a work for use in legal or administrative proceedings, to the extent required by such proceedings, provided that the source and the name of the author are quoted when doing so;
(g) reproducing extracts from a work, for teaching purposes in educational institutions, provided that such reproduction is: 
(i) within reasonable limits and does not go beyond its educational purpose; and
(ii) the name of the author and the title of the work are mentioned on each copy whenever possible and practical; 
(h) performing a work, playing a sound recording, or showing an audiovisual work before an audience consisting of teachers, students and others at an educational institution, provided that it is made:
(i) by a teacher or students in the course of the educational activities of the institution; or
(ii) at the educational institution by any person for teaching purposes; 
(i) making a single copy of a work, through an intermediary, with no intention of direct or indirect financial gain, and provided that:
(i) where the reproduced work is a published article, a short work or an extract of a work, or where the aim of reproduction is to satisfy the needs of a natural person, the copy will be used only for study or research purposes, and that a single copy is made at each occasion when doing so;
(ii) where the reproduction is made with the aim of preserving the original copy, or to replace a lost, destroyed or invalid copy and it was impossible to obtain a substitute copy under reasonable circumstances; and
(iii) where it is a reproduction of a work during a digital transmission of the work, or in the course of a process of reception of a digitally stored work, within the normal operation of the device used by an authorised person. 
However, art 40 (2) entitles an author or his or her successor in title to  prevent third parties from carrying out any of the following acts without his or her authorization after the publication of a work:
(a) reproduction or copying a work of fine, applied or plastic art unless it is displayed in a public place, or is an architectural work;
(b) reproduction or copying of all or a substantial part of the notes of a musical work; and
(c) reproduction or copying of all or a substantial part of a database or computer program.

On the other hand, it appears from art 40 (3) that an author or his or her successor in title may not prevent newspapers, periodicals or broadcasters from doing any of the following:
(a) publishing excerpts from a work which were legally made available to the public, and his or her published articles on topical issues of concern to the public opinion, unless the author has prohibited such publication when publishing the work, and provided that the source, the name of the author and the title of the work were mentioned;
(b) publishing speeches, lectures, opinions or statements delivered in public sessions of the parliament, legislative or administrative bodies or scientific, literary, artistic, political, social or religious meetings, including statements delivered during public court proceedings, provided that the author, or his or her successors in time, shall have the right to make collections of such works, for which he shall be entitled to claim authorship; or 
(c) publicizing extracts of an audio, visual or an audiovisual work made available to the public in the course of covering current events, provided that author, or his or her successors in title, shall retain the exclusive right to compile any of those works into volumes attributed to the author.

Art 40 (4) makes clear that rights in performances are subject to the same exceptions.

Moral Rights
Moral rights in the DIFC are perpetual and inalienable.  Art 27 (1) of the IP law provides:
"The Author and, where applicable, his heirs shall enjoy perpetual and inalienable moral rights to a Work, which include the right to:
(a) publish the Work for the first time and determine the date of publication and manner in which it is published;
(b) be credited as the Author of the Work;
(c) make any amendments to the Work whether by change, revision, deletion or addition;
(d) object to derogatory treatment of a Work including modification of the copyright therein, distortion, misrepresentation, or any other amendments to the Work which may harm the reputation of the Author; and
(e) withdraw a Work from circulation in the case of any development or circumstance that would justify the withdrawal, in which case, the Author shall be obliged to fairly compensate any person who suffered damages from exercising this right."
According to art 27 (2) 'derogatory treatment' for these purposes includes any addition to, deletion from or alteration to, or adaptation of a work.  However, the same article states that this rule does not apply to a translation unless the translator neglected to refer to the location of any such change or the translation causes damage to the reputation of the author or distorts the contents of the work,

Performers also enjoy perpetual and inalienable moral rights in the DIFC under art 28.  These rights are to have his or her performances attributed to him or her and to prevent any modification, distortion, misrepresentation or amendment of his or her work that would negatively affect his or her honour or reputation as a performing artist.

Transactions relating to Copyright
Copyright and rights in performances (that is to say, the economic rights but not the moral rights of authors and performing artists) can be assigned, licensed or transferred by operation of law subject to the following limitations. 

Art 34 (1) stipulates that any such assignment must be in writing and include reference to the right to be assigned.  The assignment should be precise and comprehensive because art 34 (2) states that an author, copyright holder or related rights holder (that is to say, performing artists, producer of sound recordings or broadcasting organizations) shall retain all residual rights not expressly assigned.  An author can assign future copyrights but not the total body of his or her future works. Any assignment that purports to do so shall be void under art 38.  Art 36 (1) states that the transfer of a painting, manuscript or some other original work by sale, gift or otherwise shall not imply the transfer of any copyright in the work, but art 38 (2) adds that the person who acquires  the work is not bound to enable the author to reproduce, communicate or display any copy of the work unless the parties agreed to do so.

A copyright or a right in a performance may be licensed pursuant to art 35 (1) provided such licence is in writing and includes a reference to the right which is to be licensed, the duration of the licence, the consideration and place of the licence.  Such a licence may be exclusive or non-exclusive (art 35 (2)).  Software leases are a type of licence.   Art 33 states that software may be leased in the DIFC only if it is intrinsically intended to be leased. Art 35 (3) enables end-user licence agreements for software or databases to be fixed on a DVD, shrink-wrap packaging or pop-up screen when the program or database is loaded or run and users shall be bound by such licences.   As with assignments, art 35 (4) makes clear that any rights not expressly disposed of under the agreement are retained by the licensor.

The copyright (again, the economic rights of the author) in a published work may be seized by the court under art 35 (1) but not the copyright in an unpublished work of a deceased author unless it can be proved conclusively that the author had intended to publish the work before his death (art 35 (2)).

Collection Societies
A 'Collection Society' is defined in the Table as a society licensed by the UAE Ministry of Economy pursuant to the Federal Copyright Law and the Ministerial Decision No. 133 of 2004, which provides management of copyright and neighbouring rights on behalf of its holders.  A copyright or related rights holder may assign his or her rights to a collection society under art 41 (1) to manage those rights or license other persons to exercise those rights.  The society is required by art 41 (5) to obtain a licence from the UAE Ministry of Economy or from the DIFC under its licensing regulations.  It must keep a register of its members and particulars of the works in its repertoire.  It must notify the Ministry of any changes in its register and comply with the Ministry's decisions.  Collection society contracts fall within the jurisdiction of the DIFC courts by virtue of art 41 (2). Collection societies may not discriminate in their licensing terms but allowing a discount at a venue where a performance is to take place or for an educational or cultural event that does not generate direct or indirect income shall not be regarded as discriminatory.

Prohibited Acts
As an alternative to civil proceedings in the DIFC courts, a copyright or related rights owner whose rights are infringed may complain to the Commissioner of Intellectual Property.   The Commissioner has power under art 59 (3) (a) to receive and decide all complaints or disputes in connection with the law of the DIFC and impose fines for non-compliance.

Art 42 (1) provides:
"The following is prohibited in the DIFC and any person doing business or operating in or from the DIFC that fails to comply with this Article shall be subject to a fine:
(a) selling, renting or putting in circulation under any form, a Work protected under this Law, without prior written authorisation from the Author, copyright holder or a Related Right Holder;
(b) knowingly copying, selling, offering for sale, circulating or renting out, a Work protected under this Law;
(c) knowingly imitating, selling, offering for sale or circulating, renting out or exporting Work published in a foreign country;
(d) disseminating, through computer networks, the Internet, information networks, communication networks and other means of technology, a Work protected under this Law, without prior written authorisation from the Author or a Related Right Holder;
(e) manufacturing, assembling or importing for the purpose of sale or renting any device, tool or implement especially designed or made to circumvent a technical means of protection, such as encryption, used by an Author or a Related Right Holder;
(f) removing, neutralising or disabling any technical protection device used by an Author or a Related Right Holder; or
(g) infringing any moral right, economic right, copyright or related rights provided for in this Law."
Schedule 3 sets out the fines that the Commissioner can impose.   Infringements under art 42 (a), (b) or (c) attract fines of US$25,000.  Infringements under art 42 (d), (e) and (f) fines of US$40,000. Infringements of economic rights under art 42 (g) also attract fines of US$40,000 but infringements of moral rights under art 42 (g) will attract fines of only US$20,000.

Conclusion
Because of the differences between  Part 3 of the DIFC Intellectual Property Law and the copyright laws of other common law jurisdictions, this will not be easy for judges and practitioners from those countries to construe or apply.  I shall, therefore, be looking out for any regulations that the DIFCA directors may make under art 60 (1) and any copyright or related rights cases that may come before the DIFC courts or the Commissioner.

Anybody wishing to discuss this article may call me during office hours on +44 (0)20 7404 5252 or send me a message through my contact form.

Sunday, 7 June 2020

The New DIFC Intellectual Property Law - Designs


Standard YouTube Licence

Jane Lambert

On 21 Nov 2019, a new intellectual property law known as Intellectual Property Law DIFC Law No 4 of 2019. came into force in the Dubai International Financial Centre.  I wrote an introduction to, and overview of the new law on 11 Dec 2019 and discussed its provisions on patents and utility models (known as "utility certificates" in the DIFC) in The New DIFC Intellectual Property Law - Patents and Utility Certificates on 9 Jan 2020. In this article, I discuss Chapter 2 of Part 2 of the Law on General Rules on Industrial Drawings and Industrial Designs.

Design is important to Dubai   A report commissioned by The Dubai Design & Fashion Council and the Dubai Design District expected the design sector, which includes architecture, fashion, graphic, interior and product design, to grow by 6% a year between 2016 and 2021.  The Dubai government supports designers through the Council by providing advice and information on intellectual property and other legal services.  Well before the new Intellectual Property Law came into force, the Council agreed with the DIFC Disputes Resolution Authority to incorporate a DIFC choice of law clause into their contracts and designate the DIFC Dispute Resolution Authority for the resolution of disputes (see Designer Courts  12 March 2018 DIFC Courts press release).

The new DIFC design law is compressed into three short articles:
  • Art 14 confirms that the registration of Industrial Drawings and Industrial Designs with the UAE Ministry of Economy is recognized in the DIFC and that the rights conferred by registration will be enforced in the DIFC;
  • Art 15 sets out the rights conferred by registration; and
  • Art 16 applies the provisions on entitlement and infringement in patent and utility certificates law to Industrial Drawings and Industrial Designs.
The table in para 3 of Sched 1 to the Law defines an Industrial Drawing as:
"Any innovative creation of lines and colors which generate a product that can be used in any industry or craft and in respect of which the Ministry has issued a deed of protection."
The same table defined an Industrial Design as:
"any innovative three-dimensional shape that can be used in industry or craft and in respect of which the Ministry has issued a deed of protection."
Applications to register Industrial Drawings and Industrial Designs are made to the Ministry.  The patent application portal appears to indicate that it is possible to apply for registration through that page but it has not been possible to obtain confirmation through the chat facility.

As art 16 applies the provisions of arts 9 to 13 to Industrial Drawings and Industrial Designs, the rules as to entitlement and employees' compensation are4 the same as for patents. Readers are referred to my article on patents and utility certificates of 9 Jan 2020.

Art 15 (1) of the Law confers on the registered proprietor of an Industrial Drawing or Industrial Design the following exclusive rights:
"(a) using the Industrial Drawing or Industrial Design in manufacturing any product;
(b) using, selling, or offering for sale any product relating to the Industrial Design or Industrial Drawing;
(c) importing any product using an Industrial Drawing or an Industrial Design; or
(d) possessing an Industrial Drawing or an Industrial Design with intention to use, or offer for sale, or sell the same."
Art 15 (2) makes clear that the rights referred to in art15 (1) shall be restricted to acts that are undertaken for industrial or commercial purposes and shall not extend to acts relating to a protected product after its sale.  This is similar to art 8 (2) for patents and utility certificates and seems to indicate the incorporation into DIFC law of something like the US first sale doctrine.

The rules on infringement, defences to patent infringement and reversal of,  the burden of proof that apply to patents and utility certificates under arts 9 to 11 are applied to Industrial Drawings and Industrial Designs by art 16. References in those articles to "patents" or "utility certificates"are deemed to refer to "Industrial Drawings" or "Industrial Designs" as the case may require.  Once again, readers are referred to my article on patents and utility certificates.

Anyone wishing to discuss this article or DIFC design law generally should call my clerk on  +44(0)7986 948267 or send me a message through my contact page while this emergency continues, I shall gladly respond by phone, VoIP or email,

Wednesday, 20 May 2020

Transformation of the Legal Services Industry in Saudi Arabia - Women in Mediation





















Jane Lambert

Yesterday I attended a webinar organized by the Abu Dhabi Global Markets Arbitration Centre and Phoenix Advisors Ltd. on  "Transformation in the Legal Industry" in Saudi Arabia.  The webinar has been recorded and may be viewed here,  It is part of a series of webinars that considers alternative dispute resolution, technology and third party funding in the legal systems of several countries around the world.  The series started in India and will consider legal services in Lagos, New York, London and Abu Dhabi.

Although Saudi Arabia is an important country very little is written about its legal system.  The few publications in English that do exist are not very enlightening.  I once had the pleasure of speaking at the Arab-British Chamber of Commerce International Intellectual Property Conference "Combating Transnational Intellectual Property Crime" in London in 2013 where I had the pleasure of meeting one of the first women to be called to the Saudi Arabia bar as well as some of the kingdom's judges, officials and practitioners.  One of the attendees on the mediator training course that I attended in 2000 was a Saudi lawyer.  That was just about the limit of my previous personal experience of the Saudi legal system before the webinar.

One of the first speakers in the webinar was Rozana T AL Tayyar who founded Taswea, a mediation service in Saudi Arabia.  According to its website:
"TASWEA, previously known as “The Mediation Gateway”, was established in 2015 to promote amicable conflict resolution within the business community in Saudi Arabia to support business sustainability and relationships. Rozana ALTayyar, founder of TASWEA, has 18 years of overall experience in the field, achieving a 70% success rate in 2018."
Ms Al Tayvar reported that mediation is well established in Saudi Arabia and many of the mediators are women.   She mentioned that Saudi Arabia was one of the first countries to sign the Singapore Convention on Mediation which the UK has not yet done.

Bearing in mind that I had noted that Saudi women had only recently been allowed to practise law in their country (see Saudi Women can now practise Law 14 Oct 2013) I found Ms A; Tayvar's observations surprising but encouraging.   I asked a question about the sort of work that was referred to mediation generally and more particularly the sort of mediation work that was facilitated by women,  Ms Al Tayvar replied that all sorts of work were mediated and women handled every kind, In answer to a supplemental question, she explained that a legal qualification is not required of mediators.  She explained that she had acquired considerable expertise in financial services and that parties approached her because of that expertise.

Another speaker said that there was a tendency for mediators to adjudicate as well as mediate which is something that we are reluctant to do in this country.  The reasoning in Saudi Arabia seems to be that the mediator's expertise in the subject matter of the dispute qualifies him or her to determine issues in the dispute as well as catalyze negotiation.

Mediation was just one of many topics discussed yesterday.  Some questioners were interested in the use of blockchain technology, smart contracts and artificial intelligence.  There were polls on the effect of coronavirus on legal practice and the factors likely to attract clients which included creative fee arrangements.   I would have appreciated a bit of background on the legal system in the kingdom and how it works in practice but there is only so much that can be achieved in an hour's webinar.

Anyone wishing to discuss this article or any of the topics mentioned in it should message me through my contact page. I shall be glad to reply by phone, VoIP or email.