Friday, 22 January 2016

Is the cost of atmospheric music, stratospheric? Part 1

Ever found yourself tapping your foot at the till of your favourite clothing store or doing something more violent in that funky denim studio? Can you blame your compulsion to purchase that new bag solely on a mild personality disorder or should the background beat-of-the-street shoulder some of the blame? Facts are that atmospheric music is played by retailers and not just to soften the ring of the register but also because it is enjoyable and encourages sales. But how much do they pay and is it proportionate?

Late last year the Supreme Court of Appeal (the SCA - RSA’s highest commercial court) grappled with a rare case involving music royalties. The case, originally brought by a group of prominent retailers against the South African Performance Rights Association (SAMPRA) for charging excess rates for the licensing of background music that they played in their stores, is interesting because it is one of the very few cases on the determination of a reasonable royalty in South Africa. In this case, the court determined royalties based on international norms but not before dealing with a number of arguments related to the construction of the legislation, onus, competition law and property rights. The full case can be found here.


The retailer's obligation to pay a royalty is contained in s 9(A)(1)(a) of the Copyright Act 98 of 1978 (the Act). This section provides that in the absence of an agreement to the contrary no person may broadcast a sound recording without payment of a royalty to SAMPRA which is an accredited collecting society. This royalty is payable according to a tariff which is determined by agreement between the user and the performer and in the absence of an agreement, the determination may be referred to the Copyright Tribunal set up under the Act.

As one might expect there was a failure to reach an agreement and the matter was referred to the tribunal which then issued a ruling. No unsurprisingly too, after much debate this ruling found that a reasonable tariff lay somewhere between what the retailers and SAMPRA each thought was reasonable, with a cost order in favour of the retailers. SAMPRA appealed and there was no cross appeal from the retailers. Apparently cross though, the retailers opposed the appeal.

Basis of appeal

This can be summarised as follows:

  1. There was a failure of the tribunal to consider principles of competition law in determining the royalty;
  2. The tribunal’s authority to make a ruling only triggered once the retailers had established that the tariff was unreasonable which they had not done. This was effectively an argument based on onus and jurisdiction of the tribunal which SAMPRA thought had been misconstrued; and
  3. That the retailers were obliged to disclose the Rand value derived from the use of  the sound recordings, which they had not done, in determining the reasonableness of the tariff


On the question as to whether completion law principles were applied, the court gave short shrift to the argument and held that these were entirely new submissions and that it would be unfair to allow this now. Afro Leo suggests that procedurally this was the right approach and that although the competition arguments would have been very interesting to understand it appears somewhat desperate of SAMPRA. In any event, this Leo wonders whether, when determining reasonableness, competition elements are naturally considered without formal recourse to of this silo of law/economics?

The construction of the Act was much debated and considered by the SCA. The Act is ambiguous in its construction and described (with reference to Dean’s Handbook of South African Copyright Law) as a “rather tortuous statutory scheme in terms in terms of which the tribunal derives its power”. Afro Leo agrees. For those interested in the doing some mind gym have a look at paras 12-30 of the judgment. Essentially, the court held that all that is required of retailers or claimant is to place evidence before the tribunal that the claim is well founded (there is no formal onus of proof) and “At the end of the day for the claimant to succeed the tribunal is required to be satisfied, on all the evidence placed before it [presumably including that of the respondent], that the claim is well founded.” This seems sensible.

Necessity of showing rand value

The question of whether the retailers should have lead evidence of the rand value they derived from use of the sound recording was considered; the argument essentially being that under the construction of S33(5)(b) of the Act, only once it had been established that this value was disproportionately lower than the proposed tariff could it be unreasonable, and that it would need to cause economic harm to the retailer. In addition, the recordings needed to sustain their business and no available alternative would serve the retailers economic interests (see paras 31- 37) . And you thought Everest was a challenge!

After hearing various experts on whether this information was available, how such a study would be conducted, what its probative value would be and sensitivities over confidentiality [the arguments are interesting], the court held that such evidence would be “prohibitively expensive and impractical as it would take too long to complete. In addition, it cannot be said that any conclusion reached could apply to all retailers” and therefore “not necessary”.

Afro Leo thinks that this is the correct ruling and wonders whether the court would take such a pragmatic approach to the evidence required to prove economic harm in trade mark dilution cases. Another reason why it seems correct is that in the Copyright Act, there exists a concept of a reasonable royalty in lieu of showing damages; implicitly recognising the difficulty of showing actual damage.

Market forces
Reasonableness and other methods for determining the tariff

The two proffered by resident Profs were the “market-based solution” and by benchmarking with tariffs used in other jurisdictions.

The market based approach essentially meant that, in the absence of an agreement, the market should be left to naturally determine the tariff. This approach was given short thrift by the court (just a single paragraph) after the Prof conceded that he was not aware of the legal framework which directed the tribunal to determine the tariff.  The court was perhaps too hasty here in its reasoning for it is still possible for the tribunal to determine the tariff, and then use a market based approach in its determination.

The remainder of the judgment focuses on benchmarking and this will be dealt with in a separate post. Ever wondered what the relationship is between Big Macs and music royalties? You will get the Whopper lowdown in Part 2.

Tuesday, 19 January 2016

New Anton Mostert Chair in IP at Stellenbosch University

A media release from the Anton Mostert Chair of Intellectual Property Law, the University of Stellenbosch  issued yesterday announced that Prof Owen Dean retired as the incumbent of the Anton Mostert Chair of Intellectual Property Law at the University of Stellenbosch at the end of 2015 and has been succeeded by Prof Sadulla Karjiker.

Congratulations to Prof Karjiker! 

UNISA hosts lecture on TK and Genetic Resource Protection...tomorrow

News just in from Prof Tana Pistorius is that there will be a lecture tomorrow at UNISA at Bamboo Hall (map here) between 11am and 1pm focusing on TK and Genetic Resource Protection ... and guess what, you are invited!

"Frantzeska will address IP’s response to market failures related to sub-patentable innovation or purely traditional knowledge with interesting applications. She will discuss the entry into force of the Convention on Biological Diversity and its implementation in national legislation. She will elaborate on alternative forms of entitlement possible under the current international legal framework and recent developments in the field such as the impact of the Nagoya Protocol, the EU Regulation on its implementation and the national initiatives.

Frantzeska Papadopoulou, Jur.Dr., LLM is today an Associate Professor at Stockholm University as well as in Linnaeus University in Sweden. She has worked for several years as the head of IP department for the Swedish Association of Industries. Dr. Papadopoulou was a member of the Swedish delegation in the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional knowledge and Folklore during the years 2001-2008.

Please confirm with Ms Nomagugu Hlongwane [] if you are able to attend."

Monday, 18 January 2016

First January Post 2016

Greetings from the Afro-IP team and best wishes to our readers. As this little blog and community celebrates breaking through the 1 million pageview mark we share with you our most popular posts in 2015, in no particular order:

  1. Discussion over South Africa's Copyright Bill here, here and here;
  2. Tips for Protecting Street Art here;
  3. Yahoo's toils in Nigeria over Yahoo Yahoo! here;
  4. Protection, Promotion, Development and Management of Indigenous Knowledge Systems in RSA here, here and here;
  5. OAPI agent scandal over Madrid here;
  6. Software licensing - BSA's engagement with Government and RSA damages hearing;
  7. Commentary on Farida Shaheed's report on Copyright Policy and the Right to Science and Culture;
  8. OAPI's progress on the Singapore Treaty adoption here;
  9. Gambia's progress on the adoption of the Madrid System;
  10. The ASA's response to Cochrane's Google Adword complaint in RSA; and
  11. Case commentary in Blurred Lines and @SandtonDiscussion by Stobbs IP on Etraction here and here;

Special mention is made of the IPKat weblog, our guest bloggers and our readership, all of whom continue to support the journey into the heart of African IP as this blog continues to boast the single largest resource of searchable information on recent African IP news.

2015 also had its dose of sad news too with the retirement of Prof Jeremy Phillips both celebrated (with and for him) and mourned. No doubt he is enjoying his new endeavours and a much deserved break from IP with his family

We are always looking for good content and bloggers and guest posts. If you feel that you want an outlet for your talents or views or just want to alert us to something, please contact us here for further information.

Best wishes

The Afro-IP blogging team

Thursday, 10 December 2015

Singapore Treaty to be in Force for OAPI by Mid-February

Trademarks and Valentines, a natural pairing.
With all the attention Africa’s been getting globally and our pride’s attention drawn to happenings hitting even close to our hearts, some details have slipped through the grass.  But never fear, like all good lions, we manage a pounce in the end.  This time, this straggling little leo has rounded back on a WIPO announcement from a few weeks ago: OAPI has joined the Singapore Treaty on the Law of Trademarks.  Full WIPO press announcement here.

Administrative Harmonization

The Singapore Treaty on the Law of Trademarks, known as STLT in the WIPO community, seeks to harmonize the administration of trademarks.  It covers everything from registration to license recordation.  It does this by setting limitations on the types of processes and information that can be required by a trademark office.  For example: trademark offices cannot require notarization of application signatures (Article 8(3)(b)); there are 16 pieces of information that trademark offices may require be included in an application (Article 3(1)(a)); and applicants must use the Nice classification system (Article 9).

But License Redecoration Remains

Interestingly, although the purpose of STLT is to harmonize administrative procedures, parties are able to opt out of provisions under certain circumstances (in Article 29), and OAPI has done just that.  Articles 6 and 19(2) will not apply to OAPI.  Article 19(2) of STLT prohibits parties from requiring the recordation of licenses for enforcement.  However, Article 27 of the Bangui Agreement, which governs OAPI, requires the recordation of a trademark license with the OAPI Special Register of Marks in order for the license to be enforceable against third parties.  The pre-existing Bangui Agreement rule stands.
Article 6 of STLT says “Where goods and/or services belonging to several classes of the Nice Classification have been included in one and the same application, such an application shall result in one and the same registration.”  Little Leo has to admit, she’s not really sure what it means to opt out of this.  [And based on the way WIPO presented it in the press release, neither are they.]  Perhaps it means applications listing goods or services in multiple Nice classes will result in multiple registrations.  Conjectures, explanations from wiser readers and wild guesses are welcome.

A Growing Party

The addition of OAPI brings the official number of STLT members to 41.  That number is a little misleading since OAPI itself includes 17 countries.  Seven OAPI members are signatories to STLT, dating back to 2006 and 2007, but only Mali (2009) and Benin (2012) ratified the treaty as individual countries.  The treaty comes into effect for OAPI, and Benin and Mali individually, all on the same day: February 13, 2016.  Just in time for Valentine’s Day.  That will bring the number of countries participating in the STLT harmonization to 54*.  The full list is available from WIPO here.

*If the math doesn’t seem to work out, it’s because there are other multi-state members whose countries are also individually members.

Image information: “Little Debbie Valentine Snack Cakes, 2/2015, by Mike Mozart of TheToyChannel and JeepersMedia on YouTube” CC-BY 2.0 Mike Mozart, available at

Wednesday, 9 December 2015

Will we ever know who invented MPesa?

Quite frequently, someone will come to our IP Clinic claiming to have invented MPesa, the first widespread mobile money transfer system. Some even bring evidence supporting their claim. We've heard quite a number of stories - it was invented by a student at the University of Nairobi, or by a student in Nigeria, or by this or that entrepreneur, or by Vodafone in Germany (and merely tested in Kenya due to lack of regulations), etc.  Some are upset that their IP was 'stolen' but others merely want recognition for their 'invention.'

The reality, if the Wikipedia page can be trusted, seems quite a bit more complicated - many people and entities appear to be involved.

While searching for something else, though, this blogger came across this US patent application, which describes an "electronic purse" that seems suspiciously a lot like MPesa. The priority date is 2003. It's not exactly the same, but clearly people were thinking about this technology over a decade ago and at least three years before MPesa was launched.

Many people have said that MPesa was/is an example that supports software patents - had it been patented, the theory goes, it would be very easy to identify the true inventor and that person/entity would be making tons of money. This blogger believes the opposite is more accurate - had it been patented, there wouldn't be competitor services in Kenya (there are currently several), quality and service would suffer, and prices would be higher. Considering that a major reason for MPesa was to help the "unbanked", such a result would be quite unfortunate.
Lion share (source here)

Some would argue, however (and this blogger would probably agree), that even without patent protection, MPesa's lion-share of the industry effectively results in the negative outcomes mentioned above. 

Friday, 4 December 2015

Editorial - Starbucks from start to finish

Starbucks from start to finish - Darren Olivier

Last week I had the real privilege of being able to join the tribute to Jeremy Phillips on the occasion of his retirement celebrated at  JIPLP's 10th anniversary conference held in London. The #JIPLP10 on twitter documents some of the reaction to it and indeed includes an entire webcast of it.

I first emailed Jeremy in December 2007 to request his assistance in starting this blog. He answered immediately (as he has ever since) inviting me to have a chat with him at Starbucks on the ground floor of the Olswang offices in Holborn where we discussed his first post, why the IP world needed a blog on Africa (with no interest there would be no readers) and how this might all work.

It is one of the best hours I have spent with anyone. I sat with my coffee (probably brewed from African beans) exchanging ideas with someone who was as grounded as those beans yet percolating with ideas and insights on Africa that clearly indicated his interest and why it was not only a good idea but necessary for this type of repository of information on IP covering the continent. It was and remains necessary for Africa to make IP more accessible, debated and understood both to its people and to those interested in working with the continent.

My own interest in the blog was in part motivated by that very problem; I was returning to Africa after a decade in London and had nowhere to research or understand developments in IP. Law firm reports (if they existed) were not up to date nor designed for that purpose. Universities still marginalised IP. Journals could only be accessed via subscription and legal decisions on IP published sporadically. Jeremy's thoughts were later encapsulated in a very popular editorial for JIPLP here and documented by Managing Intellectual Property here, who have, incidentally, also supported us ever since.

Jeremy's support created instant credibility and interest and his guidance has been invaluable. For that everyone with an interest in African IP, including external investors, have much to thank him for. He has helped, in a considerable way, enable the discussion on African IP to reach a much larger and more influential audience and not just through this blog but through IPKat and JIPLP, in particular.

And this blog has made even a small difference. For example, Kingsley's epic posts on the online presence of African IP registries have helped spur on those Registries to improve their interface with consumers. Funders of African IP (whether it be actual funds or support) have been acknowledged creating more access to support and judges and policy makers have expressed gratitude because the content has assisted them in their decision making.  There is however much that still needs doing; a message that resounded last week too.

My Bed by Tracey Emin
Jeremy's parting speech last week made My Bed an analogy. He used it to illustrate, amongst other things, that your view on IP is highly influenced by your vantage point and who you are. For example, if you were sleeping in it, you may think it perfectly in order but from other viewpoints it's a complete mess. This is no different when applied to African IP relative to others as it is to IP relative to the world. My own point here is that Africans need to be more vocal to express, understand and be understood on African IP issues, and this blog can play a part in helping that process. It does however, need more good content and participation.

In a kind parting gesture, Jeremy invited me to join him and others at Reubens in Baker Street for dinner. It's seldom that you sit in the presence of a judge let alone opposite one that is as influential on IP as Judge Arnold, but there I was. And when this happens you speak about his kids, not the little ones that need nappies but his judgements, especially ones that reference South African cases. We spoke about Starbucks.

Best wishes for your retirement Jeremy.

Thursday, 26 November 2015


Just posting a quick note to say “bye-bye!”  A lot has happened in the world of IP, in Africa and beyond, since I posted our first blogpost back in December 2007.  And now I’m retiring and just wanted to say a big “thank you” to Afro Leo and all the blog team for their wonderful efforts over the past years.  A big “thank you” is due to our readers too, for their support, their comments and their patience!

It’s a difficult world right now, and I have no instant suggestions for putting it right. But what I can say is that IP can help, if it’s properly protected, developed and where necessary shared around. Let’s hope that Afro-IP will help this process.

Friday, 20 November 2015

African IP in November

We are only three weeks into November, but what a month it has been for IP. It began with an 'IP for an Emerging Africa' three-day conference held on November 3 – 5, 2015 in Dakar, Senegal (see Kingsley's post here and the WIPO conference page here which includes the program and technical documents). As noted by Darren (here) WIPO published a special edition of its magazine, with a focus on Africa, to coincide with the conference. Nicola Searle commented on the conference on the IPKat blog ('African Ministerial Conference in IP: The Dakar Rally' and 'Talk Talk Fashion Baby').  The twittersphere was also abuzz with commentary, some of which is curated under  the hashtag #AfricaInnovates.  There was a clear call for the conference to embrace a developmental approach to IP in close alignment with WIPO's Development Agenda. (see Ahmed Abdel-Latif , Dick Kawooya, Chidi Oguamanam 'WIPO African ministerial should embrace a pro-competitive and pro-development IP vision'). No doubt further commentary will soon be published on how the conference unfolded and whether or not it lived up to this call. WIPO's own summation of the conference and its significance and outcomes is available as a four-minute video-clip on YouTube here.

A key conference theme was innovation. The relationship between IP and innovation is one worthy of sustained study and has significant implications for how IP is regulated on the continent. It was the focus of a recently completed  research project by the Open African Innovation Research network (Open AIR) ( see publications here).  The network has recently released a call for African case studies for a further stage of its work that will seek to shed light on the following two overarching research questions:

  1. How can open collaborative innovation help businesses scale up and seize the new opportunities of a global knowledge economy?
  2. Which knowledge governance systems will best ensure that the social and economic benefits of innovation are shared inclusively across society as a whole?
Proposals (submitted on this template) will be accepted through to 10 December 2015. It is hoped that this further research will be useful for African governments, IP policy-makers and entrepreneurs. (Disclosure: the author of this post is a member of the OpenAIR network).

Another major development this month was the WTO TRIPS Council recommendation to extend the LDC pharmaceutical patents waiver to 2033 (see the WTO's press release here and an IPWatch report here). This recommendation is expected to be endorsed by the General Council when it meets later this month. 

Wednesday, 11 November 2015

Pfizer/Biovac deal potentially good for everyone

This month Pfizer announced a deal with Biovac that would see it transfer skills and technology and license the manufacture of its Prevnar 13 vaccine in South Africa for ultimate distribution throughout Africa. In this play Pfizer is the well known global pharmaceutical and lesser known Biovac is a South African company set up to boost local pharma capability to address severe local needs. Also important is that South Africa’s government has a major stake in the ownership of Biovac and that Naledi Pandor (the Minister of Science and Technology) has been vocal in commenting on the deal.

On the face of it, this deal seems to be a very good one.

For South Africa it has real potential for positive outcomes; it will create jobs, it will upskill workers, it has the potential to reduce the cost of the vaccine and give greater access to it, it could enable Biovac to become the access point for those vaccines into Africa, it is sustainable in the sense that the need is great and competitive drugs appear to be few, it has the potential to reinforce a positive message to other pharmaceuticals that South Africa is a viable destination for trials and drug manufacturing (not that the likes Adcock Ingram or Aspen have done a bad job) despite the restrictions on IP developed locally through public funds and exchange control, and it is welcome news (politically and economically) in contrast to South Africa’s recent woes reflected by the continuing fall in the rand over the past few years.

So what’s in it for Pfizer? Why would Pfizer transfer manufacturing skills, risk the fact that any IP it helped developed locally may never be able to leave RSA, help reduce the cost of a drug that it has spent the R&D developing (and still appears to be under patent) and therefore possibly reduce potential revenue streams and help create another drug manufacturer which could potentially produce generics in competition to it? Afro Leo suggests that there is quite a lot in it for Pfizer.

This blog has reported for some time on the pressure that has come to bear on big pharma to provide solutions for developing and least developed countries which account for a considerable percentage of the need for critical drugs. This pressure has also spilled over to the patent system per se and has called to question the very idea behind intellectual property (upon which big pharma rely) and its place in developing countries. Added to that is the idea of integrated reporting for sustainable businesses where value is not just measured on bottom line profits but in the concept of value to society and corporate responsibility, and an increasing general awareness by the consumer in supporting companies and brands who do so, and are seen to do so. This deal creates material for Pfizer to use to address these issues.

There are bottom line reasons too though. A decline in the rand makes imports expensive which will affect current demand for the drug based on affordability. Creating a manufacturing partner in South Africa therefore starts to make sense. Not only does the initial $ investment go much further but it creates potential for drugs to be exported into Africa more cheaply. In addition the deal creates options for Pfizer once the drug goes off patent. The potential cheap production of off patent drugs under a locally known brand name that would have captured market share, should be a shrewd move to ensure longer term demand, not only for Prevnar 13 but potentially others.

Admittedly, one would have to consider the close detail of the deal especially on the extent and effectiveness of the technology transfer and any competition restraints. Is Biovac likely to be beholden to license to use the name and a supply of the active ingredient even post the technology transfer, for example? There are other risks too such as labour unions, quality and supply but overall, the deal does seem encouraging.

Thursday, 5 November 2015

#Africainnovates - WIPO gets awesome

In the week that celebrates the Ministerial Conference for IP in Africa which is co-organised by the Government of Senegal and WIPO in collaboration with the African Union and Japan, in Dakar (you can find more about that here), WIPO have published a special edition WIPO Magazine dedicated to Africa, and it's jam packed:
Check it out by downloading the PDF here and follow the conversation on twitter through the hashtag #africainnovates.

Trade mark certificates in Libya: an update

We have learned that the Libyan Trade Mark Office has started issuing trade mark registration certificates and has also been accepting renewal applications, as of 1 October 2015.

Accordingly, for any applications that have matured to registration (ie which have been published and where no oppositions have been raised) and that are still valid, a registration certificate will issue once payment of the official fees of LYD 151 (approximately US$ 111) has been made.

As for expired applications, it is possible to issue renewal certificates after paying the normal renewal fee of LYD 181 (approximately US$ 133) per application.

Source: newsletter of NJQ & Associates, from whom further information can be obtained by emailing

Wednesday, 4 November 2015

Zimbabwe follows Gambia down the Madrid Protocol 18-month route

Yesterday this weblog conveyed the news that Gambia, a recent adherent to the Madrid Protocol, was to extend the period within which it must reject international trade mark oppositions if they are not to be automatically allowed from 12 to 18 months under Article 5(2) of the Protocol. WIPO has also announced that Zimbabwe is doing the exact same thing, only with effect from 7 January 2016. You can check out the WIPO announcement here.

Tuesday, 3 November 2015

Gambia fine-tunes its Madrid Protocol arrangements

A week and a half ago, Afro Leo noted that Gambia had signed up for the Madrid Protocol -- the smart way to save money and gain efficiency when seeking trade mark protection internationally. Well, there has been a sequel. By a further notification, WIPO has indicated that Gambia is replacing the basic period of 12 months within which it may refuse an international application under the Protocol with an 18-month period, as it is entitled to do under Article 5(2)(b) of the Protocol.

This takes effect from 6 January 2016 -- which rather suggests that the period remains 12 months for international applications received between 18 December (when the Protocol takes effect in Gambia) and 5 January.

Friday, 30 October 2015

Tanzania commits to UPOV Convention

By UPOV Notification No. 119 International Convention for the Protection of New Varieties of Plants: Accession by the United Republic of Tanzania to the 1991 Act, the World Intellectual Property Organization (WIPO) has announced that the United Republic of Tanzania deposited last week its instrument of accession to the 1991 version of the International Convention for the Protection of New Varieties of Plants (the UPOV Convention).

Right: the castor bean is among Tanzania's valuable plant varieties

If you are involved in plants, note that the UPOV Convention will enter into force for Tanzania on 22 November 2015.

Friday, 16 October 2015

Gambia signs up for the Madrid Protocol

According to the recently-issued Madrid (Marks) Notification No. 207: Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks: Accession by the Republic of the Gambia, Afro Leo learns that the Government of the Republic of the Gambia deposited last month its instrument of accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. The Madrid Protocol (1989) will enter into force, with respect to the Gambia this coming winter, on 18 December 2015.

Here's the WIPO Madrid Protocol page, and here's the list of countries where the Madrid Protocol is operative (or nearly so) -- all 96 of them at the time of posting of this item.