Thursday, 23 February 2017

Darren Olivier

SABC v Via : Freedom of Expression and Copyright in SA

One minute read

The SABC asserted a copyright infringement and contractual claim over a documentary that it had commissioned from Via and paid for, and had never aired, against Via. Via defended arguing that it had a right under freedom of expression to retain a single copy and use it because the SABC never intended to broadcast it, and because it was in the public’s interest. Via also claimed that broadcasting it was within other fair dealing exceptions, and that the decision not to air the documentary should be reviewed under the Promotion of Administrative Justice Act.

In a thorough judgment by acting judge Nowosenetz which traverses the principles of copyright legislation within the context of the South Africa’s constitution, both parties were successful to some extent. However, the Copyright Act was the most successful of all. The SABC obtained their interdict successfully arguing against the exploitation and single copy exception based on the constitution and the broadening of the defined fair dealing exceptions under the Act. Via managed  to curtail their obligations to deliver up all that was asked for.

Discussion & Summary

Copyright legislation in South Africa has taken a real hammering lately. From the much talked about changes mooted in the Copyright Amendment Bill to the tough judgment in Moneyweb v Media 24, it has been a testing time for the 39 year old piece of legislation.

The South African Broadcasting Corporation (SABC) has also been the subject of criticism and calls for reform, so perhaps when it sought an interdict against the broadcast of one of its commissioned works, on the basis of copyright, it found an equally war-torn but ultimately worthy bedfellow.

In its case against film production house Via-Vollenhoven and Appollis Independent CC and others (collectively, Via), which evoked interest from the Freedom Of Expression Institute, the SABC and copyright had to endure a legal barrage based on constitutional principles.
Notably, Via argued (see para 25) that the Copyright Act was never intended to prevent distribution of a documentary when the owner (SABC) has no intention to exploit the film (the exploitation exception). In other words Via retained a right to exploit the work even though SABC held the copyright. This is somewhat of a similar justification to the compulsory licensing provisions found in patent legislation.

The facts
The facts, rather briefly, are that SABC commissioned an investigative documentary which was entitled “Project Spear: - Stolen billions, spies and lies” (the work) in 2011; a piece about apparently illegal financial lifeboats given to financial institutions under the previous government. By 2012 a version of the work was delivered to SABC. The work was rejected by the SABC for being defamatory and contrary to their editorial policy, according to the papers.
Via wanted to broadcast the work and took steps to do so using Noseweek and 702 but stopped when requested to do so by SABC’s lawyers, making various undertakings. SABC then approached the court for relief on breach of copyright and on a contractual claim relating to its commissioning agreement with Via. Amongst the defences and counter claims were that:

1.     The Copyright Act (the Act) entitles Via to retain a single copy of the work;
2.     The Act should be interpreted to imply the exploitation exception based on freedom of expression:

Courts are bound to read legislative provisions through the prism of the Constitution.” according to the decision.

Housekeeping issues
The court methodically concluded that the work is protected by copyright, that the SABC (in commissioning the work and paying for it) is the owner of the copyright (subject to any agreement to the contrary) and that copyright is a positive right enabling it to “exploit” the work in a number of ways, subject of course to certain limited fair dealing exceptions (research and private study, reporting on current events etc – see para 17 of the judgement).
There is also an exception if the reproduction is prescribed by regulation and is not in conflict with or unreasonably prejudicial to the legitimate interests of the copyright owner (S13 of the Act).
Through this analysis, the court also concluded that the use of raw footage required to make the work would, effectively, infringe the copyright in the work. It did not consider it a separate work. This is important because copyright bestows a positive right i.e. a right to, for example, reproduce the work
There is also the factual conclusion reached by the court that the SABC had no intention to exploit the work or the raw footage (para 24). This is important in the context of Via’s constitutional defence.

The exploitation exception denounced
The exception is thoroughly dealt with at paras 25-33. The court concluded:
“[Via’s] construction of public good or welfare is equated to dissemination of ideas and this is nowhere to be found or implied [in the rationale for copyright protection, not just in South Africa but elsewhere too]”
In applying a constitutionally compliant meaning to legislation, the interpretation must not be “unduly strained”.
“This statutory shift of authorship of a film does not necessarily mean that the filmmaker cannot be the owner [i.e. it can be changed through agreement]”
“Even then it does not per se limit freedom of expression…”

The single copy exception
Via were arguing that the author of the work should be entitled to keep a single copy of it as part of a general right to fair dealing. Reliance was placed on S13 (see above) and that SABC were not going to exploit the work ie that this was a special case. However the court was having none of it, concluding that there is no single copy exception in the Act and that, unlike the position in other countries, the fair dealing exception in South Africa is confined to a finite list.
Via then argued that using the work fell within the exceptions relating to “criticism and review” and/or “reporting on current events”. Again the court was not persuaded going as far as to say that this version on the facts, was “patently a sham”. Via’s intention was to “get the story out there”, and the work did not cover current events.

Constitutional invalidity
The argument was that the exclusion of an exploitation exception was contrary to Via’s freedom of expression. The difficulty Via had with this argument was that the right to tell the story was not prohibited by the Act, only the use of the work (for which the SABC had paid) was restricted. Hence it did not violate freedom of expression.
The Court also upheld the notion that intellectual property rights are contemplated as a form of property in the Constitution (see para 41). You may recall that this formed the basis of Dean’s argument on the unconstitutionality of plain paper packaging regulations. In this decision it formed the basis of the court’s view that the Act balances freedom of expression with proprietary rights under Section 25 of the Constitution and that the relevant provisions of the Copyright Act are justifiable law (see para 43).
The Court also dealt with the rationale behind ownership of the work vesting in the SABC – the corporate, and not Via – the creator, under copyright legislation. It concludes that the Act “strikes a balance” between their interests.

The review under PAJA
Added to Via’s extensive arguments was that SABC’s decision not to exploit the work and/or not sell it the work to one of the respondents should be reviewed under the Promotion of Administrative Justice Act. SABC, a state owned company, contented that the decisions do not constitute administrative decisions but contractual ones under their agreement with Via. The court agreed (para 48-9).
The remainder of the judgment deals with specifics of the delivery up and a counterclaim based on a contract for SABC to negotiate in good faith with Via including but not limited to the sale of the work.
In short, SABC were partly successful in obtaining the interdict and delivery up of the raw footage but Via successfully obtained an order that SABC had to negotiate with them in good faith, as had been agreed in the commissioning agreement.

Final Comment
Whether the attack on the provisions of the Copyright Act based on constitutional grounds was a function of the strength of the Legal Resources Centre in this area or because the copyright defenses were so weak is not clear but it does show the vulnerabilities of intellectual property legislation to constitutional challenges. It is not the first of these cases and will not be the last.

The judgment has not been appealed. The story though, is still in the press.

Darren Olivier  

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Tuesday, 21 February 2017

Chijioke Ifeoma Okorie

Nigeria's approved society of collectors still limited, for the time being

Does an exclusive licensee of copyright works [Musical Copyright Society of Nigeria Limited] have the right to exercise property rights in such works outside of and notwithstanding the provisions of Sections 17 and 39 of Copyright Act 2004, which requires the approval of the Respondent [Nigerian Copyright Commission] before one can act as collecting society?

This is the principal question that the Court of Appeal was asked in the case of Musical Copyright Society of Nigeria Limited v. Nigeria Copyright Commission CA/L/575/2009 decided late last year. As readers will recall, this is just the latest in a series of attempts by the Musical Copyright Society to secure the approval of the Copyright Commission to become a collecting society. See here and here.


The facts of the case are straightforward. Musical Copyright Society of Nigeria Limited (MCSN) applied to the Federal High Court (the court of first instance) for declaratory reliefs in the main that by virtue of the fundamental rights guaranteed under the Constitution, it does not require a license from the Respondent to carry on the activities of a collecting society.

That application, dismissed at first instance, was also dismissed on appeal, essentially on the ground that the application was made under the wrong procedure and, therefore, the court had no jurisdiction to entertain the application in the first place. The procedure in question was the application made under the Fundamental Human Right Enforcement Procedure Rules 1979, made strictly to be used when the main relief is the enforcement of the rights stated under Chapter IV of the Constitution. 

Issues raised on appeal

In his lead judgment, Justice Uzo I. Ndukwe-Anyanwu identified the issue of the competency of the appeal and 3 other issues raised by the parties. While the learned Justice answered the question of the competency of the appeal finding the appeal incompetent, he declined to resolve the other 3 questions raised by the parties stating that resolving the issues “would just be a mere academic jamboree”. [Page 34]

The three questions raised were:

Is intellectual property within the meaning of moveable or immovable property referred to and protected by the 1999 Constitution or the African Charter of Human and People’s Rights

MCSN argued that insofar as Section 11 of the Copyright Act referred to copyright as a moveable property, copyright falls within the property referred to and protected by the Constitution. The Nigerian Copyright Commission (NCC) conceded that copyright was indeed moveable property but the assignee or licensee of copyright does not own property rights within the contemplation of Section 44 of the Constitution [pages 16 – 17].

Can an entity [MCSN] negotiate licenses and collect and distribute royalties in respect of copyright works without the approval of the Copyright Commission
The contention of MCSN was that the Commission’s approval was not required to enjoy copyright in musical works seeing as it acquired the exclusive licenses prior to the commencement of the Copyright Act. The Commission argued that in so far as MCSN was an association of copyright owners and had the objective of negotiating and granting licenses and royalty collection and distribution, it was a collecting society and required the Commission’s approval to legally act.

Does the requirement of seeking the Commission’s approval to carry on as a collecting society offend the provisions of the Constitution regarding freedom to form associations and control property?
MCSN’s reasons for asserting that the requirement for approval was unconstitutional was that such requirement deprived it of the right to freedom of association as guaranteed under the Constitution. The Commission was of the opinion that such requirement was not a denial of right but a procedure to the acquisition and enjoyment of right.

While the court made no pronouncement on the said 3 issues, it did manage to indicate that questions of requirements for approval to act as collecting society are not questions of fundamental rights infringement of collective-society-hopefuls. Copyright licensees have no right to sue for infringement of fundamental human rights relating to the subject matter of their license. It is sufficient to note that the Court rejected at the outset the view of MCSN that the assignment of right to manage copyright also constituted the assignment of right to sue for infringement of such copyright under the Constitution. According to the Court, it is only the owners of copyright that can sue on the infringement of their rights. [Page 31].


It is disappointing that the Court of Appeal chose not to address the crux of the appeal. 

The decision of the Federal High Court refusing the applicant’s application was the subject of the appeal. Yet, the Court of Appeal chose to ignore the subject of the appeal and focus on the technical issue of procedure. That is not say that the Court of Appeal acted amiss – competency of suits goes to jurisdiction which supercedes all other issues no matter how pertinent.

The reaction of the Copyright Commission and that of its favoured collecting society, COSON to the judgment of the Court of Appeal is a tad misleading. Apart from COSON’s headline “Court holds that the provisions of the Copyright Act requiring the approval by the Copyright Commission of a CMO are constitutional”, both the NCC and
COSON’s reportage of the judgment is almost word-for-word: “In a unanimous judgment of the Court of Appeal Lagos delivered on October 21, 2016, the Court dismissed the MCSN appeal. In the lead judgment delivered by Anyanwu J.C.A, the court held that the provisions of the Copyright Act do not violate any constitutional rights reserved for MCSN”.

Contrary to the NCC’s assertion that the Judgment has “laid to rest the contention on who between COSON and MCSN should carry out the functions of collecting society for the music industry”, the Appeal Court in declining to resolve the issues raised by both MCSN and NCC at the appeal, has extended the fight matter to another day.

You can review the full judgment here or contact Afroleopa here.

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Monday, 20 February 2017

Afro Leo

Putting a price on creativity- Nigerian musos insist on their rights

The African music scene is thriving and popular artists are set to share in a projected R309 million annual earning in 2019 on digital formats alone.

While artists on the continent compose lyrics to feed avid consumers, watchdogs are having to make a song and dance about telecoms companies using their tunes illegally.

This is very much the case in Nigeria where a lawsuit filed last year has been touted as the biggest copyright infringement in Africa.

In May 2016, the Copyright Society of Nigeria (COSON) took MTN to court over alleged infringements on musical copyrights, claiming 16 Billion Naira (around R700M) in damages.

According to COSON’s claim, MTN infringed copyrights in COSON’s musical and sound recordings in MTN Friendship, Connect and Walk In Centres across Nigeria.

The claims also extended to MTN road shows, various MTN Music Concerts, Festivals, and award Shows, as well as platforms such as mobile radio and product activations.

A recent study of the African entertainment sector by PricewaterhouseCoopers (PwC) accountants showed rapid earnings growth in many African countries, fuelled largely by live performances by local artists.

PwC’s Entertainment and Media outlook 2017 says that digital will account for the majority of spending on recorded music in Africa in 2019. According to the authors, the Nigerian music industry will grow at a projected 13% annually.

“Healthy growth in music revenues in Nigeria. Nigeria experienced a 3.8% rise in total music revenue in 2014 to US$51 million, up from US$50 million in 2013, as digital music began to make a larger impact. Annual revenue is forecast to grow by an estimated CAGR of 11.3% to reach US$88 million in 2019.”

Thirty-six year old D’Banj, also known as The Kokomaster, is believed to be the wealthiest musician in the country, followed by TuFace Idibia and Yemi Alade.

The PwC study states that download sales peaked in 2015 and revenue from consumer spending on physical formats would stand at R302 million in 2019, less than half the revenue figure in 2014. Lower ringback tone sales and a move to access over ownership is likely to reduce the share to just 14% in 2019. attribute the boost in intellectual rights in the entertainment sector to a rising unemployment.

More Nigerian youths have discovered their creative talents and are now earning a living by creating intellectual and artistic works. International trade between Nigeria and other countries has contributed to the influx of international artistic works into the market. It is inevitable that owners of these works will only get their due return if they share in proceeds or obtain a fair compensation for their works,” says Emmanuel Ekpenyong writing on the site, adding that this can only be enforced if the work is actually registered with the copyright commission or COSON.

The Copyright society of Nigeria (COSON) is a collective management organization that registers artists and acts as the industry watchdog.

The Nigerian copyright  law, CAP C28 says that work eligible for copyright includes literary, musical and artistic works, cinematography films, sound recordings and broadcast material. The copyright can be conferred on the author who is domiciled in Nigeria or a citizen of the country.

COSON and MTN met out of court in December 2016, mediated by Prof Bankole Sodipo, in a bid to agree on a mediated settlement. Speaking after the meeting, COSON’s chair Tony Okoroji said a framework had been agreed upon in which to resolve the matter.

The meeting also agreed that all parties and organisations associated with them should cease all adversarial actions henceforth to ensure that there is a conducive environment for the resolution. When we are done, every creative person and investor in the Nigerian music industry will benefit immensely from the engagement,” said Okoroji.

Funso Aina, spokesperson for MTN Nigeria, said the matter is still in court at its preliminary stage. 
"MTN has filed a defence against the action. On a related note, discussions are still ongoing between parties under the supervision of a mediator on a possible amicable resolution. The court adjourned the matter to April 4, in order for parties to report to the court on status of settlement discussions."

There is more on copyright enforcement in Nigeria from Afro-IP this week. Chijioke Ifeoma Okorie will be publishing a much awaited post on the judgment in Musical Copyright Society of Nigeria Ltd v Nigerian Copyright Commission. Stay tuned.

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Friday, 17 February 2017

Afro Leo

Celebrating 40 years, ARIPO kickstart 2017 with pair of MOUs

ARIPO signed two significant agreements in February, paving the way for better economic growth and innovation in Africa.

According to the African Regional Intellectual Property Organisation (ARIPO), Directors General Paulin Edou Edou (OAPI) and Fernando dos Santos (ARIPO) signed a four-year co-operation agreement on behalf of their organisations, following a three day seminar in Harare.

The formal accord will entail a streamlined approach toward harmonising their systems, providing technical assistance and taking common positions on IP policies. A joint commission will meet annually.

Another ground-breaking memo of understanding was signed with CISAC, the International Confederation of Societies of Authors and Composers, who represent over four million creative the world over and are considered the global body for the protection of creative rights.

The two signed the agreement on February 14 at a ceremony in Harare, after the organisations recognised a need to further the creative and cultural potential of the African nations.

Royalty collections in Africa total US$68.6 million annually with potential for sharp growth. Studies in a few ARIPO nations (namely Kenya, Malawi and Tanzania) showed that creative industries contributed three to five percent of the GDP. Collections for creators grew almost 15% in 2015, yet amounts to less than one percent of the global collections report.

The Memorandum of Understanding signed by the two bodies will see joint projects on strengthening copyright, technical exchange, education and training of organisations, as well as collecting revenue on behalf of creators.

ARIPO Director General Mr. Fernando dos Santos said the signed agreement should act as a catalyst for the African governments to continue supporting and promoting the creative industries.”

CISAC oversees a global network of 239 member societies in 123 countries. These include 36 members in 31 African countries. These organisations collect and distribute revenues and promote the interests of creators across five repertoire groups: music, audio-visual, drama, literature and visual arts.

See for more.
Bits & Bobs

Big shout out to Victor Nzomo (IPKenya blog) for guessing where Afro Leo found himself midweek. Gabon, you should go there! Happy Friday.

Look out for information on the Africa's largest ever copyright claim, coming straight to you via Afro-IP on Monday.

Thanks to those who voted on our rejuvenate poll (click here and then gaze right) - an overwhelming show of support. Much appreciated.


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Wednesday, 15 February 2017

Afro Leo

Where in Africa is Afro Leo?

Bonjour fellow Africa travellers.

This week, I am surrounded by nature, with huge dunes that rise sometimes 200 meters and give life to a dense and humid forest, savannah and mangrove. In these wonderful surroundings, chimpanzees, lowland gorillas and colobus monkeys are free to enjoy the forest food. The animals are well protected here and buffalo, elephants and panthers live without fear of being poached.

Eroded white and red clay has created natural amphitheatres – or ‘cirques’- which are amazing to look at. I went up in a helicopter yesterday to view the animals and tonight I am going to the coastal strip to see the turtles that lay their eggs on the beach. Along this coastline is a lagoon where the world's highest number of islands in a river mouth can be found- more than 400 small outcrops.

This paradise is found in Africa’s least densely populated country and visitors have likened it to Costa Rica. You’ll also be interested to know that it is the home of a hallucinogenic called ‘Iboga’ which is seducing the Western world with its medicinal properties. Can you guess where am I?


It is situated on the equator

The home language is French

If I could see very far, I would be able to see Brazil
The first IP convention that this country signed was in 1962, the last in 2003
The African and Malagasy Intellectual Property Organization (OAMPI) was signed in the capital city
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