17.07.

2019
İLAYDA ERDEMİR

LAW343/A-INTRODUCTION TO US LAW

INTELLECTUAL PROPERTY LAW

İLAYDA ERDEMİR
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WHAT IS INTELLECTUAL PROPERTY LAW?

We should first define the word “property” in order to explain the term
“intellectual property”. In simple terms, as you know, when we buy an object we
can use that object however we wish (in the framework of law), this is because
the object becomes our property as soon as we pay its price. Also, we can
prevent others from using our own property or at least expect them to ask for it.
Laws permit us to do these aforementioned acts, and permit us to take legal
action to protect our rights.

The term intellectual property has a similar meaning but it is for works that are
creation of human mind such as books, songs, paintings, inventions etc. However,
there is not a formal definition to this term, usually international conventions
and also Turkish Law defines intellectual property similarly and gives an
inclusive list of things that are protected.

The main subjects of Intellectual Property Law (hereinafter referred to as “IPL”)

are:
 Copyright
 Related rights
 Trademark
 Geographical Signs
 Patents
 Industrial Designs

These are not the only subjects of IPL yet these are the main headings. In the
scope of this work only Copyright and Trademark will be discussed in detail.

Before we evaluate these areas in detail it should be noted that these areas all
have three things in common:

1) The creator of the work will have the rights

2) The creator can assign (or license) its rights to others
3) They protect the works which are creation of human mind

Once again, before we discuss aforementioned areas, it may be beneficial to

understand why intellectual property is protected.

1) First of all, it would not be fair to not protect people who put effort, time
and money to create something.
2) Second, when governments provide protection it encourages people to
create/invent and so industries grow, bringing financial return.
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A. COPYRIGHT

The subject of copyright is literary and artistic works such as writings, lyrics,
paintings etc. However, it is important to note that ideas are not protected within
IPL. In other terms, if you want your ideas to protected you have to express them
somehow meaning that you have to materialize your ideas.

The oldest international convention governing copyright is the Berne Convention

(1886)1. Berne Convention defines the scope of copyright as:

Article 2
(1) The expression ‘literary and artistic works’ shall include every
production in the literary, scientific and artistic domain, whatever may be
the mode or form of its expression, such as books, pamphlets and other
writings; lectures, addresses, sermons and other works of the same nature;
dramatic or dramatico-musical works; choreographic works and
entertainments in dumb show; musical compositions with or without words;
cinematographic works to which are assimilated works expressed by a
process analogous to cinematography; works of drawing, painting,
architecture, sculpture, engraving and lithography; photographic works to
which are assimilated works expressed by a process analogous to
photography; works of applied art; illustrations, maps, plans, sketches and
three-dimensional works relative to geography, topography, architecture or
science.

As you can see, an inclusive list is given in the Convention by using the term
“every production”. Also, it can be seen that, in order to be covered by
copyright it should be in form/mode of expression.

Although it is important that it should be in a form of expression, the work does

not need to have artistic qualifications. In other words, the work does not to be
“good” yet it should be original. However the criteria of originality changes from
country to country. Turkish Law on Intellectual and Artistic Works 2 which
governs copyright defines “work” as:

Tanımlar Madde 1/B – (Ek: 21/2/2001 -4630/2 md.)

Bu Kanunda geçen tanımlardan;
a) Eser: Sahibinin hususiyetini taşıyan ve ilim ve edebiyat, musiki, güzel
sanatlar veya sinema eserleri olarak sayılan her nevi fikir ve sanat
mahsullerini,

As you can see in Turkish Law, for a work to be accepted as original and to be
protected under copyright it should bear the characteristics of its author. In
other words, one should express its ideas in a different way then the others. Yet
again this does not change the subjectivity of the originality criteria.

1 https://global.oup.com/booksites/content/9780198259466/15550001
2 5846 sayılı Fikir ve Sanat Eserleri Kanunu
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Generally speaking in civil law countries (e.g. Germany, Spain, France) the
requirement for a work to be protected by copyright is stronger. On the other
hand, in common law countries (e.g. USA, England) a minimum effort of the
author is enough.3

WHAT RIGHTS DOES A CREATOR OF WORK HAVE?

As an international convention and as the oldest one the Berne Convention sets
the minimum standards for the copyright protection. National laws, on the other
hand, sets more detailed protection.

There are two kinds of rights under copyright:

1) Economic rights—these rights ensure that authors/creators to derive
financial return, they are transferable rights
2) Moral rights—these rights ensure that authors/creators can preserve
the personal link between their work and themselves, they are non-
transferable rights

In the Berne Convention the copyright holder has (mainly) the below mentioned
rights:
 Right of reproduction (Article 9)
 Right of performance, right of communication to public and right of
broadcasting (Article 10, Article 11)
 Right of translation and adaption (Article 8)

Similarly, in Turkish Law the copyright holder has (mainly) the below mentioned
rights:

a) Economic Rights:
 Right of adaptation (Article 21 of Turkish Law on Intellectual and
Artistic Works)
o A derivative work is a work that is derived from another
work. For example; the novel Harry Potter and
Philosopher’s Stone is the work of J.K Rowling. That is why,
JK Rowling has the exclusive right to adapt this work and
turn it in to another form of work (e.g. a movie) or at least
she has the exclusive right to give permission for adaption.
 Right of reproduction (Article 22 of Turkish Law on Intellectual and
Artistic Works)
o The right owner can prevent others to make copies of
his/her work. For example, if someone starts to make
copies of the novel Harry Potter and the Philosopher’s
Stone without J.K Rowling’s permission, then, as the author
J.K Rowling can take legal actions against the infringer.
 Right of distribution (Article 23 of Turkish Law on Intellectual and
Artistic Works)

3 WIPO Module-2 (Copyright) Study Notes

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o The right owner has the exclusive right to distribute

his/her work and its copies.
 Right of perfonnace (Article 24 of Turkish Law on Intellectual and
Artistic Works )
o Only the right holder (or the ones he/she permits) can
perform the work.
 Right of public transmission by means of signal, sound and / or
image transmission (Article 25 of Turkish Law on Intellectual and
Artistic Works )
o Only the right holder can transmit his/her work through
internet, radio programs, tv programs etc.

According to Article 27 of Turkish Law on Intellectual and Artistic Works the

protection period lasts as long as the author lives and 70 years after his/her
death.

Moral Rights:
 Right of communication to the public (Article 14 of Turkish Law on
Intellectual and Artistic Works )
o The author of a work has the exclusive right to decide
whether or not to communicate his/her work to the public.
 Right of authorship (Article 15 of Turkish Law on Intellectual and
Artistic Works )
o The author of a work can claim his/her name to be
mentioned as the author/creator of the work even if
somebody else has the right to publish the work.
 Right to prevent changes (Article 16 of Turkish Law on Intellectual
and Artistic Works )
o The author of a work can prevent changes, which are made
without his/her permission even if the economic rights are
transferred to someone else.

If someone infringes abovementioned rights, then, the right holder can take legal
actions against the infringer.
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B. TRADEMARK

“A trademark is basically a sign that is used to distinguish the goods or services

offered by one undertaking from those offered by another.” 4

A trademark can be a:
 Word
 Picture
 Shape
 Number
 Slogans… etc.

Or can be a combination of these.

The important fact is that a trademark should be distinctive and it should

not be deceptive.
 Distinctiveness: The trademark should help consumers to distinguish the
products or services, which it is used from other products/services. The
trademark should not describe the nature of the goods or services. For
example, the word “chocolate” is a distinctive trademark for lipsticks
whereas it is a descriptive trademark for chocolates.
 Not being deceptive: If a trademark leaves a wrong impression on
consumers about the qualities of the products or services, which it is used
then there it is a deceptive mark.

In Turkish Code of Industrial Property5 there are other additional criteria for a
mark to be registered and to be protected under trademark law. These are
regulated in Articles 4, 5 and 6. These can be summarized as:

 A trademark should determine the scope of its protection in precise way,

it should be distinctive and it should be expressible on the registry file
(e.g. smells are not expressible in this way)
 A trademark should be distinctive and it should not be deceptive or
descriptive
 A trademark should not be the same with a trademark which has been
already registered.
 A trademark should meet the criteria set forth in Paris Agreement
 A trademark cannot include religious signs or any signs that are against
any public norms and/or values.
 A trademark cannot be confusingly similar to any trademark, which has
been already registered.
o This is accepted as a relative ground for refusal. Trademarks are
registered in certain product or service classes, called as NICE
classes. Every owner of a trademark has to specify the NICE class,
which the trademark will be used. As a result, in principle, same

4 WIPO Study Notes—Module 4 (Trademarks)-page 3

5 6769 sayılı Sınai Mülkiyet Kanunu
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trademark can be registered in two unrelated classes. The only

exception is well-known marks, these well-known marks are
protected in every NICE class.

HOW CAN SOMEONE CLAIM PROTECTION FOR HIS/HER TRADEMARK?

Generally speaking most countries have a registration system for trademarks

and usually that is the condition for trademark protection. In other words, for
one to claim protection he/she must first register his/her trademark.

In Turkey, Turkish Patent and Trademark Office (“TPMK”) deals with trademark
and patent registrations. The owner of a trademark needs to apply to TPMK in
order to register its trademark. TPMK evaluates the conditions, which are
counted in Turkish Code of Industrial Property, and if the trademark meets these
criteria it is registered and protected for 10 years. After the end of this period the
owner can renew his/her application in every 10 years by paying a renewal fee.

WHAT RIGHTS ARE COVERED BY TRADEMARK PROTECTION?

The owner of a registered trademark can prevent others from using his/her
trademark by any means. However, it should be noted that trademark
registration provides protection only in the territory where it is registered
because trademarks are territorial rights. In other words, in principle, when a
trademark is registered in Turkey, the owner of the trademark can only prevent
the usage of its mark in Turkey.

On the other hand, there are some regional registration systems and
international treaties which provides easier application procedures for
registration of a trademark in more than one country. However, even these
systems include registration in every single country meaning that these systems
only ease the procedure.

6The Madrid System is introduced with

Madrid Agreement and Madrid Protocol.
First someone files an international
application with International Bureau of
WIPO. This application states the countries
which the protection is claimed. Then, the
Bureau sends the application to the stated
countries and those countries evaluate the
trademark pursuant to their national laws.
So the applicant can register his/her
trademark in more than one country
through one application, in one language, to
one office.

6 Picture—WIPO Study Notes Module-8 (Registration Systems)