Monday, 30 March 2015

Nigeria: 'Copyright piracy is a cyber security matter,' says President Goodluck Jonathan

When you want to win an election (especially in Nigeria where unfortunately Boko Haram should be at the top of your agenda) the last thing you’d expect from the aspirant is a chat about IP and the creative industries. [Afro Leo says he has never heard the UK Prime Minster, David Cameron, mention IP - not even during his first pre-election TV debate]

Thanks to the youthful MTV Base, this Leo was delighted to watch President Jonathan demonstrating that he knows a thing or two about the purpose of IP and the bane of every entertainment industry, piracy. [For this you may just watch from 2:00 to 4:30]


President Jonathan was asked about the government’s plans to curb piracy and address the issue of royalties. In his response, the President first displayed an understanding of the economic rights aspect of copyright and appreciated the importance of Nigeria's entertainment industry. He then rightly acknowledged that piracy can only be minimised (not eradicated), and said his administration had just launched three security strategy documents, one of which considers piracy a security matter. [Afro Leo says President Jonathan has his vote, just for this. He hopes that the NSA will eventually post these documents online, somewhere, so IP/IT folk can have a look]

This Leo isn't surprised that the President focused on (or, to be frank, could only refer to) the film industry. Why? Well, most importantly: (a) It helped catapult Nigeria’s GDP overnight under his administration; and (b) It has received the most attention and support (albeit with criticism) under his administration. In terms of solutions, the President also emphasised the need for more cinemas to help the industry move away from the direct-to-video model (see previous Afro-IP musings here and here).

However, this Leo didn't see the piracy vis-à-vis cyber crime angle coming. He thought it was for economies with better internet infrastructure and 'larger intangible assets to protect' such as the US (also here, here and here) or emerging software hotspots like India. In any case, Afro Leo is certain that the software industry will be very pleased with Nigeria’s foresight/preparedness considering its digital ambitions.

Are other African countries taking similar policy steps, particularly South Africa (see Afro-IP’s copyright piracy case in RSA)?

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Extra reading
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Curbing software piracy in Nigeria: Problems and solutions are here
Mcafee counting the global cost of cyber crime including piracy can be found here and here
Cyber crimes against property (Cyber squatting & Software piracy): An Indian perspective is here
The Philippines’ new cyber crime law, covering IP infringement penalties, is here






Wednesday, 25 March 2015

South Africa: Protection, Promotion, Development and Management of Indigenous Knowledge Systems Bill, 2014

The Minister of Science and Technology has published the long-awaited Protection, Promotion, Development and Management of Indigenous Knowledge Systems Bill, 2014 for public comment.  The bill covers quite a lot of ground and just a snippet of its coverage is given here.

Protection of the knowledge of indigenous communities from illicit use and misappropriation.
The bill [clause 10] provides protection to
(a) Indigenous knowledge;
(b) Indigenous cultural expressions; and
(c) Indigenous knowledge associated with natural resources.

Clause 11 of the bill set outs out the eligibility criteria for protection. To acquire protection, the indigenous knowledge or expressions must be:
(a) passed on from generation to generation and between generations in indigenous
communities;
(b) the result of the creative intellectual activity of indigenous communities;
(c) associated with the cultural and social identity of indigenous communities; and
(d) maintained, used or developed as part of the cultural or social identity of indigenous
communities.

Clause 12 of the bill grants holders of protected knowledge  and expressions exclusive rights to-
(a) enjoy, control, utilise, maintain, develop, preserve and protect their indigenous
knowledge, indigenous cultural expressions and indigenous knowledge associated
with natural resources;
(b) authorise or deny access to and use of their indigenous knowledge, indigenous
cultural expressions and indigenous knowledge associated with natural resources;
(c) receive a fair and equitable share of benefits arising from the commercial use of
indigenous knowledge, indigenous cultural expressions and indigenous knowledge
associated with natural resources based on mutually agreed upon terms;
(d) prevent misappropriation and misuse, including any acquisition, appropriation,
utilisation or practice of their indigenous knowledge, indigenous cultural expressions
and indigenous knowledge associated with natural resources without their prior
informed consent and the establishment of mutually agreed tenns;
(e) prevent the use of indigenous knowledge, indigenous cultural expressions and
indigenous knowledge associated with natural resources without acknowledgement
and attribution of the source and origin of the knowledge and its holders where
known; and
(f) ensure that the use of indigenous knowledge, indigenous cultural expressions and
indigenous knowledge associated with natural resources respects the cultural norms
and practices of the holders.

Clause 13 provides that the knowledge or protection is afforded this protection for as long as it meets the eligibility criteria.

The following remedies are provided for by clause 25:
(2) Indigenous communities possessing collective knowledge may bring infringement actions
against any persons who violate their rights as contemplated in subsection (1.
(3) An infringement action can also be instituted by indigenous communities possessing
knowledge where there is an imminent danger of the violation of their rights.
(4) An indigenous or local community may file a complaint with the Court to revoke a
registration over intellectual property right on indigenous resources that had been registered
unfairly or contrary to the provisions of this Act.
Further, it will be an offence to infringe indigenous' communities' rights [clause 25(1)] for which clause 26 prescribes the following penalties:
(a) Written warning by NIKSO as advised by the mediation committee.
(b) A fine as determined by a court.
(c) Seizure of all products and suspension of the sale derived from the indigenous
resource as determined by a court.
(d) Embargo of the activity as determined by a court.
(e) Loss or reduction of funding incentives and benefits granted by the government.
(f) Loss or suspension of the right to receive financing from an official funding
institution.
(g) Prohibition from entering into contracts with the government departments up to five
years.

Many Afro-IP readers will have views on these and other provisions of the Bill. Please use the comment box to share these and send in any formal comments to the DST. 
----------------
SA's National Recordal System explained
National Indigenous Knowledge Management System (NIKMAS) website 

Tuesday, 24 March 2015

SONY case: Kenya Court of Appeal decision clarifies discretion of Registry

One of the latest developments in Kenya is news of a really strange case to have made its all the way to the Court of Appeal in Nairobi. Attracting the attention of a three judge bench to appeal against a High Court review of a Registry decision to allow an extension of time in an opposition, local company Sony Holdings sought to avoid an opposition against their trade mark applications including the word SONY by arguing the Registry acted ultra vires (outside its powers) in granting an extension of time to the opponent. Meanwhile, patiently waiting for their chance to argue the merits of the opposition is, you guessed it, Sony Corporation, owners of the reputable SONY mark.

Despite the oddity of pursuing a technicality under circumstances which seem impossible to have succeeded, the decision has brought some welcome insight into the degree of thoroughness of the Court of Appeal as well as providing clarity on the discretion of the Registry and extension of time proceedings in Kenya. You can read the full decision here.

The High Court had dismissed the review on the basis that:

1.      The allegation of excess jurisdiction could only be challenged by review proceedings;
2.      There was no legitimate expectation of a mark proceeding to registration once it had been advertised, more so if there has been notification of a third party owning similar marks;
3.      That the Registrar has wide powers to extend time periods under the Trade Marks Act and can provide as many as they like, provided they do not exceed 90 days at a time; and
4.      The Registry had exercised their discretion within the bounds of the law in allowing the extension of time.

The appeal was lodged on 14 different grounds argued in 3 clusters that:

1.      The Registry has now power to grant extensions of time following the lapse of 60 days after the period for commencing opposition proceedings;
2.      The Registry violated the Applicant’s right to a fair administrative action and legitimate expectation; and
3.      The Registry violated the Applicant’s right to a fair administrative action and freedom from discrimination.

The appeal court concluded that the single broad issue was whether the Registry had the discretion to extend time periods under Section 21(2) the Trade Marks Act read with Rules 46 and 102 of the Trade Marks Rules.

It is settled law in Kenya that a higher court can only interfere with the discretion exercised by a lower court if the decision maker misdirected his interpretation of the law, misapprehended the facts, took into account matters which he should not have, and ignored relevant ones as a result of which an incorrect decision was made. In other words that one of the 3”I”s was present - illegality, irrationality or impropriety.  The court then dissected the relevant Section and Rules within the context of interpretation jurisprudence (local and from Australia) in coming to the conclusion that:

  1. Notices of opposition should be lodged within 60 days of the date of advertisement;
  2. The Registry has unfettered powers to extend the period beyond that, even beyond 90 days, for good reason.
The Judges then considered the purpose of trade mark law which is to “avoid unfair competition”, the public interest and the nature of the case, that the delay was not prejudicial and not necessarily, unreasonable. Also, that the appellant could not have suffered an adverse expectation because they were at all times aware that extensions were being granted. They also considered the law of review as it is applied in Kenya and concluded that like the High Court, the Registry had acted judicially and fairly.


Hence the appeal had no merit and was dismissed with costs.


Friday, 13 March 2015

Blurred lines unblurring the issue of copyright infringement...

Sinal Govender
This is a guest post by Sinal Govender (Adams & Adams) referencing two copyright cases that have been in the headlines this week both illustrating the fine line between what is legal and what is not, when it comes to works that may have been inspired by others.  

Blurred lines unblurring the issue of copyright infringement...

"The chart topping song "Blurred Lines" by Robin Thicke feat. Pharrell Williams has been engulfed in a hurricane of controversy since it first hit the airwaves in 2013.  While the lyrics of the song have received most of the criticism, many music loving folk couldn't help but notice the marked resemblance to Marvin Gaye's 1977 hit "Got to Give It Up".

An LA jury has now put the issue to bed, for now, in a verdict that has ordered Thicke and Williams to collectively pay a whopping 7.4 million dollars to Gaye's family for infringing the copyright in Gaye's song, more specifically the copyright in the sheet music of the song. It remains to be seen whether or not the decision will go on appeal, as Thicke and Williams seem to maintain that their song was created independently.  Watch this space.

This decision comes hot on the heels of an allegation earlier this year that Sam Smith's grammy winning "Stay with Me" copied aspects from Tom Petty's "I Won’t Back Down".  Although Smith claimed that the similarity was a complete musical coincidence, Petty and co-writer Jeff Lynne were subsequently given partial credit for Smith's song in a settlement agreement that escaped the courts, but not the media.

So what does this mean in a South African context?  One of the other Leos previously reported on something similar when Gavin Rajah was accused of copying a design by Zunaid Murad last year (read her take on it here). Indeed, these accusations appear to follow Rajah who just this week has also borne the brunt of similar criticism.  

Essentially, our courts have held that copyright infringement involves a two stage inquiry: not only must there be an objective measure of similarity between the works, but a causal connection between the two needs to be established as well.

In everyday speak, two works, even strikingly similar, could still enjoy copyright protection without necessarily infringing on the other.  What sets Smith apart from Thicke and Williams may be that Smith claimed never to have heard of Petty's song before creating his own, and this was never questioned.  (Although it's easier not to question things while being comforted by the royalties that resulted from the agreement). On the other hand, while Thicke and Williams claim to have created their work independently, evidence emerged during their trial that saw both of them admitting to drawing inspiration from Gaye.  Sinking nails into his proverbial coffin, Thicke was even quoted as admitting that Gaye's song was one of his favourites and that he and Williams "should write a song with the same groove".

Naturally, the more two works have in common, the less likely a court, or anyone else, is going to believe that they were created completely independently of each other.  An exception to this may be the age old example of photographers taking photos of iconic locations, which are available to all, such as THE mountain in the fair Cape.

Copyright is a fundamental tool to any creative mind, especially those in the fashion and entertainment industries: it does not require any formal registration before it can be enforced, and it can therefore be a vital tool in protecting your IP if you know how to handle it correctly.  A simple, but effective, piece of advice is to keep as clear of a record of your creative process as possible and to obtain permission from anyone inspiring that process, if at all in doubt.

This writer is grateful not to be in a position to ultimately decide on whether any foul play has taken place in the contexts set out above.  Musos will always have muses, but they should be careful not to tread on any copyright protected toes. After all, there are certainly better things on which to spend 7.4 million dollars."

Incidentally, the fine line between illegal copying and inspirational works will be the basis for discussion tonight on CNBCAfrica at 18h30 where this Afro Leo will be joining a panel including  Kyle Boshoff of African Fashion International.

If you would like to submit a guest post to Afro-IP or be considered as a guest blogger, please contact us here.

Thursday, 12 March 2015

IP policies in Africa no.54: Zimbabwe

After a long trek through the continent, this Leo is happy to find herself at the last post, Zimbabwe. The country's Inter-Ministerial Committee on Intellectual Property has led the formulation of a draft IP policy that has not yet been made publicly available. Commentary on the policy will be posted on Afro-IP after it is published for comment and the national consultation process is commenced.


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see an earlier post here on COMESA's IP policy (Zimbabwe is a COMESA member state)
see Jeremy's post here on Zimbabwe's accession to the Madrid Protocol in December 2014

Wednesday, 11 March 2015

INTA's Pre-Annual Meeting Roundtable in South Africa

Date Thursday, March 12, 2015

Time 4:00 pm–5:30 pm, followed by a reception

Location
Spoor & Fisher’s offices
Building No. 13
Highgrove Office Park, Oak Avenue
Centurion, Pretoria
South Africa


Hosted by
Spoor & Fisher



Roundtable
“Has Protection of Intellectual Property Rights in Branding Kept Abreast of the Evolution of Branding? – A Branding View”

Guest Speaker

  • Professor Adré Schreuder, Founder & CEO of Consulta Research, and extraordinary Professor of Marketing at the University of Pretoria

Admission
Everyone is welcome. For security reasons, pre-registration is required. Please bring a passport with you or other official identification.

To confirm your attendance, please RSVP. For further details please contact: k.postma@spoor.com.

Friday, 6 March 2015

Seychelles' Industrial Property Act is now in force (wef 1 March 2015)

Seychelles' new Industrial Property Act which Aurelia blogged about here came into force on 1 March 2015 in accordance with the  Industrial Property Act (Commencement) Notice, 2014 (available here via the Seychelles Legal Information Institute (SeyLII)).

Thursday, 5 March 2015

ARIPO launches online search system


After 18 months of dedicated assistance from Korea International Cooperation Agency, ARIPO has developed a fully searchable online IP tool.

ARIPO has been a destination of choice for many patent holders to cover a large African region cost effectively. However, for trade marks, the system has always been criticised because the underlying legislation has not been domesticated in most member countries, leaving users unsure of the validity of the registration in all designated states. It is expected that this searchable tool will help persuade countries and users to adopt the system for the protection of their IP.
You can check it out in full here. Their E-filing system comes into operation from 9 March. Thanks @BrendaMatanga for the tweet off about this development.
 

IP policies in Africa no.53: Zambia


Zambia adopted a national IP policy in 2010, which, surprisingly, is not publicly available either on WIPOLex or Zambian government websites. However, it should be possible to obtain the policy from the Ministry of Commerce, Trade and Industry.  This Leo got her paws on a copy but she cannot publish it here or distribute further in any other way (read: 'don't ask me for a copy').

You can trust a Leo with a secret
source
The policy contains an overview of then current law, a statement of the country's vision and goals for IP, a synopsis of related national policies, a discussion of guiding principles and a ten-year implementation framework. The policy also discusses country's aspirations with regard to the protection of traditional knowledge and new plant varieties.

In addition, Zambia is a COMESA member state and subscribes to the regional body's IP policy.


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See Zambia's WIPOLex entry here
See a news report about the launch of Zambia's IP policy here

South Africa: Report on a DTI consultative meeting on patent examination reform

Yesterday, this Leo reported here that a consultative meeting had been hosted by the DTI on copyright reform on 24 February 2015. Today, she's reporting on an earlier meeting on patent law reform hosted on 9 February 2015 by the DTI  and the Companies and IP Commission (CIPC). The round-table was well attended by both government and stakeholders, including attorneys (see Spoor & Fisher's report here).


The DTI and CIPC informed participants that substantive patent examination would be introduced in the country, perhaps as early as 2017. The idea is to fully examine domestic applications in selected fields and to partially recognise the substantive examination outcomes of other jurisdictions in respect of  foreign applicants (see Esmé du Plessis' detailed overview of the proposed system here). In order to implement this proposal some legislative changes will be required, as will the recruitment and training of, patent examiners.  The legislative process will probably commence soon, hopefully with meaningful scope for stakeholder comments and discussions which many readers of this blog would be keen to participate in. Watch this space for news of developments as they occur.

-------------------
see Jeremy's post here on an article by this Leo on some suggested ways to introduce substantive patent reform in South Africa

Wednesday, 4 March 2015

South Africa:Letter from 50 Legal Scholars to South African Government, re: Flexible Copyright Exceptions


Following a consultative meeting in Pretoria recently, the DTI invited comments and draft legislative provisions to assist it in its quest to reform copyright law. It is to be lauded for its consultative approach. In response to the DTI's invitation, a group of 50 scholars from across the world (disclosure: this Leo is one of them) have penned a letter to the DTI offering both commentary and draft legislative text. Peter Jaszi, Sean Flynn and Michael Carroll of the American University Washington College of Law's Program on Information Justice and IP (PIJIP) organised the preparation and signature of the letter. You can read the letter on the infojustice blog here.




Thursday, 26 February 2015

IP policies in Africa no.52: Uganda


Elizabeth Tamale gives a very useful and detailed overview of Uganda's TRIPS Implementation which includes recent legislative developments in Uganda up to September 2014 here. This overview notes that whilst there are existing policies that are relevant to IP, 'an overarching national policy framework covering policy linkages between IP and other sectors such as public health, agriculture, environment, education, science and technology, culture and traditional knowledge, is still missing'.

Hopefully such a policy will soon be formulated. When it does it will no doubt be influenced by the
policy documents and positions of regional economic communities and  sub-regional IP organisations to which it belongs. The relevant policies include:
- the East African Community's Regional Intellectual Property Policy on the Utilisation of Public Health-Related WTO-TRIPS Flexibilities and the Approximation of National Intellectual Property Legislation (available here) and
- COMESA's regional IP policy (available here).
Uganda also has a vibrant IP community that includes organisations such as the Center for Health, Human Rights and Development (CEHURD). So IP policy formulation discussions are bound to be interesting.

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see Uganda's IP laws on WIPOLex here
see IP-Watch's articles on the EAC Regional Intellectual Property Policy on the Utilisation of Public Health-Related WTO-TRIPS Flexibilities and the Approximation of National Intellectual Property Legislation here and here

Amstel Lite packaging too close rules ASA Directorate

 



versus







The Advertising Standards Authority have this week published their ruling in the much awaited look-a-like case between South African Breweries (who produce the well known Castle Lite beer) and Brandhouse Beverages (who launched Amstel Lite last year). 

The ruling of the ASA Directorate sets out the grounds upon which South African Breweries complained of the look-a-like packaging and the response by Brandhouse. Relying on the Final Appeal Committee ruling in Amos/Pritt glue stick matter upholding the colour red in packaging (reported here and here), the ASA Directorate, finding in favour of the complainanat, rules that: 

 "In the present matter, the complainant has enjoyed significant sales of Castle Lite over a period of 20 years, and has spent millions of rands advertising it. The Castle Lite packaging, which features a colour combination of green and silver, has been used consistently over the 20 year period, together with the word "LITE”. This colour combination, together with the word "LITE”, has been used exclusively by the complainant in the South African market for a long time. Accordingly, the Directorate finds that, similar to the Pritt glue stick matter, the complainant has obtained advertising goodwill in the packaging of Castle Lite, specifically its six-pack shrink wrapping and its cans. 

The Amstel Lite six-pack shrink wrapping and cans feature a similar colour combination to that of Castle Lite, and the colours are used in similar ratios, as pointed out by Cartils. In addition, the Amstel Lite packaging also prominently features the word "Lite”. Given that the green and silver colour combination and the word "LITE” have been unique features of the Castle Lite packaging in South Africa for a very long time, the use of similar elements by Amstel Lite has effectively done away with the uniqueness of these features on the Castle Lite packaging, and is therefore likely to diminish the advertising goodwill that the complainant has built up over the years in its Castle Lite packaging.  
The Directorate therefore finds that the Amstel Lite six-pack shrink wrapping and Amstel Lite cans exploit the advertising goodwill of the complainant’s Castle Lite six-pack shrink wrapping and its Castle Lite cans. The respondent has therefore contravened Clause 8 of Section II. 

The full ruling can be obtained here. Brandhouse have lodged an appeal against the ruling and a suspension of the period within which to withdraw product bearing the packaging. So, more to come on this one.

Tuesday, 24 February 2015

Cochrane goes to the ASA in latest Adwords development in South Africa


Yesterday, boutique IP firm RM Tucker Attorneys notified Afro-IP of their article (Google Adwords - an even clearer picture) in the latest development in Adwords legislation in South Africa, once again involving fencing specialists Cochrane Steel and M-Systems. In this development, Cochrane Steel sought a ruling from the Advertising Standards Authority on the issue keyword bidding.

Readers will remember that Cochrane Steel had sued M-Systems for unlawful competition for bidding on the mark CLEAR VU as an adword. Cochrane Steele lost, setting a precedent that the mere bidding on a competitor's mark as a keyword without more (eg it appearing in the ad text) is not unlawful competition. The High Court case is well covered by this blog and you can view those summaries here, herehere and on CNBC Africa, here.

In January, Cochrane Steel lodged a complaint before the Advertising Standards Authority. Ryan Tucker, and advocate Lisa Oken  set out the ASA development in their summary as follows:

"THE NEXT STAGE – TAKING IT TO THE ADVERTISING STANDARDS AUTHORITY (“ASA”)

In a ruling handed down by the ASA Directorate on 3 February 2015 (M-Systems Group v Cochrane Steel Products; Case number 2014-1859F), the next stage of the saga between the parties was decided. The complaint lodged by Cochrane was based on identical facts as contained in the above judgment. The facts form part of the ruling and are as follows:
  1. Cochrane started advertising its fencing in 2006 under the trade mark CLEARVU.
  2. In 2010, Cochrane lodged 2 trade mark applications for the CLEARVU trade mark – these were opposed by M-Systems (currently before the Registrar of Trade Marks).
  3. Cochrane still uses CLEARVU to advertise and sell its fencing.
  4. In 2012, M-Systems began trading in similar fencing products and it started bidding on the keywords “ClearVu”, Clearvu” and “clear view” on the Google Adwords advertising service. (for further detail on how Google Advertising works, please see this links provided below).
  5. Other competitors have also started to bid on similar keywords and Cochrane has had to increase its bids on its own trade mark (product name) in order to lessen/decrease the damage as a result of “concurrent use with competitors”.
Cochrane argued that despite the same facts being in issue as in the Gauteng Local Division, Johannesburg judgment, the ASA is still obliged to ‘determine whether or not the Adwords used by M-Systems amount to “unlawful advertising”, more specifically, a breach of clause 8 of Section II of the Code’ (the Advertising Code), which relates to the ‘exploitation of advertising goodwill’.
M-Systems responded to the complaint as follows:
  1. The matter has been decided already by the High Court, which held that M-Systems Google advertising practices (i.e. bidding on Cochrane’s trade mark or similar thereto) were not prejudicial to Cochrane’s business – M-Systems was competing fairly and legally.
  2. None of its advertisements incorporate the word “clearvu”, thus they cannot be construed as implying that M-Systems’ product is the same as Cochrane’s.
  3. It alleged that Cochrane was merely trying to prevent fair competition by lodging unfair complaints.
THE RULING OF THE ASA DIRECTORATE
The main issue that the ASA Directorate dealt with was its jurisdiction in the current matter. It stated that the ASA only hears matters relating to “published advertising” (in relation to the definition of ‘advertising’ in the ASA Code). Despite the fact that Google’s Terms and Conditions for its Adwords specifically incorporating ‘any applicable advertising codes of practices’, this does not automatically extend the scope of the ASA Code to include Adwords purchased on a “behind the scenes” basis’.
The ASA Directorate proffered that Cochrane is not objecting to the actual content or claims of M-Systems’ GoogleAds that appear when one does a search for “clearvu”, but rather finds it objectionable that M-Systems uses the keyword “clearvu” to ensure its sponsored link appears as one of the GoogleAds.
Clause 4.1 of Section I of the ASA Code defines an ‘advertisement’ as follows:
‘… any visual or aural communication, representation, reference or notification of any kind which is intended to promote the sale, leasing or use of any goods or services; or which appeals for or promotes the support of any cause. Promotional content of display material, menus, labels, and packaging also fall within the definition. Editorial material is not an advertisement, unless it is editorial for which consideration has been given or received.‘
The ASA then referred to Revivo Tea v P Linzer / 13898 (29 June 2011), Loan Discovery SA v Brown / 21626 (17 April 2013) and the websites, http://www.webopedia.com/TERM/A/adwords.html and http://www.google.co.za/adwords/how-it-works/ , in coming to its decision that an Adword is not regarded as the “advertisement” itself, but merely as a trigger that ensures that a person’s advertisement is displayed. There is a marked difference between what is considered as the person’s “advertisement” and the “Adwords” selected. The ASA acknowledged that there was a relationship between the keyword and the advert but for the purposes of applying the code, they were different.

According to the ASA, all of this supports the argument that the “adwords” selected are not the actual advertisements, but merely the variables that trigger the display (or not) of a person’s advertisement.
The ASA held that the “Adwords” in which Cochrane seeks to establish goodwill are not “advertisements” as defined in Clause 4.1 of Section I of the Code. In the circumstances, the ASA does not have jurisdiction to rule on the business or advertising practices of Google Adwords. Rather than the complaint’s dealing with the “content” of advertising as such, it rather deals with the advertising practices of Google AdWords.
Bearing this in mind, and given that the words “clearvu”, “clear vu” or “clear view”do not appear in the GoogleAd submitted by the complainant, the complaint cannot be entertained, as it does not relate to any published “advertisement” as defined in Clause 4.1 of Section I of the Code."

Afro Leo contacted the ever efficient ASA yesterday and was told that no appeal had been filed. So it is 2-0 for M-Systems, but the saga is not over. There has been a request for leave to appeal in the High Court case due to be heard soon. There is also a pending trade mark opposition case in which M-Systems has claimed that the mark CLEAR VU is not registrable in the form in which it has been applied because the words clear and vu (as a misspelling of view) are descriptive. The law on keyword bidding is also developing in other jurisdictions.

Tucker and Oken suggest that the ASA should not have dismissed the complaint and used the opportunity to embrace digital advertising.

"We would like to stress that the definition of ‘advertisement’ includes ‘any visual or aural communication, representation, reference or notification of any kind…’ Surely the use of the words “of any kind” should have been taken by the Directorate to incorporate digital advertising and Google Advertising in particular."

Afro-IP would like to know your views. Is bidding on a keyword, without anything more, advertising or would you have preferred the ASA to have become a forum for these types of disputes if misuse of advertising goodwill can be shown, as Tucker and Oken suggest?
The ruling can be downloaded here.

Monday, 23 February 2015

USPTO dismisses cancellation action for 'nollywood' trade mark

That home DIY moment when you realise you only have two options: down tools and live with it, or spend some cash for an expensive expert to sort it out. This Leo has just learned (a few months later) that the ‘nollywood’ trade mark challenge reported here last year ended without much argument.
Do I need a forklift for this?

Reproduced below is the body of the withdrawal letter to the Trademark Trial and Appeal Board (TTAB) in which the petitioner also asked for a chance to slug it out again in the future. 


Today September 1, 2014, I Olusola Osofisan, wish to withdraw petition #92059251 because I have been unable to secure legal representation due to its cost and my financial limitations.

The withdrawal of this petition does not in any way mean that I am admitting that the Registrant should have been given the trademark of the term Nollywood by the USPTO. In fact, I am more convinced than ever that he pulled a fast one on everyone, but it is what it is and I do not want to set up a potentially bad precedent by mishandling the case that should be left to an attorney.

I believe the USPTO should revisit its approval of this registration by doing additional investigation – or simply review the original due diligence done when the trademark was granted. Somebody goofed in a big way. Dictionaries now list the word as the name of the Nigerian movie industry and this registration flies in the face of simple research. Registrant’s claim to First Use is nullified by the New York Times usage and his further claim to consistent use is nullified by the attached survey and a simple Google search.

This misguided granting of the ownership of the term Nollywood to the Registrant is going to cause havoc for thousands of legitimate businesses around the world (It has already sent an aspect of my business on a downward spiral through Registrant’s C & D, resulting in the loss of hundreds of Dollars). Even the Nigerian Federal Government support of the Nollywood industry through ProjectNollywood.com is now threatened through the use of the name. Another party or agency with adequate resources may take up the challenge in a new filing at a future date. I reserve the right, if I can, to join such new filing at a later date.”


TTAB’s response
Unfortunately it didn’t show much sympathy to the petitioner. The cancellation petition was not only terminated but also dismissed with prejudice for failure to follow Rule 2.114(c). So, it seems the petitioner may not get a second bite at the Nollywood cherry. Anyway, let’s see if the ‘nollywood’ trade mark owner will be able to maintain the mark on the register and take enforcement actions where/when necessary.

The moral of the story for this Leo is this: obtain appropriate legal advice from the outset (Says Afro Leo, “it’s meant to help not just for the law but also costs v benefits analysis which includes having your name, documents and so on all over the internet.”).

Friday, 20 February 2015

Teaming up with Thomson Reuters for IP Due Diligence Seminar

Thomson Reuters IP Due Diligence Seminar
Innovation takes center stage for today’s most successful organizations. How do industry leaders maximize their innovation? And how can you maximize yours? We’ll show you.
In our free seminar, see how our solutions help you seamlessly develop, protect and monetize your patents. Learn how to:
  • Identify and pursue innovation opportunities with trusted content and powerful analytics
  • Manage your patent portfolio with greater efficiency and collaboration
  • Maximize your IP value by efficiently aligning IP and business strategies
  • Ease your workflow and make confident decisions with expert patent services support
DATE:
19 March 2015
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Thursday, 19 February 2015

IP policies in Africa no.51: Tunisia

Tunisia does not yet have an IP policy but in 2013, a new Constitution was passed which provides that “intellectual property is guaranteed” (Article 41) and that the“State encourages cultural creation” (Article 42). As noted by Abdel-Latif (here) this will require unpacking in a proper public policy instrument to ensure that both aspirations are realised through an IP framework that appropriately nuanced. Hopefully, work will soon begin on a policy to  inform such a framework.

PAIPO host
Tunisia was confirmed as the host of the Headquarters and Secretariat of PAIPO by
the AU Assembly’s 23rd Ordinary Session held in June 2014. This decision is recorded as item 6 of the Assembly/AU/Dec.522(XXIII) which you can view here.

As noted by Jeremy recently (here), it has been incorrectly reported that Tunisia will host OAPI (Africaine de la Propriété Intellectuelle) which already has a home in Yaounde, Cameroon. This error seems to have come about the omission of the 'Pan' in PAIPO's name. So it was reported that the African IP Organisation (OAPI) was going to be hosted by Tunisia, rather than the Pan-African IP Organisation (PAIPO).  The two organisations' names are very similar and the distinction between them is likely to be lost to those outside the IP world, so it is easy to see how the error occurred.

If both organisations are to co-exist in the future, we'll probably see many more instances of the same error. Especially since sometimes OAPI is referred to AIPO, which is its Anglophone name's acronym. So the organisations may  find that an educational campaign will be in order. This Leo's not copywriter, but perhaps  PAIPO not OAPI/AIPO! will do.  


Some Tunisian architecture from Promotunisis


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See Tunisia's WIPOLex entry here 
See Ahmed Abdel-Latif's commentary on Tunisia's constitutional provisions on IP here  and a related Afro-IP post here