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.

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

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.

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. 

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.

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.'

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).

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.

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.

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.

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