Hak Kekekayaan Intelektual Sebagai Objek Jaminan Fidusia
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Hak Kekekayaan Intelektual
Sebagai Objek Jaminan Fidusia
Candra N Darusman
Creative Consultant
A little bit of Reflection* 2
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
Monetization 3
“Monetization” is value extraction; monetization
of IP is the process of extracting value from
intellectual property.
Intellectual property is one component of
“intangible assets”
HKI (IPR): Hak Kekayaan Intelektual 4
(Intellectual Property Rights)
Copyright & Related
Industrial Property Rights
Patent Copyright
Trademark
Geographical Related Rights
Indications Performer
Industrial Design Producer
Trade Secrets Broadcaster
Integrated Circuit
5
Types of works protected by 5
copyright
Paintings/drawings/ Audiovisual works
scetches Database
Music
Computer program
Books/comics/print (software)
Pamphlets
Lectures/addresses/
Sculpture
sermons
Works of architecture
Applied arts Dramatic or dramatico-
musical works
Photography
Maps/plans Choreography
Monetization of IP 6 Transfer Licensing Franchising Collateralization; Securitization
Monetizing IP* 7
IBM’s Licensing
Revenue:
USD 2 Billion Annually
IP can be
• Sold
• Licensed
• Used as collateral or security for debt finance or
equity from
Family & Business
Friends Banks Angels
Government
*Norminsham Venture Grants
Capitalists
Collateralization of IP 8
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.
Success IP financing deals 9
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)
10
How do you monetize IPR 10
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?Basics 11
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 partyBasic elements 12
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
Accounting13
Marketing duties
Termination and recapture of rights (IP has a limited
validity protection)
Representations and warranties
Confidentiality
Escrow provisions
Bankruptcy
Successors and assigns14 Merger Duties after license expiration Ownership agreements Assignments Security interests Compulsory license
15
You need to know the 15
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 streamValuation Methods 16
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
depreciation17
17
Talking about the ‘value of copyright’
Music (melody, music sheets, handwritten lyrics )
Comics (collectors` item)
Object of art (painting, sculpture)Valuation Methods 18
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
depreciationMusic 19
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.comComics 20
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 24/2/1021
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 TimesPainting 22
23
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 $69 million in ten
minutes
Source: IHT 4/11/10Picture or sculpture? 24 Giacometti’s work fetched US$.....(Ps65 million) Originally priced between 12-18 million pound sterling Auctioned at Sotheby Source: IHT 3/2/10
Closer - back home 25
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, 12/11/10Valuation Methods 26
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
depreciationThe Bowie Bond 27
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.'28
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
companiesThe music bond 29
Examples of securitizing copyright
Music
David Bowie’s song albums
Already released
Still have future revenue stream30
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.31
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.32
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 negotiations33
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-$100m34
Overview of the Different Methods
Cost-based Income-based
Market-based35
How Choosing Valuation Methods
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 assets36
Suggestions….
o Combine several methods to get the
envelope of values for each IP asset
o Valuation should be done on a regular
basisCase Study: 37
Collateralizing Copyright
Example
Object of art
Photography: Annie Leibowitz photographs and negatives38
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..39
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
Sotheby40
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’41 celebrities (Louis Vuitton bag adv.)
42 celebrities
43 celebrities
44 objects
45 moments
46 Annie Leibowitz
Trademarks 47
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.48
IP Based Securitized Loans –49
Success Stories
Dreamworks $1b
BCBG
Guess $75m
$53 m
Athlete’s Gloria Bill Blass
Foot Vanderbilt
$30m $24m
$33mIP Collateralization 50
BCBG Max Azria Group -manufacturer and retailer
of apparel, footwear and accessories
$12 million of the $53 million dollar loan
transaction was supported by a guarantee issued
by a credit enhancement firm based on the
collateralizationof BCBG’s IPIssues 51 Uncertainty surrounding intangible assets Valuation (implicit & explicit value)
Licensing terms 52 Brand Channels Exclusivity Minimum guaranteed royalty Royalty rate Minimum sales target Sell off period Term Renewal period Territory
Securitisizing of 53
trademarks
Valuing a patent portfolio or the trademarks for a
brand, is challenging because of the inherent
uniqueness of IAs and concerns about
transferability from the original company.Creative Economy In Thailand 54
A. Restructuring the Agricultural Sector
Supporting R&D in agriculture to enable Thailand to achieve its
“kitchen of the world” mission
Promoting value creation of non-food products in order to
expand Thailand’s export share in the international market
Utilising “local wisdom” and “Thai-ness” to generate “value
creation” in products.
Creating brands and using marketing strategy to increase
sales
B. Restructuring the Manufacturing Sector
Setting up a road map for “patent management”
Setting up an integrated national R&D system to promote
innovation creation
Building and/or supporting entrepreneurs to create innovationBreakthrough
55
► To promote OTOP (One Tambon - One Product), a
product mark as stamped by the provincial
administration body will be instantly granted a loan of
up to Baht 0.5 million (US$ 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.Economic Wealth
56
Job Entrepreneur Value
creation build-up earning
Realizing the added value in assets
PopulationTransform of IPR into Equity 57
The 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%China 58
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)Singapore 59
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-loansSingapore 60
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.Malaysia 61
IPVM Core Values 62
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 dynamicIPVM 63
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 IPIssues and perspectives 64 Yes, IP works can be securitized and collateralized Upper market Famous artists/inventors Risky
UN Guide 65
66
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, ItalyYou can also read
