Monday, 24 August 2015

Draft Copyright Amendment Bill the subject of today's #SandtonDiscussion

This morning's #SandtonDiscussion hosted by Adams & Adams takes a look at the progress of commentary on the Draft Copyright Amendment Bill first alerted to readers by Jeremy Speres (Spoor & Fisher) here at the end of July. There seems to be a gathering momentum of opinions and views around this piece of potential legislation. Afro Leo is also keenly aware, after trying to meet with him this week, that MacDonald Netshitenzhe's department has a full diary collating the commentary from a variety of stakeholders.

The #SandtonDiscussion will start as usual at 9am on twitter. See you there!

Links to random selected commentary thusfar:

Thursday, 20 August 2015

10 things you need to know about protecting street art

Iman Rappetti
Who owns street art and graffiti or put more clearly who owns the intellectual property rights in street art? The vibrant Iman Rappetti covered a story recently involving a complaint by local street artist and actor Vuyisa "Breeze" Yoko stating that his street work had been photographed and used commercially without compensation, and that the law in this area (as opposed to the vibrant art) was rather grey. Iman then very kindly hosted yours truly on her show yesterday morning on PowerFM to chat about the position. Here is this gist from the clip.

Under South African copyright laws it works like this:

1. is the street work eligible for copyright?

Well, yes if it is an original artistic work reduced to a material form. It needs to be original in the sense that it is the work of the artist's own skill labour and endeavours. In most cases, I would think that street art would qualify.

2. the law is not particularly discerning

The art work does not need to be particularly artistic, creative or even appealing.

3. the law is not xenophobic

Typically only works which are created by persons who are citizens of, domiciled or resident in South Africa or first published in South Africa will qualify for protection but for artistic works incorporated in a building (which would, in my opinion, include street art) the effect of the law is that even non residents or tourists on a creative frolic, are not excluded from qualifying for protection.

Source: 3D Street Art Advertising
4. the artist need not even have a name

The law recognises both anonymous and pseudonymous works which means that even if Afro Leo was a street artist (as far fetched as that might be), the work would qualify for protection.

5. the law of copyright is neutral

This, in the sense that, it is recognised that a work eligible for copyright may also infringe another's work or another's rights and yet still be capable of protection eg an unauthorised photograph of a painting or a photograph that infringes a person's right to privacy. I mention this because in some cases the street artist may well be guilty of say trespassing or vandalism. This should, in my opinion, should not materially affect, in most situations, whether copyright exists or even if it is enforceable.

 6. to right to copyright is a positive right

The right to copyright bestows on the owner of the right (the creator, if not employed or, in some cases, commissioned) the exclusive right to reproduce or adapt the work ie including the right to stop others from doing so. The remedies for copyright infringement include rights to a reasonable royalty (and in some cases penalty damages), costs of suit and delivery up of infringing materials.

7. there are certain exceptions

Although the right also includes the exclusive right to use the work in a TV program or film because the street art is likely to be in a public place, the law generally allows it to be reproduced in television programs or films.This is also the case where it is clearly background material or incidental.

Example: reproducing street art within the exceptions
(pic courtesy of ENCA)
Other exceptions allow this blog , for example, to reproduce the work for criticism, reporting on current events or review or teaching, or for it to be for private use eg a tourist's personal keepsake or if it was reproduced for purposes of judicial proceedings. In these circumstances, reproduction is generally legal.

8. rights in copyright are different from rights in the physical property

It is important that the street artist will own the copyright but not necessarily the artwork itself. There is a distinction here between the physical property upon which the artwork is displayed and the right in the copyright, as described.

9. the artist also has moral rights

These are rights which the artist has to protect against the distortion of the work and also, the right to be attributed as author of the work. These rights are quite powerful and are there to protect the reputation of the artist.

10. the practicalities of protecting street art

Despite the obvious protection available to street artists, most artists operate in a culture of anonymity where it would almost be uncool to be seen to be using formal methods to protect their work, and in many instances the process of doing so may risk exposing them publically or expose them to claims of trespassing or even vandalism. Though not all street art is created in these conditions, there is also a perception (rightly in some cases) that it is too expensive to litigate and a dearth of information on what to do. Here are a few tips:

a. once the street work is complete, take a picture of it and email it to yourself or keep it in a file with a date stamp. these steps will help prove copyright ownership.
b. if you notice that your work is being misused eg by a corporate, approach an attorney and make it known to the corporate through the attorney, that you are aware of your rights and of the infringement.
c. consider using the threat of litigation or of public disclosure to obtain a favorable settlement.
d. if necessary litigate but speak to your attorney about costs first as well as the likely damages that may be awarded.

You can catch this type of conversation and more on Iman Rappetti's Power Talk show at 10 every Wednesday where she hosts a legal insert.

Friday, 14 August 2015

Aaron Wood guests on #SandtonDiscussion

Monday's #SandtonDiscussion hosted at Adams & Adams will cover the tricky issue of copyright ownership over creations developed by others for you and paid for by you. This happens frequently when houses are built, logos are designed, websites and apps are created and when you commission that family portrait. Who owns the copyright in these commissioned works?

Joining us will be none other than Aaron Wood (Swindell Pearson), the trade mark and design attorney responsible for Europe's most recent decision in Atelier v Kilnworx (Atelier Eighty Two Limited v Kilnworx Climbing Centre CIC & Others [2015] EWHC 2291 (IPEC)) involving a logo. The judge in that case came to the conclusion that the commissioner was entitled to call for the assignment of the copyright in the logo.

Aaron will provide us with insight into the incremental bits that evolved during cross examination (and are not necessarily in the written decision) that lead to the conclusion, and whether those circumstances could give rise to similar decisions for other commissioned works. He will also explain how discovery became an issue in the case and, really what everyone is dying to know, some insight into what it cost.

The discussion will take place at the usual time 9AM CAT and you can join us on twitter using #sandtondiscussion. If you feel you want to listen in, please email us here so that we can see if we can set a conference call.

For those of you who do not know, the #SandtonDiscussion arose from a weakly training session organised by Lita Miti-Qamata "we just wanted to make it more interesting and the group thought that twitter seemed a novel and safe way to do so. Three month's down the line we have had engagement from over 20 people from different parts of the world giving greater depth to the session. And it's fun!"

Lita is shortly going on maternity leave and in her stead Reinhardt Biermann has stepped in to arrange the weekly session that sees topics circulated and lead by different members of the group. As usual Afro-IP will help cover it on the blog and on twitter. Thanks too, to Adams & Adams for hosting the discussion.

SA Copyright Amendment Bill - comments & consultations

As reported by Jeremy Speres (here) South Africa's Copyright Amendment Bill, 2015 has been published for public comment. The Department of Trade and Industry (DTI) has lined up several stakeholder consultations, one of which was held on 13 August 2015. The consultation process is intended to culminate in a Copyright Amendment Bill Conference on 27 August 2015.

Stakeholders are also running with several initiatives to feed into the consultations. For instance, six university and civil society groups* hosted a meeting on Tuesday 11 August with DTI and Department of Arts and Culture (DAC) officials and other stakeholders in Pretoria on the Bill.  The well- attended meeting discussed the majority of the proposed reforms [see the agenda here]. Background information on the meeting is available  here. For some reports on the meeting see here and here. One of the outcomes of the meeting will be a series of written comments which will be submitted by stakeholders to the DTI on the Bill. These will be archived on Afro-IP as they become publicly available.
Workshop on Internet Rights, Cultural Development and Balancing
Features in South African Copyright Reform. Photo credit: Theresa Hume

One aspect that immediately caught my attention on a first reading of the Bill is the need to carefully integrate the Bill's proposals with the amendments introduced by the IP Laws Amendment Act (IPLAA) of 2013. These proposals are not yet in force but are expected to do so in the short to medium term. For the most part, the drafters of the Bill have kept the IPLAA in mind but some slippage is evident here and there. For instance, both the Bill and the IPLAA introduce a section 39A which covers different substantive areas. Another example is the Bill's introduction of a new definition of reproduction which completely overlooks the IPLAA's amendment. This evolution of the definition has proceeded as follows:
1) Copyright Act, 1978 (current provision): "reproduction", in relation to-
(a) a literary or musical work or a broadcast, includes a reproduction in the form of a record or a cinematograph film;
(b) an artistic work, includes a version produced by converting the work into a three-dimensional form or, if it is in three dimensions, by converting it into a two-dimensional form;
(c) any work, includes a reproduction made from a reproduction of that work, means a copy made of a fixation or audio-visual fixation of a performance; and references to "reproduce" and "reproducing" shall be construed accordingly;

2) IPLAA, 2013: "reproduction" in relation to -
(a) a literary or musical work or a broadcast or a traditional work, includes a reproduction in the form of a record or a cinematograph film;
(b) an artistic work or a traditional work, includes a version produced by converting the work into a three-dimensional form or, if it is three-dimensions, by converting it into a two-dimensional form; and
(c) any work, includes a reproduction made from a reproduction of that work, means a copy made of a fixation or audio-visual fixation of a performance; and references to "reproduce" and "reproducing" shall be construed accordingly;

3) Bill, 2015: “reproduction" means a copy made of a fixation or audio-visual fixation of a performance.

If the Bill is enacted in its current form and comes into force after the IPLAA,  it will raise the question of whether it repeals the IPLAA amendments by implication (on which see Shozi v Minister of Justice, Kwazulu 1992 SA 338 (N)). If that is the case, then a crucial portion of the IPLAA's intended framework will be unraveled. As the IPLAA itself came under a lot of criticism, such unraveling may be welcome in some quarters. It is clear that the Bill is a work in progress, and it is hoped that as it is refined, issues like these, and those identified by other commentators/stakeholders, will be resolved. Judging by the robust and constructive engagement at the meeting, the public consultation process will provide the DTI with ample recommendations to enhance the Bill.


* University of Cape Town Intellectual Property Unit, the University of South Africa Intellectual Property Flagship, the University of the Witwatersand Library, the American University Washington College of Law Program on Information Justice and Intellectual Property, Creative Commons South Africa, and the Cultural Industries Legal and Advisory Centre.

Monday, 10 August 2015

#SandtonDiscussion tomorrow Tuesday 9am CAT

Coverage of #sandtondiscussion back tomorrow 9am CAT while everyone celebrates national Women's Day in South Africa.

Friday, 7 August 2015

Algeria commits to Madrid Protocol

Afro Leo has just heard from his friends at the World Intellectual Property Organization (WIPO) that trade mark topics have been very much in the minds of the Mediterranean-facing Algerians. According to Madrid (Marks) Notification No. 206: Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, the Government of the People’s Democratic Republic of Algeria has now deposited its instrument of accession to the Madrid Protocol ("Relating to the Madrid Agreement Concerning the International Registration of Marks"), with the qualification that
"in accordance with Article 5(2)(d) of the Madrid Protocol (1989), under Article 5(2)(d) of the Protocol, the time limit of one year to exercise the right to notify a refusal of protection referred to in Article 5(2)(d) thereof is replaced by 18 months and under Article 5(2)(d) of the said Protocol, when a refusal of protection may result from an opposition to the granting of protection, such refusal may be notified to the International Bureau after the expiry of the 18-month time limit".
The Madrid Protocol will enter into force with respect to Algeria on 31 October 2015.

An IP First For Scotch Whisky in Botswana

"Whiskyhogmanay2010" by Guinnog
Afro-IP has received, with thanks, the following email from Lindesay Lowe of the Scotch Whisky Association:
"I thought that your readers might be interested to know that last week the Registrar of Marks, Patents and Designs issued a certificate recognising Scotch Whisky as a Geographical Indication (GI) of Origin in Botswana. The event was notable because it was the first GI registered in Botswana, and it was the first time that Scotch Whisky has been registered as a GI in the African continent.
Scotch Whisky has been made in Scotland for over 500 years and it has developed from a cottage industry created by small farmers in order to use up their leftover grain, to a US$6 billion per annum export industry, making up around 80% of Scotland’s food and drink exports. Increasingly, it is becoming the drink of choice for the emerging middle classes in many African countries and although it is a relatively small market, sales of Scotch to Botswana grew by 163% in 2013.
All Scotch Whisky must be made in Scotland in accordance with a strict legal definition set out in UK law which requires, amongst other things, that it be aged for at least three years in oak barrels. Unfortunately, its success has led to imitations and the Scotch Whisky Association has been tasked by its distilling members to ensure legal protection for their spirit across the world and to take enforcement action against counterfeiters.
Part X of the Botswana Industrial Property Act of 2010, created a system for the protection of GIs in the country. The procedure is relatively straightforward in that a written request for registration must be submitted to the Registrar containing a specification which sets out i) the name of the product that is to be protected, ii) a description of the product, including its raw materials and principal physical, chemical , microbiological or organoleptic characteristics, iii) the area from which it originates, iv) evidence that it is produced there, v) a description of the production method, vi) details of the link between the quality or characteristics of the product and its geographical  origin (I understand that this can include natural factors such as climate, and human factors such as traditional skills developed in the area of production), vii) the name and address of the authority  responsible for certifying  compliance with the specification and viii) any other information subsequently prescribed by regulation. Applications do not appear to be limited to food and drink, and there seems no reason why registration cannot be granted for other traditional products such as, for example, textiles. The Act does not specify who may make the application but in line with international practice, I expect that it would have to be a producers’ association rather than an individual trader.
Once the application has been filed, the Registrar reviews it and if he is satisfied that it meets the necessary requirements, the application is advertised in the Trade Marks Patent and Industrial Designs Official Journal. A period is allowed to enable an interested party to object (in our case it was three months). If there is no objection, or if an objection is rejected, the application is then granted. We found the whole experience to be straightforward, transparent and relatively inexpensive and it took approximately 15 months from start to finish. I think the process was slightly more complicated because it was the first one: for example there was a delay while the Registrar decided what the GI certificate should look like, but presumably subsequent applications will be quicker.

 GI owners have a right to prohibit others from using the GI and have a right to take legal action against infringers. Whether we will need to take proceedings in Botswana remains to be seen, but the mere act of registration has attracted a great deal of publicity both here in the UK and in Botswana which not only helps promote the product but also (hopefully) deters those thinking about faking it.
I must confess that my knowledge of Botswana is limited to the Scottish author Alexander McCall-Smith’s tales of Botswana’s No1 Ladies Detective Agency but I believe that the country is famed for the quality of its produce, particularly beef. I shall be waiting in hope to see some local products taking the same path to recognition as a GI."
Afro Leo agrees, wouldn't it be great to see more protection for African GIs protecting innovation characterised by countries of the continent to protect locals, just like the SWA are doing for their whisky producers? For more on GIs on this blog, click here

Thursday, 6 August 2015

DotConnectAfrica gTLD application process moves on

From the AGIP July Bulletin (published by Abu-Ghazaleh Intellectual Property) comes this news about the .AFRICA generic top-level domain (gTLD):
ICANN to Resume Evaluation of DotConnectAfrica Trust Application for .AFRICA

The Internet Corporation for Assigned Names and Numbers (ICANN) announced in a press release that it will resume evaluation of DotConnectAfrica Trust's (DCA's) application for the .AFRICA new generic top-level domain.

ICANN's Board of Directors convened a special meeting on 16 July 2015 to quickly address an independent review panel's declaration that held in favor of DotConnectAfrica Trust regarding certain claims about its .AFRICA top-level domain application. During the meeting, the Board resolved to:
• Continue to refrain from delegating the .AFRICA gTLD. 
• Permit DCA's application to proceed through the remainder of the new gTLD application process. 
• Reimburse DCA for certain costs related to the independent review process.
As such, the Board has directed staff to take all steps necessary to resume the evaluation of DCA's application for .AFRICA and to ensure that such evaluation proceeds in accordance with the established process(es) as quickly as possible.

"I want to thank the panel for their efforts and careful deliberation of this matter," said Steve Crocker, ICANN's Chairman of the Board. "Though these proceedings have been lengthy and delayed the launch of the .AFRICA top-level domain, the independent review process is an integral part of ICANN's community-developed accountability mechanisms, which are fundamental safeguards in ensuring that ICANN's bottom-up, multistakeholder model remains effective."

Dr. Crocker further noted, "Our commitment to ICANN's African stakeholders remains strong. As this advances to final resolution, we will assist in moving this process forward as rapidly as possible and provide all parties with the certainties they are looking for and deserve."

The next step in the process for DCA is to complete Initial Evaluation, a phase of the New gTLD Program in which multiple independent panels, including a panel dedicated to geographic names, review an application to ensure it meets the requirements in the Applicant Guidebook.

With respect to the Governmental Advisory Committee's (GAC's) consensus advice in the Beijing Communiqué that DCA's application for .AFRICA should not proceed, the Board will ask the GAC if it wishes to refine that advice and/or provide the board with further information regarding that advice and/or otherwise address the concerns raised in the Declaration.
Background to the DotConnectAfrica application and the objections raised in respect of it can be found on Wikipedia here.  This blogger, who is not based in Africa, senses that there have been political issues at stake as well as those relating to compliance with ICANN requirements.

One final point: noting the statement of Steve Crocker that "Our commitment to ICANN's African stakeholders remains strong", this blogger was wondering precisely who these stakeholders are and how the determination of stakeholders in the vast and varied continent of Africa was made.  Answers, anyone?

Kenyans in court: who can collect musicians' royalties?

"Kenyan Musicians Sue Copyright Bodies Over Royalties" is the title of this piece in AllAfrica last week by Abiud Ochieng:
A dispute has emerged in the interpretation of a section of the Copyright Act dealing with collection of music royalties. Musicians Elijah Wainaina Mira, Francis Jumba and Carolyne Wanjiru Ndiba have filed a case alongside two other companies seeking an interpretation of Section 30A of the Copyright Act [The linked text doesn't have a Section 30A. Might it be 30(1)(a)?].

The two companies, Xpedia Management Ltd and Liberty Afrika Technologies Ltd, are engaged in promoting and distribution of various musical and artistic works through digital platforms. They have sued the Kenya Copyright Board (KECOBO), Kenya Association of Music Producers (KAMP), Performers Rights Society of Kenya (PRSK) and Music Copyright Society of Kenya (MCSK).

The petitioners claim that section 30A of the Copyright Act states that the defendants, who are Collective Management Organisations (CMOs), are the only persons who can collect payment on behalf of owners of copyrights of performing and producing rights.

"The provision to that extent takes away rights of the petitioner and other copyright holders to collect payments from users of their works," explained lawyer Kiingati Ndirangu representing the petitioners.

The CMOs collect and retain remuneration on behalf of copyright holders but do not remit cash of non-members. The lawyer said a copyright holder, who is not a member of any of the CMOs risks losing revenue collected on their behalf. He further said Section 30A (1) creates confusion on who will collect and distribute revenue collected by the CMOs that is supposed to be shared equally between a producer and performer.

KAMP, PRISK and MCSK have relied on Section 30A to demand and collect royalties from users when the provision only allows them to collect a single equitable remedy. He added that the copyrights board has also failed to give any directions with regard to collection of the remuneration and distribution of the payments.

"The result of lack of a fair and reasonable administrative action has resulted in confusion, overpayments by users and lack of clear mode of sharing and distribution," explained lawyer Ndirangu.

The case will be heard Friday [that's the end of this week].
If you know anything about this case and/or its outcome, do let us know!

Thanks to Chris Torrero for spotting this item for us.

Wednesday, 5 August 2015

Who owns the copyright in commissioned logos?

Ask just about any IP lawyer and they will probably tell you that if you sub contract the development of your logo, you will not own the copyright in the logo. This is because of the general rule that, subject to a list of exceptions, the creator of an artistic work such as a logo, is the first owner of the copyright in and to that logo and that ownership is not transferred to you, even if you pay for it, unless you have agreed to have it transferred to you in writing. If you are interested in the exact wording of the South African position take a look at Section 21 and 22 of the Copyright Act, here.

The effect of this position goes beyond logos and raises a flag in every situation a copyrighted work is created outside of a business eg computer programs (different but similar rules), transcripts, contracts etc. Indeed, for the copyright lawyer, it's often a wonderful occasion to horrify corporate lawyers, clients and potential clients and in doing so, remind them of just how important it is to have IP counsel. Of course it is. On the other hand, for the affected client the position just seems ludicrous - how can it be that I have paid for my logo, computer program etc and I do not own the copyright! In many cases the situation is realised too late, often to the detriment of the person or business that paid to have the work done. But need it be so. Could it be that there is actually an implied term when you contract out the development of a logo, for the copyright to be assigned to you on request?

Aaron Wood, a well known IP lawyer in the UK, went about arguing that position on behalf of his client recently in the case of Atelier v Kilnworx (Atelier Eighty Two Limited v Kilnworx Climbing Centre CIC & Others [2015] EWHC 2291 (IPEC)). Afro Leo learnt about the development through commentary on Aaron's LinkedIn profile a few days ago here, and in writing this post came across the ever-abreast IPKat summary yesterday here. The case itself can be obtained here.

In short, Aaron's client successfully argued that the commissioner of the logo, obtained an equitable interest in the copyright in the logo and was entitled to the assignment of the legal interest in that copyright.

"In my judgment, in August 2011 Kilnworx through Mr Bunting and Purple Penguin through Mr Kirk entered into an agreement for the creation of the Logos as described above. There was an implied term in the contract. It was a term of the usual nature to be implied into a contract for the creation of a logo, namely that Kilnworx would own the copyrights in the Logos."

The facts are quite specific and necessary to analyse to understand when this situation would occur although Afro Leo suggests  (as the above quote explains) that in most cases such an implied term would exist in the ordinary contract between designer and commissioner. The question then is whether the same would be so, under South African law. This is because English contract law distinguishes between equitable rights (a right based essentially on principles of fairness) and legal rights, something which is not that apparent (at least not directly) in South African law.

Again, this Leo is going to say that under South  African law, the situation should be no different because rules for determining the existence of tacit and/or implied terms are essentially based on the unarticulated intentions of the parties. For instance, it would be extraordinary for a logo designer to explain that his intention would be to own copyright in a logo, once he had been paid for it, for use by himself or others or to preclude (by virtue of his ownership) the commissioner from enforcing rights in copyright against third parties. But do you agree?

As post script Afro Leo would like to thank those who have sent him messages in support of Cecil, his mate from Zimbabwe. Afro Leo has never liked dentists, and wouldn't mind flossing his teeth with that dentist's bowstring.

Monday, 3 August 2015

Coverage of #sandtondiscussion takes a break this week

Coverage of #sandtondiscussion takes a break this week

Afro Leo's coverage of #sandtondiscussion takes a break this week. We will be with you again 9:00 CAT next Monday. Have a great week!

Wednesday, 29 July 2015

HOT OFF THE PRESS: SA Copyright Amendment Bill published for comment

In what will come as a surprise to many, the South African Department of Trade and Industry has just published the Copyright Amendment Bill 2015 for public comment. 

The Bill is clearly informed by 2011’s report by the Copyright Review Commission as well as the Draft National Policy on Intellectual Property of 2013 and contains some sweeping amendments to our geriatric Copyright Act, the amendment of which has been long overdue.

Some of the more significant amendments are as follows:

  1. The introduction of a new class of works eligible for copyright, being “craft works” such as pottery, jewellery and folk-art;
  2. The introduction of an EU style resale royalty right for artistic works in terms of which artists are to be afforded royalties whenever their original works are resold (section 6);
  3. The addition of an exception to infringement for non-commercial translations and provision for obtaining a licence to make a translation of a work from the Copyright Tribunal against payment of “just compensation” (section 14 and Schedule A);
  4. The introduction of a “fair use” exception, albeit only in limited circumstances such as parody, criticism, professional advice etc.  Interestingly, the four well-known US factors for fair use have been incorporated, in addition to one other (section 14);
  5. A provision that appears to put an end to brand holders restraining parallel imports (grey goods) through copyright infringement proceedings (see proposed section 12A(7)) inserted by section 14 of the amendment bill);
  6. The wholesale inclusion of the temporary copying exception included in article 5 of the EU Copyright Directive (section 15);
  7. Exceptions for libraries, museums, galleries and people with disabilities (sections 22);
  8. The creation of moral rights for performers and some apparent repetition of rights already granted to performers in terms of the Performers’ Protection Act (section 24);
  9. Provisions for the licensing of orphan works, including the assignment of all orphan works to the state (sections 25 and 27);
  10. A provision providing that any copyright owned by the state cannot be assigned (section 26(a));
  11. Providing that all copyright assignments shall be valid for 25 years only (section 26(b));
  12. The creation of a whole host of new criminal offences, including one for a failure to pay royalties (section 28);
  13. The criminalisation of technological protection measure circumvention, which is already criminalised by section 86 of the Electronic Communications and Transactions Act (section 29) ; and
  14. An interesting provision that outlaws contractual provisions that purport to restrict or prevent any conduct that would not infringe copyright, e.g. contractual provisions forbidding conduct that would otherwise be covered by an exception.  This is particularly relevant to software End User Licence Agreements (EULAs) that often restrict on-sale of the particular software package, where this would not ordinarily infringe copyright. (section 37).

The Bill is open to public comment until 26 August, but given the breadth of the amendments, I suspect that far more time will be required! 

Correction: The deadline for public comment was previously stated to be 27 August, as per the Government's website here.  Andrè Myburgh has however astutely pointed out that the correct deadline is 30 days from the publication date, making the deadline 26 August by my calculation.

Monday, 27 July 2015

Cape High Court Domain Name Decision in #SandtonDiscussion today

This morning's discussion at 9am CAT is the recent decision of the Western Cape High Court in matter between Fairhaven Country Estate and Shaun Harris over various domain names. The case is neatly summarised here by Caroline, and the discussion today is being lead by Maureen Makako, with guests Shweta Mani, in house IP expert at CNBC Africa and newcomer JJ Thiart. Please join us on twitter under #SandtonDiscussion;

Last week's interaction:

Wednesday, 22 July 2015

Fintech Africa Event 28 July 2015 @ GIBS

Last week I received a call from Graham Fehrsen, Country Manager CFO South Africa and Fintech Africa inviting Afro Leo to attend one of their events next week held at the Gordon Institute of Business Science. It looked so interesting that I thought I would share it with you on this blog (see details here). The meeting promises "100 insiders, experts, startups and investors" that will discuss developments and challenges for Fintech in Africa.

For those that do not know what "fintech" is, it short for financial technology and is defined by any self respecting Google search as :

"a line of business based on using software to provide financial services. Financial technology companies are generally startups founded with the purpose of disrupting incumbent financial systems and corporations that rely less on software."

According to the The Financial Services Blog it is described as

“...the R&D function of financial services in the digital age….less to do with technology more to do with business model reinvention and customer centric design.  Fintech can be categorised as:
  • Traditional fintech as ‘facilitators’ with larger incumbent technology firms supporting the financial services sector; and
  • Emergent fintech as ‘disruptors’ with small innovative firms disintermediating incumbent financial services with new technology.
Basically, it is an industry that probably will revolutionise financial services as we see them today, and to some extent already has. One just has to think how mobile payment systems have changed the way people live and do business, empowering many. Africa is fertile ground for Fintech, perhaps uniquely to the world, because of our needs, our ability to adopt, adapt and even skip innovation cycles and because we tend to be less regulated. As always, I will be interested in hearing what the industry's view on IP is and how they treat it. We have seen IP conflict in this area and this is likely to continue as the industry grows.

Hope to see you there.

Tuesday, 21 July 2015

Fairhaven Country Estate v Shaun Harris - High Court saves the day when .za ADR Regulations can't

Fairhaven Country Estate- source
On 8 July 2015 the Western Cape High Court handed down its decision in the Fairhaven Country Estate v  Shaun Harris matter. Carmel Rickard has given an extensive account of  the decision on the Trading Places blog (here), so this post will only comment on one aspect of the matter, that of choice of forum.

Facts and decision - summary
For those who haven't read the case or Carmel's post, the facts were as follows: The domain names in issue were (active domain), (redirect domain), (active domain), (inactivedomain ) and (inactive domain). They all relate to the Fairhaven Country Estate (left) in Somerset West in the Western Cape province of South Africa. The first two domains were registered by Shaun Harris in July 2011 prior to the incorporation of  Fairhaven Country Estate (FCE) (Pty) Ltd, so that Harris could secure a mandate to sell property in the estate from Nedbank which was the owner of the estate at that time. He registered the other domains later in November 2011 (fairhavencountryestate) and June 2014 (the inactive domains). After ownership of the estate passed to FCE (Pty) Ltd it used the active domains in relation to the estate. Harris had a mandate to sell properties at the estate on behalf of FCE (Pty) Ltd from September 2012 until May 2014.

In January 2015 FCE (Pty) Ltd received an email informing it that it had to cease its use of the domain  within 24 hours and then 'transfer' the domain to Harris (decision, para 13). As Harris was already the registered owner of the claimed domain, what he really sought was transfer of the use of the domain to himself and whoever else he authorised to use it. FCE (Pty) Ltd said that it did not know that Harris had registered the domains in his name and that it had always proceeded on the basis that it owned the domains (decision, paras 17, 21). It argued that even if Harris was the registrant of the domains, it was in fact the owner of the domains (decision, paras 19 - 20, 22). Harris wanted the use of the domain so that he could execute resale mandates of Fairhaven properties, from which he anticipated that he would earn R23 million. FCE (Pty) Ltd did not wish to transfer use of the domain as it would be detrimental to its business communication (because its email addresses included the domain (  and affect its marketing campaign which centred around the domain. It had already spent in excess of R1, 75 million on advertising incorporating the domain. It averred that it had so far spent at least R70 million on the estate. It applied to the High Court for an prohibitory interdict against Harris to prevent him from redirecting or transferring the domains to third parties and from registering or trying to register domains containing the name 'Fairhaven' in future. It also asked that Harris be ordered to transfer the domains to it.

FCE (Pty) Ltd had not registered Fairhaven Country Estate (or any related permutations) as a trademark so it based its claim on common law grounds. It argued that the active domain constitutes 'part and parcel of  its get up and promotional material which it had developed' over a period of three years 'at great expense' (decision, para 24). It argued that Harris' taking over of the use of the domain would amount to passing-off. The High Court was persuaded by its arguments and granted the requested prohibitory interdict and ordered the transfer of the domains from Harris to FCE (Pty) Ltd. (See Carmel's post for a full discussion of the arguments and decision).

Choice of forum
When compared to court processes, the Electronic Communications and Transactions Act (25/2002): Alternative dispute resolution regulations provide a relatively quicker, simpler and cheaper option for the resolution of domain name disputes. The South African Institute of Intellectual Property Law (SAIIPL) is accredited under these regulations and has built up a substantial body of decisions (available here). Under the regulations the transfer of  domain name can be secured by proving that the registration of the domain was abusive. The regulations provide that a registration is abusive if:
(a) it was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the complainant's rights; or
(b) has been used in a manner that takes unfair advantage of, or is unfairly detrimental to the complainant's rights.
Harris' actions do not fit neatly into either category for the following reasons.
His registration of the first three domains in 2011 did not take unfair advantage of FCE (Pty) Ltd (or its predecessor)'s rights. Indeed, in a way, it was to further its business of selling real estate. As stated above, FCE (Pty) Ltd operated/used the active domains. The last two registrations which were obtained after the termination of Harris' mandate may be impugned as being intended primarily to unfairly disrupt FCE (Pty) Ltd's business and thus fall into the category contemplated by para (a) above. However, these domains were (and continue to be) inactive. Had the use of the active domains been transferred to Harris, as he demanded, his use of the domains would arguably be unfairly detrimental to FCE (Pty) Ltd because people wishing to buy properties on the estate would be directed to a rival estate agent operating a domain name that included FCE (Pty) Ltd's name. At the High Court, FCE (Pty) Ltd successfully argued that such (mis)direction would amount to passing off. Since Harris had not yet taken over the use of the domains, he was not yet engaged in use that would amount to passing-off and FCE (Pty) Ltd could then not rely on para (b) above.

Based on the situation in which it found itself - 24 hours' notice to hand over use of the active domain to Harris - FCE (Pty) Ltd had no recourse under the regulations. Therefore it had to approach the High Court to prevent Harris from wresting use of the domains from it. When the regulations were passed, I wondered who on earth would still approach the High Court in relation to a domain name dispute. This case demonstrates the classic circumstances in which one may still want to rely on a court application. 

Monday, 20 July 2015

Top 10 IP Tips for Entrepreneurs in #SandtonDiscussion

After a sporting weekend that sees an African on top of the leader board for The Open Championship, debut successes for an African sponsored team in the Tour De France and an English side in the Ashes series that, despite all efforts to rid themselves of colonial upstarts, still contains a Zimbabwean, we settle down for the #SandtonDiscussion to talk about the top 10 IP considerations for entrepreneurs. Be there or be square at 9am CAT today, Monday 20 July by following it on Twitter @ #SandtonDiscussion.

Action from last week:

Sunday, 12 July 2015

China New Balance decision - lessons for Africa in #sandtondiscussion

Lita tells Afro-IP that this week's #sandtondiscussion turns east to consider a recent case where famous footwear and apparel brand New Balance lost a trade mark case in China and is ordered to pay over RMB 98 million (a whopping USD 15.7 million) in damages to a Zhou Lelan, a local shoe manufacturer and alleged trade mark hijacker, over the use of the translation of the New Balance trade mark. The case itself is summarized by Shanghai Patent & Trade Mark Law office here.

What does this case say for your brand strategy in China? What is the difference between a translation and a transliteration? What does this say for your brand in Africa, with an estimated 1500-2000 languages? You can join us to discuss these and other questions 9am CAT on twitter using #sandtondiscussion

During last week's discussion Isaac shared his views on the progress and effectiveness of utility model protection in Kenya before Eddie Hurter explained an exciting competition sponsored by Unisa, ZA Domain Name Registry and SAIIPL involving the possible future of Africa domain names. You can read more about that here.