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 fairhavenestate.co.za (active domain), fairhaven.co.za (redirect domain), fairhavencountryestate.co.za (active domain), fairhaven-country-estate.co.za (inactivedomain ) and fairhaven-estate.co.za (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 www.fairhavenestate.co.za 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 (@fairhavenestate.co.za)  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.


Thursday, 9 July 2015

WIPO promotes its treaties database with an African question

Africa in 1886
Today's WIPO Wire invites readers to test their Treaty knowledge and asks:
"Which West African nation is named in the first paragraph of the 1886 Berne Convention?"
The answer to this question is Liberia. But Liberia is not the only African state mentioned in that paragraph. Can any reader name the other one?

WIPO's reason for asking is that it wants to publicise that fact that images of original treaties and information concerning them can be found via the WIPO-administered treaties database. One of its most endearing features is that you can click through from edition to edition, to see the version of each treaty text which replaces or is replaced by the one you are looking at.

Tuesday, 7 July 2015

ARIPO: Arusha PVP Protocol adopted

ARIPO has announced that its PVP Protocol was adopted on 6 July by a diplomatic conference held in Arusha, Tanzania. It was signed by 4 states at the conference and will remain open for signature by any AU member state until 31 December 2015. Read the full announcement here.

Monday, 6 July 2015

Isaac and Eddie on this week's #SandtonDiscussion

Fellow blogger Isaac Rutenberg posted on two developments in Kenya last week (see here and here) and has kindly agreed to lead a discussion on these and other recent developments that have caught his attention in Kenya and surrounds for this week's #SandtonDiscussion at 9am CAT today. He will be joined by Eddie Hurter of Unisa who will explain Unisa's decision to offer and all expenses paid trip to attend a WIPO workshop on domain name resolution in Geneva in November in an essay writing competition.

Learn more about these developments at 9am by joining us on twitter using the #SandtonDisccussion.

Some action from last week:

Thursday, 2 July 2015

More on Utility Models

This blogger's favorite subject seems to be Utility Model Certificates (UMCs, see previous post here), and feels a few statistics are worth noting.

In May 2014 the Kenyan patent office (KIPI) ceased substantive examination of UMCs (the announcement is on page iv of the KIPI journal linked here). All UMCs granted after that date were subjected only to a formalities examination - exactly like the patent system in South Africa.

Between July 1993 and May 2014, KIPI examined 254 applications and, from those, granted 51 UMCs. This represents a 20% allowance rate.

In the year from May 2014 to May 2015, KIPI granted 40 UMCs, all of which are unexamined for substance. Assuming that the quality of such applications is roughly unchanged, this means that 80% (about 32) of those UMCs are likely to be invalid for one reason or another.
Flood gates, opened!
(Source: Getty Images)

This blogger is currently researching whether UMCs are effective means of protecting innovations. Surely, though, the above figures ought to raise a red flag to lawmakers, IP practitioners, and, ultimately, those in businesses who might be hauled into court for infringing a UMC that has an 80% chance of being invalid....

Wednesday, 1 July 2015

Overreaching surveillance in the most extreme

From Kenya comes news (here and here) that has really blown this blogger away, twice!

First, the Communication Authority of Kenya (CA), the government regulatory body, has issued a directive requiring that all devices using public Wi-Fi hotspots must be registered. Thus, a coffee shop or hotel patron using the free Wi-Fi with a laptop or smartphone must register the device with the CA, using a phone number and/or a national ID number. The Wi-Fi providers are also required to assign a unique IP address to all users so that all internet traffic can be linked to the specific device and user.

Second, the CA also intends to require that all businesses registered in Kenya must acquire a .ke (dot ke) domain address.
Big Brother really is watching...
Source: Getty Images

Oh, how are these mandates misguided?  Let me count the ways!

Problem #1: how will CA verify the information that is provided?  There are databases of national ID numbers, but some users such as tourists won't have a national ID. Does that mean I can enter my passport number, including a made-up number?

Problem #2: this will create a vast database of user information. How confident are we that the government will keep such information secure?  In fact, centralized storage of such information only makes cybercrime easier for the criminals - with a single hack, mountains of personal ID data can be obtained, and we all know that the Kenyan government websites are targets for attack (e.g., Kenya's military Twitter account).

Problem #3: will this Directive achieve the stated goals of reducing the risk from cyberterrorism, terrorists using Wi-Fi access, and cybercrime? This blogger thinks not, unless the CA knows how to overcome anonymizing tools such as Tor, VPNs, and encryption. (Comments from tech-savvy readers on this point are most welcome.)

Problem #4: what happens if the .ke domain for my business name is already taken? Then I'm forced to register something that is irrelevant or not as relevant? And, am I forced to maintain such registry and pay yearly renewal fees? What happens if the domain lapses?

Problem #5: rarely does a business want a .ke domain when the same .com or .org domain name is also available. So for those users, this directive merely increases the cost and red tape of doing business in Kenya. For the remaining users, this directive will make no difference as they would have registered the .ke in any case.

Problem #6: the intrusion into personal privacy by this directive speaks for itself. This blogger wonders about the legality of the directive. Article 31(c) of the Constitution of Kenya 2010 provides that every person has the right to privacy, including the right not to have information related to their family or private affairs unnecessarily required or revealed. This is, essentially, mass surveillance of the Snowden variety, and this blogger cannot believe that such surveillance is not unnecessary (particularly when 99+% of the monitored activities are likely to be legitimate).

This blogger is not aware of any country on earth that has either of these requirements - either in black letter law or in practice. If any reader knows of such a country, do share!

Monday, 29 June 2015

Uganda JAVA TM case in #SandtonDiscussion

Apologies for the late notice of this week's #SandtonDiscussion which focuses on the recent decision in the trade mark opposition by Mandela Auto Spares against the attempt to register trade marks in class 43 (restaurant services) containing the word JAVA by Nairobi Java House Limited on the basis of rights in the word JAVAS and CAFE JAVAS. It's a very interesting case that looks at the nature of the word JAVA for restaurant services in Uganda, the test for likelihood of confusion  and structure of opposition proceedings. It is also an example of the increasing sophistication of decision making on the continent. The Assistant Registrar references local and European law in determining the opposition.

The case can be found here and the discussion will be lead by none other than Lita Miti-Qamata. Tune in at 9CAT on Twitter -  #SandtonDiscussion.


Friday, 19 June 2015

Etraction up next in #sandtondiscussion


Monday's #SandtonDiscussion arranged by Lita is lead by Stephen Hollis (@orcagunslinger) and covers the recent appeal court decision in Etraction and the detail over prior use defenses.

The case was neatly summarised here by Jeremy Speres who will also be joining the conversation. It should be another good one and you also are very welcome to take part over twitter using the #sandtondiscussion.

I must mention a word of caution though; speed tweeting during these sessions can easily lead to spelling mistakes so please be careful when using "etraction" and "use" or "prior use", the auto-correct combination can truly be scandalous (as I found out just a moment ago)!

Last week's discussion really was interesting. We were joined by none other then Julius Stobbs of Stobbs IP who provided some excellent insight into how UK practitioners are structuring their questionnaires and advertising to show/explain that shapes are not merely recognised as distinctive features but function as independent trade marks. John Ndlovu did a great job canvassing the tricky terrain between South African case law and that of Europe. Some highlights include:

Friday, 12 June 2015

The Kit Kat shape mark opinion in the EU - #sandtondiscussion


Monday's discussion takes us north to the Court of Justice of the European Union which provided its opinion this week on whether the shape of Nestle's almost century old Kit-Kat bar is registrable as a trade mark. There's more to it then that (there always is) and there is also the recent SCA judgment in South Africa upholding rights in the famous three dimensional wafer, which has seemingly contradicted a line of English decisions on the point. Why is this so? Find out on Monday.

The case discussion, coordinated by Lita, is being lead by John Ndlovu and we have a special guest appearance from leading UK firm Stobbs to give some context from a European perspective. All in all it should be a good discussion between 9am-10am CAT on Monday 15th. As usual you can follow the discussion or tweet in questions using the hashtag #sandtondiscussion on twitter.

Some action from this last Monday's discussion:

struggle images and copyright

I have struggle images and copyright on my mind as South Africa heads into into a long weekend. Tuesday 16 June is youth day and the fortunate amongst us will take Monday off  and enjoy a four day hiatus from the office.  The events that unfolded on the 16th of June 1976 were recorded in various ways, the most striking of which is Sam Nzima's photo of Hector Pieterson (below).
source: Hector Pieterson Memorial and Museum 

Sam Nzima
source: The Citizen 
Mr Nzima  took the photo within the course of his employment by The World which was then owned by the Argus Group, so copyright resided in his employer. It was only in 1998 when the Argus Group was purchased by the Independent Newspapers Group that copyright was assigned to him. By his own account here and here he did not, and does not, want to seek royalties from those who used his photo, particularly in the fight against apartheid. In any event, he could only seek royalties for post-1998 usage, when he acquired copyright. Prior to that date, the Argus Group had economic exclusivity over the photo. It appears that since 1998 Mr Nzima has received no royalties from the use of his photo. He continues to lead a modest life in Lillydale, where he fled in fear for his life in 1976, leaving his photojournalist days behind. His iconic photograph is usually attributed to him, but sometimes it is published without attribution. So when you see this photograph over the next few days, spare a thought for photojournalists, like Mr Nzima, who risk their lives whilst capturing these gripping images. And maybe we need to talk about copyright in the employment context, but wait, that's another post....




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For other photojournalist's copyright struggles read about Jurgen Schadeberg's long-running dispute with Little Brown here (1995),  here (2005) and here