This Article was originally published at LES Nouvelles, December 2012
JOINT OWNERSHIP OF INTELLECTUAL PROPERTY RIGHTS
IN TURKEY
By
Omer HIZIROGLU, CLP General Manager, Inovent
Corp
And
Yucel HAMZAOGLU, Director, BTS Partners
In Turkey, Intellectual Property
ownership rights of are generally addressed in the applicable laws regulating
patents, Decree Law 551 (“DL 551”), trademarks, Decree Law 556 (“DL 556”) and Copyrights,
Law 5846 on Intellectual and artistic works (“5846”). While these legislative
texts generally address the ownership rights regarding joint ownership, for the
intricacies and specific circumstances one must refer to other legislative texts
such as the Turkish Civil Code (4721) and the Code of Obligations (6098).
As an introduction, we note that
with regards to patents, in the context of a joint invention, the ownership
interests of the joint investors shall be as “joint-owners” as opposed to
Copyrights where ownership interests on jointly created works shall be on
“co-owner” principle.
In practice we observe that most
issues and litigation related to, often difficult to manage and monitor ownership
issues arising out of the claims of two or more claimants, are in the area of
Copyrights. The authors, at the time of the drafting of this article are not
aware of any case law regarding joint ownership related disputes or case law
arising out of patents.
A note on patents: with increasing university- industry
collaboration projects, we note that when ownership issues on the potential
invention is leading to a deadlock, parties look upon a “joint patent” as a
mutually acceptable compromise, often unaware of the possible risks of future
disputes that a joint patent may lead to during the commercialization process.
Most collaborative agreements address the issue with a basic language such as
“all intellectual property rights arising out of this agreement shall be
jointly owned by the parties.” While this simple but naive approach resolves
the negotiation dead lock, we observe first signs of trouble when an IP disclosure
does indeed happen and parties face the music for the first time as they try to
struggle with basic questions such as: Who shall manage the application? Who should
be named as inventors? Who shall have the right to (exclusively) commercialize
the invention? How to handle various
approaches that national legislations have regarding the maintenance,
exploitation and enforcement of intellectual property rights? We have also
observed an extreme case where a party simply filed for a patent in its own
name, naming only its inventors in the application in a clear breach of the
research agreement that had called for a joint application. Thus, we would
expect to see Turkish courts forced to address issues of joint ownership of
patents in a relatively near future as the “easy way out” short term solutions
lead to long-term disputes.
In this article we focus solely on joint
ownership issues pertaining to patents and copyrights in Turkey. We purposefully
left out trademark issues as these should be the subject of a separate article.
We will simply note that the Turkish trademark law, the Decree Law 556 is essentially
silent on issues relating to joint-ownership interests on trademarks. As a
trademark's main purpose is to identify the source and origin of the goods and
services offered under it, a jointly owned trademark appears to be a rare
occurrence and possibly go against the main reasoning behind the trademarks. The
DL 556 does however address collective marks, a different concept, in its
article 55. We can however anticipate the issues relating to joint owners’
rights of a trademarks is likely to be controlled by the Turkish Civil Code and
the Code of Obligation’s relevant provisions. We have also left out issues
relating to trade secrets. N nmm
Joint ownership rights in Patents
In Turkey, patents and rights
related thereto are regulated under the Decree Law No 551 (“551”) enacted in
1995.[1]
Turkish law distinguishes inventor from the applicant. While the inventor has
to be a real person, an applicant may be a real person or a legal entity as
would be the case of employee inventions. The right to apply for a patent is
reserved by 551 to the inventor or inventors such a right is transferable. If the invention is conceived by two or more
persons then these inventors will be deemed joint inventors. Unless parties
have agreed otherwise in writing, they will have right to file for a patent as
“joint-owners”.
Article 85 of DL 551 states that
the rights of joint-owners shall be controlled by the agreement between the
parties. In the absence of an agreement between the parties, the same article refers
to Turkish Civil Code’s joint-ownership provisions. However, article 85 further
states that each right holder can: i) freely dispose of or transfer his portion
of the right. In the event the right is to be transferred to a third party, the
Turkish Patent Institute shall provide a notice within two months to the joint-owners
who benefit from a first right of
refusal to be exercised within one month of the receipt of the notice; ii) use the invention
provided a notice is given to the other right holders; iii) can take measures
to protect the patent application or the patent as the case may be; iv) in the
event there is an alleged infringement of the patent or the pending
application, enforce such rights by bringing an enforcement action or place a
criminal complaint. However, the party bringing forth the action has a duty to
notify other right holders within one month of the initiation of the law suit
so that these parties can join the law suit.
A crucial part of article 85 states that in the event the invention is
to be licensed to a third party, such license is only possible by a decision of
all joint owners. Thus a licensee of a Turkish patent should require that all
joint owners sign the license agreement or if dealing with one of the joint
owners, require the licensor to provide a written document that other joint
owners have assented to the license agreement.
In the event the joint invention
is used by or more of the joint owners, it is suggested that those who utilize
the invention pay a fair value for the use of the invention to the joint
owners. If the joint owners cannot agree on the fair market value for the uses
of the invention, the issue will be decided by the court.[2]
For matters related to joint
ownership where 551 is silent, ownership rights shall be deemed to be an issue
of joint-ownership as regulated by the Turkish Civil Code and ordinary
partnership provisions of Turkish Code of Obligations. Accordingly we can
anticipate that, Turkish law will require unanimous decision of the
joint-owners on transactions on the patent. It is further implied that all joint-owners
have an equal interest on the patent and all rights related thereto.
Turkish Civil code 4271 states
in its pertinent provisions that unless otherwise agreed by the parties all
rights are shared equally. Each right holder is free transfer his or her right,
post it as a security and all such rights are subject to attachment by the
joint-owner’s creditors.
Article 689 of 4271, while
clearly drafted with real property in mind, states that parties can agree
amongst them and allocate the rights to use and manage the joint property.
However, parties cannot allocate the rights and obligations with regards the management
of the joint property in issues related to the safeguard of the value of the
joint property, actions to be taken to prevent damages or risk of damage to the
property. Article 694 states that, unless otherwise agreed by the parties, all
expenses, including taxes and management fees are to be shared equally by the
parties. Thus, it is suggested that patent maintenance fees will be shared by
the parties equally unless parties state otherwise in an agreement and parties
may be, by analogy to real property, required to act together in actions that
may threaten the continued existence, validity of the patent.
Article 693 states that one of
the joint owners can represent the other owners to protect other parties’
interests. We can also state that in the event a joint-owner dies, his interest
on the patent shall pass to his/hers heirs as part of the estate.
Co-ownership in Copyrights:
Turkish Copyright Law (5846) (The law on
intellectual and artistic works) states that unless otherwise provided (i.e.:
under an employment contract/work for hire) the copyright on the work covered
by the law belongs to the author of such work. A work of authorship may result
as the effort of one or more authors. The law distinguishes works resulting
from the joint effort of one or more authors (joint works) from collective
works where the work in question is a compilation of several, otherwise
independent works such as in an anthology. For the purposes of this article, we
shall discuss only joint works (not to confuse with “joint ownership”).
In context of joint works, it is assumed that
the all authors have contributed to create an indivisible single work whereby
the contribution of one author cannot be separated from the work without
compromising the nature and the integrity of the work as a whole.
While it is possible that all authors may not
have contributed equally to the resulting work, each author’s contribution must
be creative in its nature. A mere technical assistance to the creation of the
work will not justify a claim of authorship. For instance, a research assistant's
compilation of data shall not be deemed to generate an ownership interest or a
right to claim a co-author credit on the resulting academic publication.
With regard the rights and obligations in
context of Joint works Turkish copyright law 5846 refers to Turkish Code of
obligations and defines the relationship between the right holders as that of a
simple partnership. However parties are free to allocate these rights and
obligations among themselves with a written agreement.
Because the relationship among the right
holders is defined as a simple partnership, the ownership interests will be
defined as co-ownership within the pertinent sections of Turkish Civil Code and
these sections will control, by analogy the ownership interests of the parties
to the extent they are applicable to works of authorship.
A critical distinction between co-owner
interests as opposed to joint-ownership interests in patents is that under co-ownership,
co-owners have a property interest on the entirety of the work as a whole.
Co-owners will not have a right to transact on or transfer the work subject to
co-ownership or the portion they have contributed independently from the other
co-owner[3].
Under simple partnership system, all profits
and losses on the work shall be shared equally among the co-owners. Articles
523 and 524 of the Turkish Code of Obligations suggest that co-owners have an
equal say on the use of rights on the work. Whether seen under the simple
partnership provisions of the Code of Obligations or under the co-ownership
statute resulting from the Civil Code, a unanimous decision of the co-owners
will be needed for the management of the co-owned work or any transactions with
third parties[4].
If one co-owner unreasonably withhold his or
her consent in a transaction where unanimous action is required, the party that
seeks the consent may take the issue to the court, in the even court decides
favorably with regards to the contemplated transaction, that court’s decision
will be deemed to be the co-owners consent.
With regards to moral rights on the work, the
law deems these rights to be personal rights and any co-owner is free to
exercise these rights without the consent of the other co-owner provided that
such exercise does not infringe the other co-owner’s rights on the work[5].
In the event of an infringement of the
copyrights on the joint work, any co-owner may act alone to protect the
interests on the co-owned work or the interest of the co-ownership. However, a
co-owner who is seeking to enforce the copyright may not benefit alone from the
results. In the event a court action finds infringement and damages are
awarded, the other co-owner shall have an equal right on such damages
Conclusion
As a general rule, joint or
co-ownerhip of intellectual property represents challenges in practice as it is
the case in most jurisdicitons. The main challenge comes from the fact that
unless a joint-ownership agreement exists between the parties, the dynamics of
the relationship along with mutual rights and obligations may be subject to
various legisltative textes, the scope and applicaiton of which is very often
not anticipated. In the event an agreement is entered into by the parties, the
agreement must be carefully drafted by an experienced attorney who can, not
only anticipate possible issues arising out of the laws of the local
jurisdiction (so that the agreement is not in conflict with existing law) but
also takes into account various ownership issues in foreign jurisdictions where
the intellectual property is to be exploited. Not an easy task. One must also
take care in identifying parties’ overall interests on the underlying
intellectual property and their capacity to enforce, exploit and commercialize
the intellectaul property. Joint-ownerhsip of the IP sould not be seen as a
possible comprimise, as in joint R&D agreements, but a solution of last
resort in case of a deadlock. Indeed, it is the authors experience that much
more practical solutions such as exclusive license rights and future options
exist provided that parties take the time to educate each other during
negotiations and identify common goals and mutual abilities and independent
objectives. In any event a template joint ownership agreement will mostl likely
cause more problems on the long term than it solves in the short term and both
sides should seek experienced legal opinion.
[1] A new
revised law is expected to pass this year. As of the date of this article, 551
is still thecontrolling legislative text. However, we dont expect to see
critical changes regarding joint
ownerhsip rights in the proposed draft legislation.
[2] Ünal TEKİNALP,
Fikri Mülkiyet Hukuku, Arıkan Yayınları, 2005 p.512
[3] Nuşin AYİTER, “Hukukta fikri ve Sanat ürünleri”, A.Ü.
Hukuk Fakülteis Yayınları, Ankara 1972 p.102
[4] Mustafa
Ates “Fikri Hukukta Eser Sahipliği” Adalet Yayınevi, Ankara 2012 Ed 1, p 218
[5] Ayiter,
p 102
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