The Copyright Tribunal was established pursuant to Chapter VIII of the Copyright Act to handle various matters including references in relation to copyright licences issued by licensing body. The Copyright (Cayman Islands) Order 2015 and the Copyright (Cayman Islands) (Amendment) Order 2016 extend Part 1 of the UK Copyright, Designs and Patents Act 1988 including Schedule ZA1 and Schedule 1 of the Act to the Cayman Islands.

The Trade Mark Appeals Tribunal was established pursuant to Part 7 of the Trade Marks Law, 2016, for the purpose of hearing appeals from persons aggrieved by a decision of the Registrar. The Design Rights Tribunal was established pursuant to Part 5 of the Design Rights Law, 2019, and has the jurisdiction to, among other things, settle terms of licences as of right.

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From a system that has granted patents based on local novelty to one which now makes universal novelty a criterion for patentability, the New Act is a significant step towards well-needed reform in the field of industrial property rights in Jamaica. When it comes into force, the New Act will repeal the prevailing Patent Act of 1857 and the Designs Act of 1937, both of which had only undergone minor amendments up to 1975.

WTO – TRIPS Compliance
In conformity with the standards set by the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), patents are available for inventions (products and processes) in all fields of technology provided they are new, involve an inventive step and are capable of industrial application. Like several jurisdictions, the New Act excludes from patentability plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes, and plant and seed varieties. Interestingly, business methods are also excluded from patentability.

A Jamaican patent will last for twenty (20) years from the filing date which is up from fourteen (14) years under the 1857 Act. Unlike the old Act, there is no opportunity for an extension of time and patents will now be subject to an annual maintenance fee.

International Filing Systems
Of note in the New Act, are provisions which implement the Patent Cooperation Treaty (PCT) that Jamaica intends to sign. The PCT provides the facility for international patent filings through the World Intellectual Property Organization (WIPO). It will also be possible to obtain international registration for a design by virtue of the implementation of the Hague Agreement for the International Registration of Industrial Designs. In addition, the New Act implements the Paris Convention on Industrial Property which is a welcomed development, since despite being a member of the Paris Convention from 1999, the Convention’s provisions on patents and designs (notably, priority filings) have not been implemented in Jamaica due to the absence of modern legislation.

Utility Model Protection
By virtue of the New Act, for the first time inventors will be able to obtain utility model protection (also known as ‘petty patents’ or ‘minor patents’). This form of protection is felt to be beneficial to developing economies like Jamaica, where significant innovation may not meet the high threshold of inventiveness required for patents. An application for a patent may be converted by the applicant, into an application for a utility model at any time before the grant of refusal of a patent. Similarly, an application for a utility model may be converted by the applicant, into an application for a patent. A utility model certificate will last for 10 years from the date of filing and utility model applications will not undergo substantive examination as required for patents nor will they be subject to annuities.

Opposition and Disclosure Provisions
The New Act introduces the possibility of opposition proceedings in respect of patents, utility models and designs. Other major changes from the old system include the provision of a twelve (12) month grace period for disclosures of inventions which are made by the inventor or by a third party in breach of confidence. Disclosure at international exhibitions may also be allowed under certain conditions.

Design Protection and Duration
In order to obtain registered design protection under the New Act, industrial designs must be new and have individual character. This concept of ‘individual character’ is new to Jamaica’s design law but is a requirement under the Economic Partnership Agreement (EPA) between the European Community and CARIFORUM states to which Jamaica is a party. Registered designs will be protected for five (5) years with the possibility of renewal for two consecutive five year periods which accords with international norms as TRIPS requires a minimum duration of 10 years while the EPA sets a maximum of 25 years.

Ownership of Inventions and Designs by Employees
Provisions on ownership of patents, utility models and design rights, as between employers and employees also herald a major change to the prevailing system as the Patent Act of 1857 and the Designs Act of 1937, are silent on the matter. As a general rule, employers will own the rights to patents, utility models and designs, made in the course of normal duties of the employee. These provisions interestingly, run counter to Jamaica’s Copyright Act which vests the first ownership of copyright in the author of the work unless there is an agreement to the contrary and makes no exception in respect of works done by employees (save for Government employees) in the course of their employment.
In relation to patents and utility models, an employer will also own the right where the invention is made pursuant to duties specifically assigned to the employee. Designs created by an employee who is not engaged in the creation of designs under a contract of service will be first owned by the designer; however the employer is the first owner of any design rights for designs created by the employee using information or means that the employer puts at the employee’s disposal. Compensation may be awarded by the court to an employee who invents patentable subject matter or creates a new design in certain circumstances.

Concluding Thoughts
It is fair to say that the New Patents and Designs Act represents a seismic shift in Jamaica’s Intellectual Property landscape, clearly bringing Jamaica in line with international standards and hopefully eliminating future citations by the United States Trade Representative for lack of a modern patent system, once the New Act comes into force. It remains to be seen how local designers, inventors and innovative enterprises will leverage these sweeping changes to their benefit. The New Act now awaits the Governor General’s Assent and an Appointed Day for its coming into effect.

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In 2015 sweeping changes were made to Jamaica’s Copyright Act through the Copyright (Amendment) Act of 2015 in force July 30, 2015 including new and expanded rights for copyright owners and performers and with that, new liabilities, offences and exceptions to infringement and a revival of Crown Copyright. Perhaps, most impactful, is an extension of the already long duration of copyright. Some of the changes brought about by the amendments were gestating for over ten (10) years while others gained momentum in a relatively short space of time.

The Copyright (Amendment) Act of 2015 is the most substantial set of amendments since the 1993 Act. It brought into effect several major substantive & administrative changes including:

• Extension of Duration of Copyright and Rights in Performances
• Express provisions on Ownership of Copyright and Crown Copyright
• New/expanded right for copyright owners
• New rights for Performers and Persons with Exclusive Recording Rights
• Offences for the circumvention of Technological Protection Measures (TPM) and altering of Rights Management Information (RMI).
• Liabilities & Exemptions for ISPs
• Exceptions for the Visually and Hearing Impaired
• New Provisions on Orphan Works
• Exceptions in relation to sound recordings
• Statutory Copyright Registration
• Regulation of Collecting Societies (Regulations still pending)

Main Factors of Change
The WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty (together known as the WIPO Internet Treaties (1996) to which Jamaica acceded in 2002) were the main catalysts for Jamaica’s copyright amendments. However, the amendments seemed to take on ‘a life of their own’ particularly in the run up to the amendment Act. The result is that the Internet Treaties only account for a ‘handful’ of the amendments, namely the new/expanded rights for copyright owners, performers and persons with recording rights, liabilities/exemptions for ISPs and offences for circumvention and tampering with rights management information. Some provisions mandated by the Treaties were omitted from the 2015 amendments and are expected to be included in a subsequent amendment.

Extension of Term of Copyright
The extension of the term of copyright and related rights could be considered the flagship amendments of the 2015 Act. The Copyright Act of 1993 gave the minimum duration stipulated by the Berne Convention of life plus 50 years for works of authorship and 50 years for entrepreneurial works. Under the 2015 Act the term of copyright has been increased to life plus 95 years across the board. For example:

• Copyright protection for original literary, dramatic, musical or artistic works now lasts for the life of the author plus 95 years (up from 50).
• Copyright in a sound recording, film, broadcast or cable programme now lasts 95 years (up from 50) from the end of the calendar year in which it was made, or where it was made available to the public before the end of that period, the end of the calendar year in which it is so made available.
• Performances previously protected for 50 years now enjoy 95 years from the end of the calendar year in which the performance was recorded or if not fixed in a recording, from the end of the calendar year in which the performance takes place.

This increase was triggered mainly by the local music/recording industry seeking to rescue iconic reggae music from the public domain. Industry stakeholders had lobbied the Government for a longer term extension to preserve Jamaican recordings of iconic songs, like Many Rivers to Cross by Jimmy Cliff and One Love by Bob Marley created in the 1960s which had already fallen or were about to fall into public domain. However, the increased terms could prove problematic particularly because of their retroactive effect.The extensions apply retroactively as at January 1, 2012. Therefore all works for which copyright expired on January 1, 2012 up to July 29, 2015, gain another 45 years, and those thereafter are protected for life plus 95 years or 95 years as the case may be, and 50 years in the case of typographical arrangements.

Ownership of Copyright
Another interesting amendment relates to ownership of copyright. Express provisions on copyright ownership appear consequential to the provisions on term extension, but may create unwelcomed challenges for businesses. The 1993 Act departed from the UK and other copyright laws around the world by not exempting works created in the course of employment from the first ownership rule and the amendments seem to compound the issue.Under the 1993 Act, the author is deemed to be the first owner of the copyright unless there is an agreement to the contrary. The only statutory exception to the first ownership rule relates to works first published by or under the direction or control of a specified international organization.
The dilemma with this has been that in the case of a work done in the course of employment where one might assume that ownership should be deemed to rest with the employer, the absence of an agreement vesting copyright in the employer would have the effect of it resting with the employee. The 2015 Amendment Act for the first time makes reference to ownership in relation to an employer and the employee, but rather than bringing Jamaica in line with international norms it seems to reinforce the diversion. It states that where pursuant to an agreement between an employer and employee copyright in a work created by the employee has vested in the employer, the copyright expires 95 years from the end of the calendar year in which the work was made.

Crown Copyright
Interestingly, the Government ‘climbed its way out’ of this ‘dilemma’ by introducing a provision in the 2015 Amendment Act that copyright in works made by a person employed or engaged by the Crown under a contract of service, a contract of apprenticeship or a contract for services, is first owned by the Crown unless there is an agreement to the contrary.
Crown copyright works are protected, in the case of a typographical arrangement of a published edition, for 50 years from the end of the calendar year in which the work was made; and for any other work, 95 years from the end of the calendar year in which the work was made.

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In 2000 a non-profit, non-governmental organisation, the Intellectual Property Service Centre (IPC), created a voluntary copyright recordation and deposit facility in conjunction with National Library of Jamaica, where copyright owners could file their ownership claims to copyright and deposit a copy of their work, to establish a public record of their claims. IPC became a nationally recognized voluntary copyright registration facility.

The Government’s Copyright Registration System

Copyright registration is now recognized under Jamaica’s Copyright Act. The government introduced statutory copyright registration through amendments to the Copyright Act in 2015 making it is possible to register your copyright at the Jamaica Intellectual Property Office (JIPO). The Copyright (Amendment) Act 2015 in force July 30, 2015, establishes JIPO as the Copyright Registry and outlines procedures and fees for registration.

The JIPO copyright system is an adaptation of the copyright recordation system carried out by IPC for several years, with one of the main differences being that JIPO only accepts works in digital format.

Procedures

The JIPO Copyright Registration process requires the Applicant (author/copyright owner) to complete sign and submit an Application for Registration form as prescribed in the First Schedule to the Amendment Act.  The original application (not a digital copy) must be submitted to JIPO. The Application must be witnessed by a Justice of the Peace, Attorney-at-Law, Minister of Religion or Medical Doctor. The Applicant must also complete sign and submit a Declaration which is to be witnessed by a Justice of the Peace.  A digital copy of the work (in specified formats) must be deposited with the application at JIPO.

Voluntary System

The JIPO Copyright registration system is voluntary. Registration is not a condition for copyright protection. Copyright protection is automatic so long as the work qualifies for protection under the Copyright Act.

Benefits

One of the benefits of the Copyright registration system is that the certificate of registration and other documents which are certified extracts of the JIPO Copyright Register are presumed to be authentic for all purposes and are admissible in evidence in any legal proceedings.

Registration Fees

The JIPO Copyright Registration fees are based on the type of work. In relation to short literary works such as poems, song lyrics and short stories, the fees are discounted based on the volume of the works being registered by the Applicant. For longer works such as books and magazines the fees are based on the number of pages.

For further information on the copyright registration procedures and fees please contact us at copyright@fogadaley.com

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