23 March, 2018
Myanmar's long-anticipated IP laws are making progress, with the four bills having been approved by the National Parliament (Amyotha Hluttaw) and endorsed to the People's Parliament (Pyithu Hluttaw) on 15 February 2018. All four bills – on copyright, trademarks, industrial design and patents – are expected to be passed into law imminently.
As regards intellectual property in Myanmar in general, copyright is unique because it is covered under the century-old Copyright Act (1914). There are no such laws currently covering patents, industrial designs or trademarks.
However, the dated Copyright Act has many deficiencies that have long rendered it inadequate to navigate the complex legal issues and transactions involving modern creative works. Foreign works are afforded no protection, which is particularly problematic for media delivered over the Internet. Entirely uncontemplated is the existence of computer programs, causing confusion about whether they are protected by copyright at all in Myanmar.
The new copyright bill seeks to address these and many other gaps. Below are some key features we expect to see in the final version of the law.
Updated Terms and Expanded Coverage
The most significant changes in the new law will be fundamental, including an updated definition of terms:
- performance will now include physical performances as well as performances fixed in some media through which the performance can be seen or heard, including media or a computer program
- broadcasting will now cover communication by wired or wireless transmission, far beyond any technology that was available in 1914 and thus not contemplated by the current law
- computer program is now defined and included as a work of writing
- related rights, technological protection measures and collective management organizations are contemplated and defined
and expanded coverage of works to be protected:
- foreign works by authors, artists or producers from member states to international conventions or treaties relating to IP, aligning the country with international standards for cross-border copyright protection
- computer programs, which will be expressly protected and subject to specific limitations on reproduction and adaption
- books, pamphlets, poems, novels, articles and other writings
- speeches, lectures, addresses, sermons and other oral works
- dramatic, musical and audio-visual works
- works of architecture
- photographic works
- works of fine art such as sketching, sculpting and lithography
- works of applied art such as textile designs, jewellery, handicrafts, etc.
- works relating to geography, topography, architecture or science
- derivative works such as translations, adaptations and collections of literary or artistic works by selection or arrangement, without prejudice to the pre-existing works
These fundamental changes will serve as the foundation on which to collectively modernise the framework of copyright protection in Myanmar.
Economic and Related Rights
Copyright will be distinguished from economic rights and other related rights, such as the moral rights of authors, rental rights and the rights of performers, broadcasters and other rights owners. The ownership, transfer and limitation of economic rights is also given particular attention.
Economic rights to works made for hire in an employer-employee relationship will be held by the employer as a general rule unless a different agreement has been reached; such rights to audio-visual works will be held by the producer, again barring any alternative arrangement. These general rules will be helpful in navigating commercial transactions involving copyrighted works like music, TV shows and movies.
Term
Protection for copyright and other related rights will be in force during the lifetime of the author, and until fifty (50) years after the author's death. For works with more than one author, these protections will apply to the last remaining co-author. Moral rights will not expire.
Registration
The new law makes it clear that copyright vests in creative works entirely upon creation, regardless of form of expression and without need for registration.
However, the law will also include a voluntary registration framework that will allow rights owners to register ownership of a copyrighted work if they choose to do so. We understand this voluntary registration option to be similar to a recordal of ownership, and owners of registered works will be able to request a certification confirming such registration, which can be used as prima facie proof of ownership of the work.
We expect rules and regulations to be issued detailing the requirements and procedures for voluntary copyright registration. In the meantime, covered works will be protected under the law whether they are registered or not.
Collective Management
The law will allow the establishment and registration of collective management organisations. These organisations will have the authority to administer the rights assigned to them by authors or artists, including the rights to collect remuneration for the use or distribution of covered works and to coordinate with foreign collective management organisations.
Enforcement
The new law will enhance enforcement options available against copyright infringement by allowing civil or criminal actions for the protection of copyrights and related rights. Injunctive relief will be available and repeat infringers will receive higher penalties. Any attempt to commit infringement, abet infringement or circumvent technological measures used to protect copyright will also be punishable. This would align copyright protection in Myanmar with standard protection available in other jurisdictions.
Transition
When passed, the law will expressly repeal the Copyright Act of 1914, and some rules have already been laid out to facilitate the transition. Copyrighted works with unexpired terms under the old law will automatically carry over under the new law. The rights of performers, producers and broadcasting organisations will be granted retroactive protection.
It should be noted that the draft copyright bill includes a provision allowing for a two-year transition period following passage of the law, within which the distribution of unauthorised copies of protected works will still be permissible. The purpose of this particular provision is unclear, but we suspect that it is intended to allow time for the authorities to educate the market about copyrights and/or allow some infringers to voluntarily cease their activities. That said, it remains uncertain whether this transition period provision will make it to the final version of the law in some form and, if so, how it will affect implementation of the law in the short term.
With the passage of the copyright bill forthcoming, Myanmar is closer than ever to having updated copyright protections in place. Clients in the entertainment, telecommunications, media, software and information technology industries in particular should start becoming familiar with the new law and get ready to exploit new opportunities in Myanmar made available with its passage. We will continue to provide further updates on the copyright bill and the other IP bills as developments unfold.
For further information, please contact:
Jo Daniels, Partner, Baker McKenzie
jo.daniels@bakermckenzie.com
See our full Doing Business In Myanmar Report via this link. https://www.investingmyanmar.com
