Intellectual Property / IT Law

Identifying & Prioritizing IP Rights

To ensure that intellectual assets are well protected, a startup should first thoroughly analyze its business plan, strategy and products, and effectively identify each possible IP right/class that it needs to register. This is crucial as a failure to anticipate a future development may result in an unregistered IP right, which may result in loss of profits from a specific product in the future. So, every possible IP right of the startup should be identified as a first step, then the most vital ones depending on the budget of the startup should be protected as a second step.

IP rights fall under various categories. Some IP rights such as patents, utility models, trademarks, designs need to be formally registered, whereas IP rights for copyright, such as artistic works and source codes, can arise automatically. There are, of course, alternative options for such copyrights, where an optional registration method is available as per the Law, which allows the right holders to register works protected under the Law to the registry system administered by the Ministry of Culture and Tourism. However, it should be noted that simply registering a copyright via this method does not grant a right over the works, instead gives the author an advantage over third parties in case of a conflict regarding the ownership of the work.

Another important aspect to take into consideration is to have a clause for transfer of IP rights created by the Employee to the company during the employment period. This is crucial as most IP related intra-company disputes arise from the products/technologies developed by the company employees, during their employment duration. Therefore, all employment contracts should have special clauses ensuring that any product, technology or idea developed by any employee during their formal employment duration shall be deemed as the company’s IP.

Transferring IP Rights

IP can also be transferred by using license agreements. Startups have the chance to get a license to use IP belonging to other companies and grant licenses for other companies to use their IP, allowing them to further monetize their products/technology. License agreements can be exclusive or non-exclusive for a certain time period and also for a certain region. This is especially important for apps or software developed externally via third parties, as the developer (this can be an external contractor, a freelancer etc.) will initially acquire the IP rights to the app/software (due to him/her being the developer). Therefore in these cases, the startup should construct the agreement with the third party developer to ensure that the IP rights concerning these apps/software are transferred to the startup from the developer, as a failure to do so may have grave implications in the future, in terms of ownership and monetization rights.

Trade Secrets & Non-Disclosure Agreements (NDA)

Although securing IP rights is a crucial part of securing the future of a startup, investors should also be aware that not every idea and project can be patented or otherwise registered in terms of IP (either due to the idea/project not satisfying the eligibility criteria for IP registrations, or funding/financial concerns). Disclosure of such unregistered IP, such as trade secrets and/or knowhow, can be very critical for the survival of a startup, and since these cannot be protected with IP rights, they should instead be secured via non-disclosure agreements and confidentiality clauses within agreements signed with third parties and company employees. Non-compete and non-solicitation clauses are also equally important, however, startups should also consider the provisions of the Competition Law when including these non-compete clauses within agreements.

Conclusion

Underestimation of IP strategy is one of the biggest mistakes startups can make, as it may have serious economical ramifications. Therefore IP registrations and securing these rights must be considered and included within the initial investment cost and the budget should always take the costs for these into account, at the initial company formation stage. Late application for IP can cause irreparable harm to the company, especially if another party secures these IP rights before the startup can file for an application.  In order to avoid such problems, it is extremely important to consult an IP professional before deciding the IP strategy of the start up.

Emir Aksoy LL.M, LL.M. IP

Scope of Copyright Protection

Copyright protection in Turkey is regulated under the Intellectual and Artistic Works Law No. 5846 (hereinafter will be referred as “the Law”). Copyright arises automatically on creation of work, whereas “work” is defined as any intellectual or artistic product bearing the characteristic of its author, which are works that fall under the categories below:

• scientific and literary
• musical
• fine arts
• cinematographic

These four categories are numerus clausus, and are therefore listed exhaustively.  Even though the categories are limited there are subcategories for each category. For example, computer software falls under the subcategory of scientific and literary works as per Article 2 of the Law.

Turkey is also member to numerous international agreements related to Copyright Law, which are listed below:

Turkey is also member to numerous international agreements related to Copyright Law, which are listed below:

• Berne Convention for the Copyright Protection of Literary and Artistic Works;
• the TRIPS Agreement;
• the Paris Convention;
• the Geneva Convention for the Protection of Producers of Phonograms against Unauthorized Duplication of Their Phonograms;
• the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations 1961;
• WIPO Copyright Treaty;
• the Madrid Protocol; and
• the European Convention on Cinematographic Co-Production.

Registration of Copyright Protection in turkey

Registration of copyright protection is not a mandatory requirement for the establishment of rights, nevertheless according to Article 13 of the Law for movies and phonograms as well as computer games there is a mandatory registration requirement in order to prevent the violation of rights, there is also an optional way to register other types of works protected under the Law to the register administered by the Ministry of Culture and Tourism.

The Ministry cannot be held responsible for these procedures, which are declaration based, however fraudulent declarations shall be subject to the legal and criminal sanctions set out in this law. The above mentioned ways to register your copyright does not grants a right over the works, but gives the author an advantage over the other parties in case of a conflict in the ownership of the work.

According to Article 81 of the Law, it is compulsory to affix banderoles on the reproduced copies of musical and cinematographic works and on non-periodical publications (such as books). It is also compulsory, upon the request of the author or right holder, to affix banderoles on the reproduced copies of other works that can be easily copied. Banderoles shall be printed and sold by the Ministry. Banderoles may also be sold through the agency of the collecting societies at the sale price determined by the Ministry.

Duration of Copyright Protection

The copyright protection term starts when the work gets public. The protection term lasts until 70 years following the death of the author and in case of multiple authors the term will expire 70 years after the death of the last surviving author. In case the author of the work is a legal entity, the term expires 70 years following the work becomes public.

Infringement of Copyright

A copyright infringement occurs under the following circumstances:

• Infringement of the author’s moral rights
• Reproduction, distribution, or communication of the work without the rightful authorization
• Adaptation of the work without the rightful authorization

Exemption from Infringement

However, it should be noted that the Law also sets forth exemptions for the infringements noted above. Accordingly, in some cases, the use of copyrighted work may not constitute a copyright infringement even though it falls under the scope of the above-mentioned circumstances. Those are as follows:

• Use due to public order or due to public interest
• Personal use
• Educational purposes
• Expiration of copyright.
• Freedom of (limited) quotation

Type of Claims in Case of an Infringement

The copyright holder can file civil claims and criminal actions against the infringer in case of an infringement. Possible civil claims are cessation of infringement, prevention of infringement, removal and destruction of infringing material, claims for material and moral damages and publication of the verdict of the court. Whereas, criminal liability for copyright infringement is set out in the Article 71 of the Law. There are sanctions varying from judicial fines to up to 5 years of imprisonment.

Competent Courts and the Length of the Trial Process

Specialized IP civil and criminal courts located in Istanbul, Ankara and Izmir are competent for copyright disputes. In other cities, one of the regular civil courts is assigned as a specialized IP court and copyright must be enforced in them.

Typical length of a court action regarding copyright at the first instance would take between 12 to 24 months regarding the complexity of the case. Decision of the First Instance Court can be appealed before the District Courts and this appeal process would take an additional 12 months. Lastly, the District Court Decisions can be appealed before the Court of Appeal and this process would take an additional 15 months.

Although tech giants might create their own Upload Filter, as they have more than enough resources to do so, the new directive will mostly hit the smaller platforms. The cost of deploying such a filter will not only solidify the tech giants place in the market, it will also make it harder for smaller platforms to penetrate this already monopolized market.

Another controversial article of the Directive is Article 15, also referred as the “Link Tax Article”. According to this Article 15, publishers are entitled to charge platforms like Google for the snippets of their news stories. In 2014 Google closed its news service in due to a similar requirement to pay royalties to Spanish publishers. Google’s Vice President of News Richard Gingras told The Guardian that Google won’t rule out shutting down Google News in EU countries if the European Parliament enforces a so-called “link tax.”

What is the next step?

The EU Members have two years to implement the Directive into their National Laws. We have to wait two years to see if the filter and the link-tax will be the end of the internet as we know it.

For further information and assistance regarding the matter, please do not hesitate to contact us here.

Emir Aksoy LL.M., LL.M. IP

Turkey is a member to the WIPO and is a signatory to the major Intellectual Property related Agreements including Paris Convention, Patent Cooperation Treaty, Berne Convention, Trademark Law Treaty Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks and as well as TRIPS Agreement.

Until January 10, 2017, trademark protection in Turkey was regulated through the Decree-Law on the Protection of Trademarks dated June 24, 1995 and No. 556. After January 10, 2017 however, this the Decree-Law No. 556 and other IP related Decrees were revoked and replaced by Industrial Property Law No. 6769 (hereinafter referred as “IP Law No. 6769”). IP Law No. 6769 covers not only Trademark Law but also Patent Law, Industrial Design Law, Geographical Indications Law, Plant Variety Law and Integrated Circuit Topography Law. These recent changes in legislation aim to more effectively combat the counterfeiting of goods, which is seen as a huge issue in Turkey.

According to a new report by the OECD and the EU’s Intellectual Property Office (EUIPO), Turkey now stands at 3.3% of global trade in counterfeit and pirated goods. Counterfeit products especially in sectors like medical products, cosmetics and food industry constitutes a serious health and safety hazard for the consumers.

There are some notable amendments regarding anti-counterfeiting raids:

• According to Article 14 of IP Law No. 6769, it is stated that an international trademark application filed within the scope of the Madrid Protocol System shall have the same effect with an application filed directly to the Turkish Patent and Trademark Office.
• As to anti-counterfeiting raids, Article 30 of IP Law No. 6769 infringers shall be liable to one to three years of prison time and a judicial fine of up to 20.000 days. Article 30 of IP Law No. 6769 broadens the scope of infringement and adds importing and exporting of counterfeit products, as well as buying, possessing, shipping or stocking them for commercial purposes.
• There is a controversial impunity clause in Article 30(7) of IP Law No. 6769. This clause states that anyone who sells or offers to sell a counterfeited product whose rightsowner of the trademark is somebody else can not be granted a punishment in case they inform where they got the counterfeited product from and helps to identify the producers and enable the seizure of such counterfeit products. Although this clause caused quite a controversy, it remains to be seen whether the appeals courts will implement this clause and if so, then how will this clause be implemented on a case by case basis. The important issue here is that this clause can be used as a loophole and might be misused by the infringers to delay the punishment, and it will be up to the appeals courts to ensure that this impunity clause is implemented correctly.
• Article 163 of IP Law NO. 6769 introduced a fast-track destruction procedure for the infringing products.

Trademark infringement is a criminal action and cannot be prosecuted without a duly submitted complaint (therefore cannot be prosecuted ex-officio). The complaint shall be made to the prosecutor’s office. If the prosecutor finds the evidence provided by the representatives of the rights holder, he may order the police to conduct a search and seizure operation on premises where the suspected trademark infringement is taking place based on a search warrant taken from the local criminal court. In most of the cases the prosecutors are willing to see evidence obtained from the production site.

The production sites are determined by the information given by the rightsholders or also another method used frequently in practice is the hiring of a private investigator. The evidence obtained through the private investigator should be legally obtained and therefore the actions of the investigators must be supervised by the representatives of the rightsholders.

Rightsholders are also entitled to make a claim for damages before the civil court. The purpose of this action is to restore the rightsholders to their original position before the infringing action took place.

Banning/Blocking Access to Certain Websites

Av. Ali Yurtsever L.L.M

II.PREVENTION OF THE VIOLATION OF PERSONAL RIGHTS AND BLOCKING OF ACCESS

The Law set forth definitions and organizational structure, catalogue crimes and the legal framework for banning websites and a few procedures. The Information and Communication Technologies Authority (BTK), which was initially established as the regulatory authority for the telecom sector, was authorized to enforce the legal framework provided by the Law. Accordingly, a division of the BTK called the Presidency of Telecommunication and Communication (TIB), which was essentially established for performing legal telephone tapping, was converted to become the authority responsible for internet related issues including enforcing all provisions of the Law.

As for the grounds for preventive measures, Article 8, 8/A, 9 and 9/A of the Law sets forth the methods and means to prevent crimes committed via internet publications and to combat rights’ violations due to such crimes. The main method and tool to combat such crimes and violations is the blocking of access to websites as per Article 8 and the removal of harmful content as per Article 9.

a) Bans/Blocks Based on Article 8

It should be noted at this point that Article 8 and 9 sets forth different criteria and lists different catalogue crimes for the purposes of access blocking and content removal. It is also important to note that for these catalogue crimes noted at Article 8, the TIB has the authority to unilaterally block/ban the specific URL or the whole website, when hosted outside of Turkey, via DNS tampering or IP blocking, without the need for a court ruling. Accordingly, Article 8 of the Law lists the following catalogue crimes as grounds for blocking of access to a website (all with reference to the relevant articles of the Turkish Penal Code No. 5237 (Penal Code):

1. Incitement to suicide (Article 84)
2. Sexual abuse of children (Article 103),
3. Facilitation of the use of narcotics (Article 190)
4. Provision of substances harmful to the health (Article 194)
5. Obscenity (Article 226)
6. Prostitution (Article 227)
7. Facilitation of gambling (Article 228)
8. Crimes against Atatürk
9. Betting/gambling

b) Bans/Blocks Based on Article 9

Unlike Article 8, Article 9 does not set forth an exhaustive list of catalogue crimes but rather states that in case publications made on the internet violate another person’s personal rights (such as the unauthorized usage and publication of personal details, contact numbers and e-mail address, photographs, or publications that may deemed as defamation, slander and libel, etc.), then the injured party may request the removal of such content and/or the ban of access to the specific URL or to the entire domain from the Criminal Judicature of Peace. Article 9 also allows the injured party to request the removal of the harmful content directly from the content provider or the hosting service provider, however, this is merely presented as an option and is not mandatory. Therefore, the injured party may directly request the ban/blocking of the relevant website from the Criminal Judicature of Peace (the judge).

III. METHODS OF BANS/BLOCKS

Article 2/o of the Law sets forth the different methods for the bans/blocks of access. According to this article, in case a harmful content is published in any website that violates either the provisions set forth in Article 8 or 9, the domain name, the IP address or the specific URL may be blocked. However, in order to avoid violating the right of free speech, the general rule is to only block the specific URL where the harmful content is published, and only block the domain name as a whole if the harmful content cannot be removed otherwise.

It should also be noted that, in case a complaint is filled with the Criminal Judicature of Peace as noted above, the judges may issue their rulings to ban/block the relevant websites without first hearing the defense of the content provider. Therefore, the judges are authorized to decide on the merits of the case based solely on the claims of the plaintiff, although the judges to check and verify that such claims are true and that the violate the rights set forth at Article 8 or 9 of the Law.

IV. CONCLUSION

As noted above, the new regulations in Turkey allow for the banning/blocking of access to certain websites if the publications at such websites violate the provisions set forth at Article 8 and/or 9 of the Law. Although the provisions set forth at these article seems fair and balanced, the lack of oversight of the BTK and TIB and their respective power to shut down any website, allows for the abuse of this regulatory system, resulting in the unfair blocking/banning of numerous websites in Turkey. Such abuses aside, the regulatory system does allow for third parties to shutdown access to a specific website if their personal rights are violated, which may be deemed as a positive step towards protecting online rights. Furthermore, the response time of the courts are quite fast, especially compared to other cases in the Turkish judicial system.

The one important thing to note here is that, although not noted in any of the provisions or in any other regulation, there is a difference in blocking websites using “http” and “https” protocols. For websites using the http protocols, the BTK and TIB may directly block/ban a specific URL, without the need to ban the whole domain or the IP address. Whereas, the same cannot be done for websites using “https” protocol. Therefore, in order to block access to a harmful content published in a website using the “https” protocol, the only option is to block the domain name as a whole, which may result in the violation of the freedom of speech, since the harmful content may be restricted to a single URL link within the whole website and blocking a domain name will block access to all other URL’s that does not contain any harmful content (an example of this is the Wikipedia case in Turkey).