Hak Kekekayaan Intelektual Sebagai Objek Jaminan...
Transcript of Hak Kekekayaan Intelektual Sebagai Objek Jaminan...
Hak Kekekayaan Intelektual
Sebagai Objek Jaminan Fidusia
Candra N Darusman
Creative Consultant
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A little bit of Reflection*
All enterprises create economic value by
leveraging assets to finance or capitalize
operations and to fund future needs for capital.
During the last 25 years, the most valuable assets
have shifted from tangible assets to
predominantly intangible, knowledge-based,
intellectual capital assets.
*Mancini
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Monetization
“Monetization” is value extraction; monetization
of IP is the process of extracting value from
intellectual property.
Intellectual property is one component of
“intangible assets”
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HKI (IPR): Hak Kekayaan Intelektual
(Intellectual Property Rights)
Industrial Property
Patent
Trademark
Geographical
Indications
Industrial Design
Trade Secrets
Integrated Circuit
Copyright & Related
Rights
Copyright
Related Rights
Performer
Producer
Broadcaster
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Types of works protected by
copyright
Paintings/drawings/
scetches
Music
Books/comics/print
Pamphlets
Sculpture
Works of architecture
Applied arts
Photography
Maps/plans
Audiovisual works
Database
Computer program
(software)
Lectures/addresses/
sermons
Dramatic or dramatico-
musical works
Choreography
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Monetization of IP
Transfer
Licensing
Franchising
Collateralization; Securitization
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Monetizing IP*
IP can be
• Sold
• Licensed
• Used as collateral or security for debt finance or
equity from
*Norminsham
Family & Friends
BanksBusiness
Angels
VentureCapitalists
Government Grants
IBM’s Licensing
Revenue:
USD 2 Billion Annually
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Collateralization of IP
Assets
A means of raising capital
Leverage on the asset value of patents,
trademarks, copyrights, trade secrets and know-
how.
Collateralization allows access to capital without
the complexity often inherent in securitization or
other means of monetizing IP assets.
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Success IP financing deals
1884, Lewis Waterman, meminjam US$5,000,
dengan ‘jaminan’ pen patent (pena tinta)
1939, Chester Carlson, inventor Xenography,
mendapat investor (Haloid Company, XEROX)
karena patentnya
Sekitar 2005, pemilik restoran bebek panggang
menjual restorannya senilai $1,000,000 – berikut
resepnya (recipe, trade secret)
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How do you monetize IPR
Can the owner monetize her or his work(s) without selling
them?
How different is it compared to selling IP works?
How do we value the work before negotiations?
Who would want to offer to lend money against
securitization of IP works?
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Basics
HKI /IPR is a moveable – intangible asset
Transfer
Legal right(s) being assigned to another party
License
Legal right(s) not transferred but given permission to use by another party
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Basic elements
Tips before entering into an IP financing scheme:
Due diligence. To check who the right owner is and
terms are and parties to the license
Define the IP/CR work and rights subject to the
license
Territory of license
Term of license
Exclusivity
Payment
Accounting
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Marketing duties
Termination and recapture of rights (IP has a limited
validity protection)
Representations and warranties
Confidentiality
Escrow provisions
Bankruptcy
Successors and assigns
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Merger
Duties after license expiration
Ownership agreements
Assignments
Security interests
Compulsory license
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You need to know the
price factor
(Value)
Market value of a creative work
Popularity of the artist
Past revenue stream
Estimated auction price
Historical value (sentimental value)
Subjectivity
Future revenue stream
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Valuation Methods
Market approach, which requires comparable
market transactions
Income approach, which attempts to determine
the income of the assets, considering both
expenses for utilizing the assets and the revenue
generated.
Cost approach, which assumes the expense for
replacing or reproducing the entity and
depreciation
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Talking about the ‘value of copyright’
Music (melody, music sheets, handwritten lyrics )
Comics (collectors` item)
Object of art (painting, sculpture)
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Valuation Methods
Market approach, which requires comparable
market transactions
Income approach, which attempts to determine
the income of the assets, considering both
expenses for utilizing the assets and the revenue
generated.
Cost approach, which assumes the expense for
replacing or reproducing the entity and
depreciation
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19Music
John Lennon’s:
“A Day In The Life”
Originally priced at US$800.000
Sold for US$1.2million at a New York auction house
‘All You Need Is Love’
(Beatles) for US$1.25 million
Source: Fox.com
20Comics
A rare copy of a comic book featuring Superman
1938 edition
Original price was 10 US cents
Ushering people into the age of
superheroes
ComicConnect.com and Metropolis Collectibles dealership brokered the sale
Anonymous seller and buyer
Source: IHT 24/2/10
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Roy Lichtenstein
Pop artist’s comic-strip
Sold for US$42.6 million at Christie’s International, New York
Once labelled ‘the worst artist in the US’ in Life Magazine
Beat Andy Warhol’s Campbell’s vegetable soup (US$23.9 million)
Source: The Strait Times
22Painting
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La Belle Romaine By Amedeo Modligiani (1884-1920)
Painted in 1917
Auctioned at Sotheby
Anonymous buyer and seller
Originally priced at US $40 million
Sold at US $69 million in ten minutes
Source: IHT 4/11/10
24Picture or sculpture?
Giacometti’s work fetched US$.....(Ps65 million)
Originally priced between 12-18 million pound sterling
Auctioned at Sotheby Source: IHT 3/2/10
25Closer - back home
Norberto Roldan, the Philippines
Contemporary art shown at the Philippine Art Trek IV exhibitions in various galleries in Singapore
Part of a group of 46 contemporary Filipino artists
Price – five digits
Source: Strait Times, 12/11/10
Valuation Methods
Market approach, which requires comparable
market transactions
Income approach, which attempts to determine
the income of the assets, considering both
expenses for utilizing the assets and the revenue
generated.
Cost approach, which assumes the expense for
replacing or reproducing the entity and
depreciation
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The Bowie Bond
In 1997, pop star David Bowie bundled together
the royalties of a music catalogue of his pre-1990
work to raise $55 million in capital. It became
known as the 'Bowie Bond.'
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Securitizing Copyright
Using IP asset to issue (sell) a bond. If you buy a bond, you
lend money to the buyer; the buyer of your bond will repay
the principal and give interest periodically.
Bonds are issued by Governments as well as private capital
companies
29The music bond
Examples of securitizing copyright
Music
David Bowie’s song albums
Already released
Still have future revenue stream
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In 1997, David Bowie issued 10-year asset-backed bonds on the
basis of future royalties on publishing rights and master
recordings from 25 pre-recorded albums (before 1990 - 287
songs);
Bought by Prudential Insurance Company for the amount of
US$55 million
The purchaser of the bonds acquired the right to receive future
royalties from Bowie’s album until the principal plus 8% annual
interest is repaid.
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Nickolas Ashford and Valerie Simpson*, songwriters and producers used the copyright on 247 of their songs as assets to back bonds, raising US$25 million
The deals were made by a New York investment banking: David Pullman of Pullman Group; other cases:
Dusty Springfield, James Brown, the Isley Brothers, estate of Marvin Gaye, Motown songwriting trio Edward Holland, Brian Holland and Lamont Dozzier** (US$30 million)
Rod Stewart did a $15.4m bond deal with Nomura Capital while Dusty Springfield received $10m.
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Pullman Group charged 10% of the transactions
Iron Maiden became the first heavy-metal band to sell
bonds when it arranged a $30m deal in 1999. The deal was
arranged by the law firm Thelen Reid & Priest. Michael Elkin,
chair of the firm's Entertainment and Media Practice Group,
handled the negotiations
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Duane Hitchings has written songs that over the years have
been hits for artists including Rod Stewart, Heart, Kim Carnes,
Pat Benatar, Eddie Money, Tupac Shakur, Notorious B.I.G.,
Donny Osmond and Steve Perry. In November 1998, it was
announced that Hitchings' catalogue would be securitised
by David Pullman. Estimates of the value of the deal ranged
widely from $25-$100m
Overview of the Different Methods
Cost-based
Market-based
Income-based
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The choice should be influenced by:
o The kind of industry
o The degree of maturity of the technology
o The degree of risk
o The IP status
o Available information / price of comparable assets
How Choosing Valuation Methods
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o Combine several methods to get the envelope of values for each IP asset
o Valuation should be done on a regular basis
Suggestions….
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37Case Study:
Collateralizing Copyright Example
Object of art
Photography: Annie Leibowitz photographs and negatives
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Art Capital Company extended a loan of US$15.5 million as against collateralizing of Ms. Annie Leibowitz’s houses (property) and works of photograph;
Value of property approximately US$15 million; photographs at US$35 million; total value estimated US$50 million;
Value of collateral was more than 3 times higher than the loan..
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Interest 16% per annum
All copyright transferred in case of default
Art Capital Group (New York-based private investment company)
Other companies offering loan in exchange of objects of arts:
Art Finance Partners;
Christie’s
Sotheby
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US$500.000 loans
Charge interest up to 15% per annum
Estimate value of 40-50% of low-end of art’s worth auction
price
‘little known corner of art business, lightly regulated, highly
litigious’
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celebrities (Louis Vuitton bag adv.)
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celebrities
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celebrities
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objects
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moments
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Annie Leibowitz
Trademarks
A distinctive name, symbol, motto, or design that
legally identifies a company or its produces and
services, and sometimes prevents others from
using identical or similar marks.
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Dreamworks $1b
Guess $75m
Athlete’s Foot
$33m
Gloria Vanderbilt
$30m
BCBG
$53 m
Bill Blass
$24m
IP Based Securitized Loans –
Success Stories49
IP Collateralization
BCBG Max Azria Group -manufacturer and retailer
of apparel, footwear and accessories
$12 million of the $53 million dollar loan
transaction was supported by a guarantee issued
by a credit enhancement firm based on the
collateralizationof BCBG’s IP
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Issues
Uncertainty surrounding intangible assets
Valuation (implicit & explicit value)
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Licensing terms
Brand
Channels
Exclusivity
Minimum guaranteed royalty
Royalty rate
Minimum sales target
Sell off period
Term
Renewal period
Territory
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Securitisizing of
trademarks
Valuing a patent portfolio or the trademarks for a
brand, is challenging because of the inherent
uniqueness of IAs and concerns about
transferability from the original company.
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Creative Economy In Thailand
A. Restructuring the Agricultural Sector
Supporting R&D in agriculture to enable Thailand to achieve its “kitchen of the world” mission
Promoting value creation of non-food products in order to expand Thailand’s export share in the international market
Utilising “local wisdom” and “Thai-ness” to generate “value creation” in products.
Creating brands and using marketing strategy to increase sales
B. Restructuring the Manufacturing Sector
Setting up a road map for “patent management”
Setting up an integrated national R&D system to promote innovation creation
Building and/or supporting entrepreneurs to create innovation
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► To promote OTOP (One Tambon - One Product), a product mark as stamped by the provincial administration body will be instantly granted a loan of up to Baht 0.5 million (US$ 16,667) limit at lenient interest rate of MLR, compared to MLR + 4% in general case. To the borrowing of more than US$ 16,667, project financing will be treated in an ordinary case.
► This is the previous administration policy set to help easing SMEs with working capital and/or project loan. Most of them are involved in handicrafts, local food processing as well as herbal medication.
55Breakthrough
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Job
creationEntrepreneur
build-up
Value
earning
Population
Realizing the added value in assets
Economic Wealth
Transform of IPR into EquityThe project was initiated in 2004 under Thaksin administration,
enabling people who own their IPRs to get access to the capital fund. SME Bank had contributed much to as many as 100 IP clients during 2004 – 2005 before the project was politically stalled by Coup D'Etat.
2004 - 2005 (totalled $ 2.3 mil – $ 2.6 mil)
Trade Mark 90%
Copyright 5%
Patent & Petty Patent 5%
N.B. NPL of IP was registered in a range of 10%-15%
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China
IP pledge financing (16 kota di tahun 2010)
24 bank swasta terlibat
16 lembaga penjamin (terdaftar di kantor HKI
China)
Sudah 1400 deal dengan jaminan patent
1869 merek
146 hak cipta (773 diantaranya software)
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Singapore
The three local banks — DBS Bank, Oversea-
Chinese Banking Corp and United Overseas Bank
— are participating in the scheme. Valuation of
the IP assets will be done by three appointed
valuers: American Appraisal Singapore, Consor
Intellectual Asset Management and Deloitte &
Touche Financial Advisory Services.Read more at
https://www.todayonline.com/business/singapore
-firms-can-now-use-ip-assets-collateral-bank-loans
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Singapore
2014 dimulai, hingga 2018 (S$100 juta)
Partisipasi pemerintah SG sebesar >50% dalam
pemberian pinjman dan sisanya bank swasta
2016 shoemaker MASAI mendapoatkan loan
AFC Merchant Bank, to the scheme alongside the
DBS Bank, United Overseas Bank and Oversea-
Chinese Banking Corporation, it said.
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Malaysia 61
IPVM Core Values
Valuation method acceptable to financial
institutions
Valuation approach which is easy to implement
and consistent with international standards and
cost effective in relation to the loan amount
Valuation model which is flexible and dynamic
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IPVM
Model intended for use by lenders in the financial
sector
IP assets must be pledged as part of group of
connected assets, which could tangible and
intangible assets
Limited to SMEs engaged in utilization of IP
Preferred model is Income Approach on RFR basis
(Relief-from–royalty) the future hypothetical royalty
payments the business is relieved from paying
because it owns the IP
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Issues and perspectives
Yes, IP works can be securitized and collateralized
Upper market
Famous artists/inventors
Risky
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UN Guide 65
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Sources:
Information sourced from Roy Davies, http://projects.exeter.ac.uk/RDavies
WIPO Magazine 5/2008
WIPO Guide on the Licensing of Copyright and Related Rights, Chapter 1, by I. Fred Koenigsberg
Professor Norminsham, UTIM, Malaysia, WIPO regional seminar in Singapore
Chalee Mahattanakul, Deputy VP, SME Bank, Thailand
Maria Augusta Mancini, META Group, Italy