The UAE witnessed recently the largest legislative reform in the history of the UAE by enacting more than 40 different decree laws and amendments in 2021. Following to the new Industrial Property Law published earlier in May 2021, the two most recent IP laws were enacted are: The Federal Decree Law (36 of 2021) in relation to Trademarks “Trademark Law”, and Federal Decree Law (38 of 2021) in relation to Copyright. Both Decree Laws were gazetted in the annex of Official Gazette No. 712 (Supplementary) dated September 26, 2021, with the final text of both laws being made available to public when the Cabinet released the set of federal laws in November. The new Trademark Law and Copyright Law will come into force on January 2, 2022. In summary, the new federal IP laws published in 2021 are:
Whilst the implementing regulations of the above laws are still under preparation and could take time before being published, we understand the above new Federal Decrees will become into force and continue to consider the applicable provisions in the existing implementing regulations for each law.
This was issued by the government of UAE after many years of receiving comprehensive feedback from brand owners and trademark professionals. It also seems to come after the UAE legislator opted to codify many of the well-established doctrines in trademark disputes (i.e. caselaw). Furthermore, it came after the UAE government decided to enter Madrid System and adopted to international trademark registration model in parallel with the national filing system. Whilst we will aim to publish a separate article on the Trademark Law, it is noteworthy to give a provide a summary of some interesting and essential changes adopted within this new law:
The abovementioned summary reflects on some of essential new concepts and/or changes introduced in the Trademark Law. A more detailed analysis and additional points will be clarified in the next piece of publication that we intend to prepare in the future as we aimed to keep this article to the Federal Decree Law (38 of 2021) in relation to Copyright.
Federal Copyrights Law No. 38 of 2021 in relation to Copyright & Neighboring Rights
As referred earlier, the UAE has issued a new Federal Law No. 38 of 2021 concerning Copyright & Neighboring Rights (the “New Law”) that will replace the current Federal Law No. 7 of 2002 (“The 2002 Law”). The New Law will come into force on the 2nd of January 2022, and it has introduced significant changes that aim to provide a more adaptable framework in an increasingly digital environment.
The New Law represented a major overhaul of the 2002 Law and introduced a number of new rights and exceptions. In this article, we decided to give readers highlight on the key reforms or changes that are expected to have the most impact on the day-to-day operations of businesses. The content is divided into the following headings that should give a brief analysis when comparing the New Law vs 2002 Law:
Scope of Protection
The scope of protection is the core part of the Copyrights Law. Article (2) of the 2002 Law lists twelve statutory types of works which are protected as copyright as follows:
(1) Books, booklets, articles and other literature; (2) Computer software and its applications, databases and similar works defined in a decision to be issued by the Minister; (3) Lectures, speeches, sermons and other works of similar nature; (4) Plays, musicals and pantomimes; (5) Musicals accompanied by dialogue and musicals which are not accompanied by dialogue; (6) Audio and video work or audio visual work; (7) Architectural work and architectural plans and drawings; (8) Work involving drawing, painting, sculpturing, etching, lithography, screen printing, relief and intaglio prints and other similar works of fine art; (9) Photographic work and the like; (10) Works of applied art and plastic art; (11) Charts, maps, plans, 3-D modeling for geographical and topographical applications and architectural designs etc; (12) Derivative works, subject to the protection afforded to the works upon which they are based.
The New Law added a new copyright-protected work to paragraph (2) of Article (2) (namely, Smart Applications). The amended paragraph (2) of Article (2) will cover “Smart Applications, computer software and its applications, databases and similar works defined in a decision to be issued by the Minister of Economy”. The interpretation of Article (2/2) of the 2002 Law and its application in judicial practice has been widely discussed in disputes related to mobile and/or smart applications. Therefore, the New Law provides a response to the debates brought about by the technology development in addition that it provides a more precise distinction between compute programs and smart applications. It comes inline with the UAE government to lead the region and introduce a very innovative provision in its IP legislations and assert the country’s strategy to build a knowledge and technology-based economy. Eventually, the provisions of the Copyright Law - which are related to computer programs and the applications related to computer programs - are applicable on smart applications under the New Law.
Moral Rights covered by Copyright
Article (5) of the 2002 Law specified four moral rights that are covered by Copyright, and which cannot be assigned or waived, as follows: (1) the right to publish the work for the first time; (2) the right of attribution; (3) the right of integrity and (4) the right to withdraw the work from circulation, in case serious justifiable reasons occur.
Under the 2002 Law, the author and his successors were granted to exercise the right to withdraw the work from circulation through the Court in the UAE after the payment of a fair compensation to the parties that gained the economic/financial rights of exploitation of the work. If the author or his successor fail to pay the fair compensation amount specified by the Court, no judgment will be enforced in relation to the withdrawal of the copyrighted work from circulation.
The New Law has granted the author and his successors the same moral rights. However, the New Law has not imposed on the author or his successors to pay any fair compensation to the party that gained the economic/financial rights of exploitation of the work in order to exercise the right to withdraw the work from circulation. Further and in consideration of practical impact, the New Law has excluded smart applications, computer program and applications related to computer programs from the implementation of such withdrawal rights. Another step to let the investors in computer applications, web development, mobile and smart applications to feel confident and more empowered to invest in this field.
The Assignment/Disposal of Future Copyrights
The 2002 Law deems any disposal of the author’s future intellectual rights in more than five works to be null and void, which imposed obligations on employers to obtain deeds of assignments from their employees, contractors or service providers once they have created any work in the context of employment, contracting or service agreements.
Under the New Law, the disposal of the author’s future intellectual rights is still deemed null and void. However, the New Law explicitly stated that there are exceptions where the author would be entitled to the conclude agreements in relation to his future works in accordance with the provisions of the Implementing Regulation of the New Law.
The exception cases and numbers of future works - subject of the exception – will be specified in the Implementing Regulation of the Copyright Law which will be issued in the near future.
Exceptions to the Default Rule related to Ownership of the Copyright Work
Under the 2002 Law, the default rule is that ownership of copyright in a work initially vests in the author who created the work, even if the works are commissioned by a client, and therefore, clients used to modify this position through signing contracts whereby the creator assign its economic rights in the copyright to clients.
An exception to this rule is the “work made for hire” and this exception has been introduced in the New Law which provides that ownership of a work made for hire belongs to the party that hired the individual who created the work. There are two situations set out in Article 28 of the New Law, in which a work may be considered as having “made for hire”:
Under the New Law, and subject to any agreement to the contrary, the employee will remain the default owner of the copyright in the work created during his employment if (1) the work is not related to the scope of his employment and not related to the business or activities of the employer and (2) the work is created or achieved without utilizing the employer’s documents, experiences and resources.
The Default Ownership of Copyright in Architectural Designs
Architectural Designs are also being addressed practically in the New Law. Work for hire is being explicitly concluded from delivering such works. In fact, the Architectural Designs are protected in the Current Law and the New Law under “Architectural works, engineering drawings and layouts” and under a category of works that include” Illustrations, maps, sketches, and three - dimensional works relative to geography, topography or architecture and others”. Nevertheless, the New Law introduced new provisions that state that ownership of copyright in Architectural Designs vests in the Owner of the Building and not the original person who created the Architectural Design, subject to any agreement to the contrary. This is indeed a very important game changer to the industry which will set essential limitation on the architectural works, ability to reutilize their designs and/or enforce their rights against third parties. Furthermore, the New Law permitted the Owner of the Building to modify or alter or improve the building which is subject of the copyrighted Architectural Designs.
Protecting Privacy of Photography and Audio/Visual Recordings Subjects
Besides photographs, the New Law grants protection to individuals who appear in audio or visual recordings. The New Law provides that a photograph or audio recording or visual recording featuring an individual may not be kept, exhibited or published or distributed without the consent of the individual appearing in the photograph or recording. There are exceptions to this general rule if the photograph or recording was made during public events or public activities that are made available to public in a public place or if the publication was authorized by the public authorities as a service for public interest. However, in each case, the exhibition or circulation of the photograph or recording must not prejudice the position of the person who is the subject of the photograph or recording.
The New Law, also, entitled the individual appearing in the photograph or recording to publish, use and exploit the photograph or recording – without the consent or authorization of the photographer or the recorder of the audio or visual recording – subject to any agreement to the contrary.
Therefore, regardless of the fact that the copyright in the photograph or audio recording or visual recording belongs to the photographer or the recorder by default, where an individual is captured in a photograph or recording, consent of the individual may have to be obtained for any use or exploitation of the work in order to comply with the Copyright Law as well as Data Protection Laws.
Fair use. New Exceptions or Limitations to Copyright Protection
Legal debates related to certain exceptions and restrictions of copyright and related rights in the context of uses of copyright-protected works are tackled and adapted to the cross-boarder and digital environment under the New Law. For example, the reproduction of copyright protected work is currently permitted in the following instances:
The additional exceptions shall apply if access to the work was lawful, which implies that the exception will cease to apply of the user if found to have access to an unauthorized or unlicensed copy of the work.
Copyright protection- Exceptions for Disabled Users and entitlement to fair use
UAE is a leading country in humanitarian initiatives locally and internationally. Not only the contribution that the UAE gives to residing people on its soil who come from more than 180 different nationalities is undeniable, the country also supports foreign communities and countries on all possible aspects. The way of support is both financially and morally. For instance, the UAE came with the original term “People of Determination” to reflect its innovative style to deal with a group of people that have a physical or mental impairment. This term is in public use and almost each and every governmental authority refers to this term when they provide their services or address any published communications.
The New Law came to build on the country’s strategy to ensure a proper protection and fair use is provided to this group of people in the society. It introduced new provisions that show humanistic care for disabled users by extending fair use and copyright exceptions to the provisions of works in an accessible format that disabled users can perceive. The New Law defined “Disabled Person” – who benefits from such exceptions – as “a person with blindness or visual impairment to an extent which cannot be improved to become equivalent to the vision of the person without impairment, or the person who is unable to read, hold a book or use the same for reading due to physical impairment, without considering any other cases of disabilities”, while the New Law defined and referred to the “Accessible Format Copy” of the work as “an alternative format or copy that has been produced in order to permit a disabled person to have feasible and better access to a work to the same degree as someone without visual impairment or physical impairment that prevent the person from reading”.
The New Law permitted Disabled Person to make copies of the Accessible Format Copy for the personal use of the Disabled Person who needs the Accessible Format to enjoy the work to the same degree as someone without visual impairment or physical impairment that prevent the person from reading. Further, the New Law permitted an authorized body to make and supply Accessible Format Copy of works for the use of Disabled Persons, without the consent of the copyright author, provided that the authorized body must have lawful possession or access or use of the work and provided that the authorized body must carry out non-profit activities.
The provisions of the New Law are explicit that the Accessible Format Copy is intended to meet the needs of Disabled Persons and should be appropriate for the person’s disability, and therefore, a person who is not disabled should not receive an Accessible Format Copy in addition that a person with disability – other than visual impairment or physical impairment that prevents the persons from reading – shall not receive an Accessible Format Copy.
The conditions that shall be fulfilled by the authorized body - which will be permitted to make and supply Accessible Format Copy – will be specified in details in the Implementing Regulation of the New Copyright Law which will be issued in the near future.
The Neighboring Rights
The neighboring rights under the 2002 Law and New Law include the rights of performers, producers of phonograms and broadcasting organizations. The New Law added different economic rights to performers and producers of phonograms in order to improve the neighboring right system and the added rights are of significance to businesses in the Media Industry, as follows:
The New Law introduced new provisions on the establishment of a committee called “The Grievances Committee for Copyrights & Neighboring Rights” at the Ministry of Economy which will be headed by a specialized judge who will be nominated by the Minister of Justice, along with two specialized member who will be appointed by the Minister of Economy.
The Committee will be competent to hear and decide on all grievances filed by any interested party in relation to any decisions issued by the Ministry of Economy in relation to copyrights or neighboring rights. The decisions issued by the Grievances Committee for Copyrights & Neighboring Rights will be subject to appeal before the Competent Court within 30 days from the date of being notified with the decision. The Competent Court is the Federal Appeal Court as defined in the New Law which should help parties to expedite their legal proceedings and overcome the necessity to go through First Instance Court.
The New Law explicitly confirms the capacity of the Grievances Committee as the competent body to look into grievances or disputes against decisions issued by the Ministry of Economy in relation to copyrights or neighboring rights. Moreover, an aggrieved party from a decision issued by the Ministry of Economy in relation to copyrights or neighboring rights cannot proceed to the Courts in the UAE prior to presenting the grievance to the Grievances Committee.
Increased Sanctions and Penalties for Copyright Infringement
The New Law increased penalties associated with copyright infringement compared to the 2002 Law. We prepared the below table to ease on the reader the ability to compare between sanctions and notice the difference between the New Law and 2002 Law:
Other Miscellaneous and worth mentioning Changes
Apart from the changes highlighted above, there are some other changes in the New Law include the following:
The above amendments introduced in the New Law, together with changes and repeal in other aspects and provisions of the Copyright Law, are solid proof of the progress and continuous evolve in the Copyright legislation of the UAE. Different conditions, procedures and explanations will be further detailed in the Implementing Regulation which is expected to be issued in the near future.
If you wish to obtain more information on any of the provisions or changes discussed in this article or any other provisions of the New Law, please feel free to contact Munir Suboh at (Munir.firstname.lastname@example.org) or Amala Atieh at (email@example.com).