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Seanad Éireann debate -
Wednesday, 23 Mar 1927

Vol. 8 No. 13

INDUSTRIAL AND COMMERCIAL PROPERTY (PROTECTION) BILL, 1926—REPORT STAGE.

The following Government amendments were agreed to:
1. — Section 19, sub-section (3).
After the word "London" in line 59 to insert the words "or in the register of clerks kept under this Act."
2. —Section 62. Before sub-section (2) to insert a new sub-section as follows:—
"(2) If and when the Minister so directs there shall be kept at the office a book called the register of clerks in which shall be entered the names of approved clerks of registered patent agents."
3. —Section 63. Before sub-section (4) to insert a new sub-section as follows:—
"(4) If a register of clerks is established under this Act the Minister may by order make rules for the management of such register and may by such rules prescribe the qualifications and conditions for eligibility for and the fees to be paid on registration in such register."
4. —Section 63, sub-section (4). To delete in line 47 the words "the rules aforesaid" and to substitute therefor the words "rules made under this section."
5. —Section 89, sub-section (1). After the word "Act" in line 49 to insert in brackets the words "(including a mark registered under Section 62 of the Trade Marks Act, 1905)."

Amendments 5 and 7 should be read together; they are carrying out the premise made here the last day that I would put down such amendments as would allow the Irish Trade Mark to be registered here. They have the further effect of allowing the Association to assign to the Minister and the Minister to take the assignment if desirable. No. 6 is an amendment which insists that I should take over the Trade Mark; amendment 7 allows it to be taken over.

Amendments agreed to.

I move the following amendment:—

New Section. Before Section 122 to insert a new section as follows:—

122. —(1) The control of the Irish Trade Mark registered under the provisions of Section 62 of the Trade Marks Act, 1905, as a mark of origin and advertised in No. 1492 of the "Trade Mark Journal" by the Irish Industrial Development Association (Incorporated) and all the rights of the said Association under all existing agreements with their licensees shall be transferred to and vested in the Minister, and the said Irish Industrial Development Association (Incorporated) shall as soon as convient may be after the passing of this Act assign the said Trade Mark to the Minister, but no compensation whatsoever shall be payable to the said Association in respect of such transfer.

(2) The Minister may procure the registration in Part A of the Register of the said Irish Trade Mark and shall be and be registered as the proprietor thereof and may procure the registration of the said Irish Trade Mark in any register maintained in any place outside Saorstát Eireann if and so far as and subject to such conditions as such registration is permitted by the law regulating such register and in any such case may procure himself to be entered as the proprietor of the said Irish Trade Mark.

(3) The Minister shall in relation to the said Irish Trade Mark have all the powers conferred on Ministers in relation to marks of which they are the registered proprietors by Section 121 of this Act (which relates to the registration of marks by Ministers).

(4) Nothing herein contained shall prejudice or affect licences already granted by the said Association to any persons to use or apply to any goods the said Irish Trade Mark during the respective period or periods for which such licences may have been granted by the said Association.

(5) Every licence to use the said Irish Trade Mark granted by the Minister shall contain such provisions, conditions and restrictions as the Minister may think proper for ensuring that the said Irish Trade Mark shall only be applied by the licensee to goods of Irish origin and of specified quality or description.

(6) The whole time staff of the said Association unless taken over with their consent by the Minister for the administration of the said Irish Trade Mark upon similar terms of employment as they at present enjoy shall be entitled to be compensated for the loss of their employment upon the like terms as those to which they would be entitled if they were members of the Civil Service.

I would like the Minister to explain to the House how he has endeavoured to meet the views of the Association in regard to the defence of the Irish Trade Mark. I am aware that a great part of our work is protecting the trade of this country and helping the interests of consumers from the use of misleading titles and trade marks which would represent goods manufactured outside the Saorstát as having been manufactured here. Under other provisions of the Bill that is provided against. As regards the power of the Ministry to take over the Irish Trade Mark without the amendment proposed by the Government that would be impossible, and therefore I am gratified that the Minister has given administrative power to acquire it if, at any future time, our funds are depleted to such an extent that we are not able to give adequate protection to the Irish Trade Mark in any part of the world.

I think the amendment more or less explains itself. It simply leaves it that the Government can take over the mark. If it be taken over the Government will have full power with regard to protection. One difficulty in this matter is that it is the Irish Trade Mark, and is used by certain North of Ireland firms. I am not sure how far the Government here could take on the defence of an Irish Trade Mark as used, say by Six-County firms, or take action on behalf of Six-County firms if the mark were being used in other parts of the world. There are other inherent difficulties and the question of its value would come up for consideration. The point I wanted to meet was that the actual design, this collar design, was such that the Minister for Agriculture might be able to use it if he thought fit on his national mark. But again we are going to be involved in difficulties with the Six-County holders and users of the Irish Trade Mark. However, we are leaving it here. It may, at any time, be taken over if it seems a right and proper thing to do. There is no decision made on that at the moment. It is a matter which will require long and detailed consideration, and all I could bind myself to do was to have consideration given to it and to permit the Government at some future date to avail of this mark.

Another power given to the Trade Mark Association is the privilege of registry in this country, so that in case of depletion of our funds the ownership of that Trade Mark could not pass to anyone else for fourteen years. That is the period, I understand, which can be registered for in this country. That is a concession which will be extremely useful for those users of the mark who at present export to foreign countries.

Amendment, by leave, withdrawn.
The following Government amendment was agreed to:—
Section 123. To add at the end of the section a new sub-section as follows:—
"(2) The proprietor of a mark registered under this section or of a mark originally registered in the Patent Office in London under Section 62 of the Trade Marks Act, 1905, and subsequently registered under Section 89 (which relates to the registration of trade marks registered in the Patent Office in London) of this Act in the register of trade marks in the Office, may assign such mark to the Minister and the Minister may take an assignment thereof, and on such assignment being made Section 121 (which relates to the registration of trade marks by Ministers) of this Act shall apply to such mark as fully as if the Minister had procured the registration thereof under the said Section 121."

Senator Dowdall asked me to move the following amendment:—

Section 154, sub-section (1). After the word "and" in line 38 to insert the words, "in case the author is a citizen of Saorstát Eireann, and desires to secure copyright in Saorstát Eireann, the work for which copyright is sought to be secured shall be printed in Saorstát Eireann, anything in this Act to the contrary notwithstanding; and"

It was fully debated before, so I shall withdraw it.

Amendment, by leave, withdrawn.
The following Government amendments were agreed to:—
9. —Section 154, sub-section (1). In the fourth line of amendment No. 18 inserted in Committee to delete the word "are" and to substitute therefor the words "were at the date of the making of the work."
10. —Section 154, sub-section (1). In the fourth line of amendment No. 18 inserted in Committee, after the words "citizens of" to insert the words "and resident in."

I move:—

Section 169, sub-section (2). After the word "within" in line 5 to insert the words "or import into."

It means that within this section a person will be entitled to make or import into the country genuine or authorised reproductions of works and the same fees will be paid. There is no piracy about it at all. It means that in the case of authorised productions of musical works such as gramophone records, etc., leave would be given to import these on the payment of stamp duties. This does not concern pirated works but authorised reproductions.

I second the amendment.

I think the Senator is under a misapprehension with regard to the whole matter of importation. There is another section which deals with it. The point about copyright in musical works is best explained in this way. The author has copyright in the actual musical air. There is also further copyright in gramophone reproductions. The original composer can control the reproduction in the first instance. He can refuse to have records made of the air, but if the law is that a right is given to any one person, on particular terms to reproduce, the same right must be given to all comers on the same terms. This deals with the particular limitation upon the acquiring of copyright by the owner of the air.

Sub-section 2 of Section 169 says:—

"It shall not be deemed to be an infringement of copyright in any musical work for any person to make within Saorstát Eireann records, perforated rolls, or other contrivances by means of which the work may be mechanically performed if such person proves—

(a) that such contrivances have previously been made by, or with the consent or acquiescence of, the owner of the copyright in the work, and has given certain notice."

All that is intended to be established is that any person within the Free State, on proving that he is merely taking to himself rights which have previously been granted by the owner of the copyright to somebody else, is kept outside infringement of copyright. A similar point about notice applies, but this section means merely that at the point where the first owner of the copyright has allowed records to be made he cannot prevent all and sundry records from being made on payment and acceding to the conditions, but the conditions are not to be given to one or two or three but must be assigned to all.

The point of importation is different. The Senator looks to it as if this prevented importation. It does not. Importation is always allowed, but at the importer's risk. If the Senator buys a copy of a book from a publisher in England and brings it in here, or buys several copies and sells them here, he does not protect himself against a penalty for infringement if there be infringement merely because he has paid someone from whom he believed he got copyright of the work. He imports at his own risk. The same thing applies to gramophone records. The fact that he is the importer does not bar an action in the court if there were infringement. The Senator thinks to prevent what there was no necessity to prevent. He thinks that because the words "to make within Saorstát Eireann" are there that it debars importation. Importation is possible under certain conditions, but is subject to that one fact that it is at the importer's risk.

The point I had in mind was that the original person who had the copyright might authorise persons to make reproductions on which the ordinary fees had been paid, and that persons in this country dealing in those things would be entitled to import into this country various reproductions.

CATHAOIRLEACH

There is, at present, nothing to prevent them.

If that is so there is no necessity for this amendment and I withdraw it.

Amendment, by leave, withdrawn.

On behalf of Senator Dowdall I move amendment Number 12:—

New Section. Before section 173 to insert a new section as follows:—

173.—(1) Any person may apply to the Minister for a licence to print and publish in Saorstát Eireann any book wherein copyright subsists and of which the author is a citizen of Saorstát Eireann or of a country with which no convention relating to copyright and binding on Saorstát Eireann exists, if at any time after publication and within the duration of the copyright the owner of the copyright fails—

(a) to print the said book or cause the same to be printed in Saorstát Eireann; or

(b) to supply by means of copies so printed the reasonable demands of the Saorstát Eireann market for such book,

and the Minister may grant such licence on such terms and subject to such conditions as he may think fit.

(2) Every licence granted under the provisions of this section shall be deemed to be a contract, on the terms and conditions embodied in such licence, between the owner of the copyright and the licensee and the licensee shall be entitled to the like remedies as in the case of a contract, and shall have the same power and right to take any action or any legal proceedings to prevent or restrain any infringement of copyright which affects the rights of such licensee or to recover compensation or damages for such infringement that the owner of the copyright would have for an infringement of his copyright, and the provisions of section 165 (relating to importation of copies) of this Act shall apply to the importation of copies of the book in respect of which the licence has been granted as if the licensee were owner of the copyright in the book.

(3) For the purposes of this section the word "book" shall include every volume, part or division of a volume, pamphlet, sheet of letterpress, sheet of music, map, chart, or plan separately published.

It was admitted on the last day by the Minister that this amendment was not on all fours with the one which had been withdrawn that day. The Minister said it conformed more nearly to the Canadian model than was the case of the other amendment. My own peculiar line of action in the debate was largely guided by the words of Senator Brown that Canada was distinctly outside the Berne Convention as regards copyright and printing in Canada. Since then one has an opportunity of looking into this matter and consulting the authorities. Copinger, on the question of copyright, definitely states that "Canada adhered to the Berne Convention and to the Protocol of 1914 on January the 1st, 1924." Copinger's book is the highest authority on copyright law. Furthermore, the Canadian Almanac for 1926, which is more or less the Whittaker of Canada, states that on the 1st of January, 1924, Canada's adherence to the revised Berne Convention became effective. That is the opinion of the Canadian Almanac, an authorised authority on this matter, and it gives an actual contradiction to the opinion on which we based our withdrawal of the particular clause on the last day. Whether or not it was a wise thing to have withdrawn our amendment on the last day, this particular amendment put in now simply asks to give people the licence to publish in the Saorstát any book wherein copyright exists.

CATHAOIRLEACH

Would not the effect upon the Convention be precisely the same?

I dare say it would, but considering the authorities which I have quoted, I urge that it will not place us outside the Convention. I am not giving my own opinion at all. I should not have the audacity to put my own opinion against that of learned lawyers, but it is the opinion of Copinger, and it is also the opinion of the "Canadian Almanac," that Canada is within the Berne Convention. That being so, I think this amendment might be accepted. It simply asks if the existing owner of the copyright does not wish to comply with the terms and have his work printed here that the Government should have power to give a licence to have such work printed here.

CATHAOIRLEACH

I know nothing about the law on the Convention, but it occurs to me that possibly what you have read is consistent. They brought themselves into the Convention, but they also have got themselves out of it by what they have done. Is not that the question? And I do not think those opinions you have quoted touch that at all.

They brought themselves in by acts similar to what we want to have done here.

Senator Bennett presses that this amendment is more nearly in accordance with the Canadian model, but the argument here was: Even if you got perfectly close to the Canadian model, we are definitely making a breach in regard to the Convention, and that eventually we would be put to a choice between the Convention and this amendment. The Senator quoted Copinger, but what Copinger said is that Canada joined the Berne Convention. So Canada did, and until the point is raised by someone who is hurt by this amendment, Canada will remain inside, but that does not mean that if the point was raised Canada would not be put to her election between remaining in or adopting a different position. Meantime, I have had an opportunity of fortifying myself with another opinion.

It was hinted on the last day that I had consulted and had taken the Attorney-General's opinion. I had not done that then, but I have done so since, and he is clear that any amendment of this kind of our copyright would have the effect of our having to choose between remaining in or being put outside. This amendment is rather nearer to the Canadian conditions. The principle is very much the same and, as the Chairman pointed out, the effect of being inside and being outside the Berne Convention is precisely the same. It is a matter of opinion but, fortified by the legal opinion that I have got, I say we would ultimately have to make our choice between the Convention and the printing requirements.

I am advised that as to the position in Canada the law as it now stands is this: That to secure copyright in Canada, citizens of Canada must print in Canada. And this is only a compromise, for up to the 1st of January, 1924, the Canadian law was the same as that of the United States of America; that is to say, that in order to secure copyright in Canada, citizens, not only of Canada, but of all countries, had to print in Canada. The effect of this was that Canada, like the United States of America, was not in line with the Berne Convention. By an amendment which came into force on the 1st of January, 1924, the Canadian Government restricted this printing condition to citizens of Canada, and this restriction brought them into harmony with the Berne Convention, which was the actual and only object of the amendment. This being the present state of the law of Canada in this matter and as it does not prevent Canada from remaining in the Berne Convention, a similar law could not possibly put the Saorstát out of the Convention. The amendment does not affect the rights of any member of the Convention outside the Saorstát. They will still have their full rights under the Convention; but citizens of the Saorstát to secure copyright in Saorstát must print in Saorstát, though they may publish wherever they like. When it comes to printing and publishing we find they are entirely different things, but we have dealt with all that before.

Under this amendment a citizen of Saorstát may send his manuscript to a publisher in London and have his work published there, but, as a rule, the great publishers in London are not printers. The publishers would simply send out the manuscript to a printer in Great Britain. All the amendment asks is that the work of printing should come to the Saorstát. That involves no hardship on Irish authors, as they can get their work printed as cheaply and as well in Ireland as elsewhere. And as they get their inspiration and material in Ireland it is most unfair that all the profit of producing their books should go to the foreigner while scores of Irish printers are walking our streets idle.

It should be made clear to the Seanad, before they come to any conclusion, that they will have to choose between this amendment and the Berne Convention. Now, beyond all doubt, this is in the form of the Canadian legislation at present, but equally, beyond all doubt, it is just as much a breach of the Convention as would be the direct printing amendment the other day, as in the conditions it would have the same effect. Now, that being so, it is simply a question of lawyers' opinion as to whether this does put Canada outside the Berne Convention and would put us outside the Convention. I express my own very settled opinion on the matter, and I am happy to say now that I am backed up by the opinion of the Attorney-General. The Seanad will have to choose between the opinion of the Attorney-General on this matter of importance and this amendment, and, therefore, I ask them to pause before they alter the decision they came to last week.

In the circumstances I ask leave to withdraw the amendment.

Amendment, by leave, withdrawn.
Government Amendment.—Section 179, sub-section (1). After the word "Dublin" in line 5 to insert the words "or of any of the respective authorities having control of the three constituent Colleges of the National University of Ireland."
Agreed to.

I would like to call the attention of the Seanad to an amendment passed on the last day on the motion of Senator Brown. Certain information has been since received with regard to the effect of that amendment. It was amendment No. 19 on the Order Paper, to Section 154, and read:

"Provided that such rights shall as regards translations into the Irish language cease to exist unless the author of the work or his legal representative shall have within a period of 10 years from the date of the first publication of the work published or caused to be published in Saorstát Eireann a translation of the work into the Irish language."

The effect of that was this, that if, say, within 10 years from the first publication no translation has been made, then without infringement of the copyright a translation could be made here into the Irish language. That seemed to be allowable for the reason that there were two revisions of the Berne Convention—one at Paris and one at Berlin. In the original Berne Convention there was a certain amount of talk as to whether there was to be any limitation of the author's right to copyright in translation. In other words, was the right of copyright subsisting for the lifetime of the author and 50 years thereafter also to apply to a translation of that work, or to the language of the work in which it was first produced, and the idea seemed that it should be all-round copyright in the most extensive way. It was discussed at Berne, and afterwards at Paris, and later on at Berlin, and the effect was that there was a limitation allowed. It had been found that four countries had, by domestic legislation, taken the right to themselves that if a work was not translated into their own language within 10 years, then translation might be made and there was no infringement of copyright. In the two sessions held there was some talk about it; eventually it was decided to adhere to the Berne Convention with reservations, and one of the allowed reservations was on this point of copyright. Consequently, various people concerned, including the Department of Education, stressed the importance of having the right to translate modern authors into Irish if the translation was not made in 10 years by the authors themselves. An amendment was considered and passed here. In addition to the Berne Convention and Union there is also the Commonwealth Union, of which we are members, or are likely to be members.

Our legislation up to that point on the translation, although straining something of the terms of the Commonwealth Union, was not regarded as putting us outside that Union. The translation point, we are now advised, will put us outside the Commonwealth Union. The advantages or disadvantages likely to accrue on our being outside the Union are not very clear to me. I see this advantage, that by being in the Commonwealth Union the moment our legislation is passed we can assure Irish authors that automatically they get certain rights in the countries forming the Commonwealth Union. If we leave that Union, instead of getting these rights automatically, we must make mutual agreements with each of the particular countries. But we are bound to get the terms of the Berne Convention. Inasmuch as they are members of the wider Union—the Berne Union—we must get the Berne terms from them.

The objection and the only disadvantage that I can see likely to follow in being outside the Commonwealth is, that instead of having a block of countries with which we have reciprocal arrangements immediately, we would otherwise have to get these by a separate understanding with each. That, however, does not seem to matter very much, but there will be a Conference held at Rome this year to consider the whole Berne Convention over again. Italy has given notice that she intends to move that States will no longer have a right to adhere to the reservations of the Berne Convention. Italy is one of the countries which is adhering to the reservations with regard to translation, and that fact, with other facts, would seem to indicate that this point with regard to translation will disappear. If Italy is making that move, Senators may have themselves in this position that we may pass an Act here now embodying this particular clause with regard to the ten years translation period, and after some time we may have to move to take that very clause from the Act.

I would like to suggest to the Senate that in view of the fact that this Conference is to be held in Rome this year, and that that clause with regard to translations could not be availed of by the Department of Education or anybody else for a period of four-and-a-half years to come, it cannot operate until 10 years after December, 1921, and in view of the fact that no benefit can accrue until December 1931, I think it would be better that we should omit the provision. I think we will find it is likely that the Rome Conference will decide that States will no longer have a right to adhere to the reservations of the Berne Convention. Of course we could snap our fingers at the Convention and put ourselves in the position of the United States. I do not know whether under your Standing Orders it would be possible to move now to delete the amendment passed last week, or whether notice would be given to move at the next sitting the deletion of the particular section put in last week?

CATHAOIRLEACH

I think it would be wiser that notice be given for the next meeting.

I give notice to delete the amendment put in with regard to translation last week.

Ordered: That the Fourth Stage be resumed on Wednesday, 30th March.
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