Tuesday, 28 August 2012

Darren Olivier

RSA: Discovery extraction held to infringe copyright

Recently, the Board of Healthcare Funders ("BHF") succesfully took on Discovery Health over their use of the Practice Code Numbering System (PCNS) claiming copyright infringement under the RSA Copyright Act.

The facts are, briefly, that in 2010 Discovery Health resigned it membership of the BHF which had been consitituted as a representative association of medical aid schemes. According to the BHF press release, Discovery was attempting to develop an in-house system of its own by using the PCNS without authorisation.

The PCNS is a set of numbers or codes which identify all of the medical practitioners and medical service providers in RSA together with associated data. The PCNS is a tool for facilitating payment under the medical aid schemes and assists in preventing fraud by, for example, verifying that a claimant is claiming an amount from the scheme within his or her scope of practice and discipline. More information is contained at paras 6-26 of the judgement.
In South Africa, this type of data can protected by way of copyright. In the UK, this may also fall under legislation protected database rights.

BHF claimed for an interdict/injunction against the use of the PCNS, delivery up of the infringing material, costs as well as damages in the form of a reasonable royalty. The damages claim was worded to cover both a set royalty in the form of a standard rate or a separate enquiry into damages. There was no claim for so-called additional damages, presumably because the alleged infringement was not considered that dishonest...which brings us to the defences raised by Discovery. These are that:

Just a number - symptoms of PCNS?

1. No copyright exists in the work ie not original because it is simply a compilation of numbers and data;
2. If it does exist, BHF is not the author of the work;
3. If it does exist, the State is the true owner of the work;
4. If it does exist, Discovery are entitled to use the work via a licence, either implied or continued; and/or
5. No infringement

The Court held that:

1. The work is a compilation which, in its totality is original being the subject of work, energy, skill and judgement;
2. That BHF are the authors of the work either directly through its employees or through the exercise of control and supervision over the work;
3. The State is not the owner of the copyright - "at best it was incidental to governmental licensing and monitoring power";
4. The facts requiring payment of a user fee which Discovery had paid did not sit well with a defence that there was an perpetual implied or continued licence to use, copy and reproduce the data;
5. The Court inferred from an admission by Discovery that they had extracted and imported a portion of the data into its own database, that it had used a substantial part of the information and therefore infringed copyright. Afro Leo read "use" to mean "reproduce" which would be an infringement.

As a result, the injunction, costs and delivery-up were granted by the Court. On the question of damages in the form of a reasonable royalty, the Court held that since the royalty rate had been fixed with specific reference to an agreement it appeared to be reasonable and determined by a manner that is fair, transparent and equitable and therefore no separate enquiry need be held.
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Monday, 27 August 2012


A review of African official IP websites: no.7 Cameroon

This little Leo likes the idea of having a regional IP system in the continent, but one which has the benefit of a strong foundation. However, based on his discoveries on the A-Z tour, he is now wondering whether the current regional systems are having any negative effect on national offices or making their hosts complacent. 

Headquartered in Yaounde, Cameroon, the organisation Africaine de la Propriété Intellectuelle (OAPI) is one of the two regional intellectual property (IP) organisations in the African continent with sixteen current members. As the OAPI prepares to celebrate its fiftieth anniversary under the theme, "intellectual property for development in Africa", its current website cannot even match the CIPC of South Africa. According to the celebration announcement (as translated by Google), discussions at the event would include: promoting intellectual property activities (Afro Leo would like to know what they are), developing the reputation of the organization (Afro Leo says that it is high time, and where else to start than its website: at least, sort out the important pages which are still under construction, e.g. here) and boost its brand image (“OAPI should be aiming to match its counterparts in Europe e.g. BOIP; utilise the internet generally" says Afro Leo).

Afro Leo was somewhat disappointed with Cameroon last year, so has anything changed in twelve months? Sadly, the answer is 'No'. In fact, things have actually gone from bad to worse as the only website found last year has suddenly disappeared. So there you have it: the host nation of the OAPI has no online presence.

At the moment, these findings (also see Zimbabwe, host nation for ARIPO ) somehow tarnish the reputation of the two regional IP organisations on the continent. In a digital age, it is fair to conclude that both have a long way to go in order to build the brand image we all wish for?
Can you help the OAPI plan its fiftieth anniversary event? Submit your tender here
For more details on what the OAPI plans to celebrate, see here
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Botswana's new law in force this week

Afro-IP understands that Botswana has now signed into effect the Regulations regarding  that country's new Industrial Property Act 2010.  Publication of these Regulations is expected later this week and they will be in force from this Saturday, 1 September 2012.

The new Regulations are quite wide-ranging and cover many areas of intellectual property. In particular:
* Pre-grant oppositions may now be made in respect of published patent applications;
* Patent Cooperation Treaty (PCT) applications are at last possible (Botswana acceded to the PCT in 2003.
* Utility model applications are now possible.
* Industrial design protection may no longer be obtained for designs that are functional; *
* Collective marks and trade names are now protected, and special recognition is given to the status of well-known trade marks;
* New legal provisions have been introduced with regard to geographical indications, unfair competition, traditional knowledge and handicrafts.
Official fees required for intellectual property registration are being increased by 50% -- presumably because the new law is 50% better than the old, says Afro Leo.

Source: newsletter of NJQ & Associates (Amman, Jordan)
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Wednesday, 22 August 2012


There is also the 'renowned' South Korea for bilateral technical assistance in ICT

Out of the current OECD member countries, this Leo, and perhaps some of our readers, would quite easily name the United States of America and most countries in Europe as major sponsors of technical assistance programmes (bilateral or multilateral) in the African continent. But, this perception is beginning to change. The shift in our global political economy, increase in South-South co-operation and great strides by China, India (also here) and Brazil (also here and here) in the continent have contributed to this awareness. In essence, the competition for hearts and minds in the continent is on.

In the midst of all of these things is South Korea - arguably the world's most advanced in ICT and an 'excellent' example in terms of accessibility of government websites. This nation appears to be playing its part as well in an area where it is renowned. Readers may remember a reference to South Korea in the review of Angola regarding the construction of advanced technology centres (ATC). Although not too late, Afro Leo would like to thank Tim Katlic for drawing his attention to this news report that the construction of the technology data centre (TDC) was jointly funded by the Angolan and South Korean governments to the tune of USD 43.7 million. Readers should also note a contradicting report which puts the TDC project at USD30 million, but it is not certain whether 'ATC' and 'TDC' are ultimately the same. Nevertheless, the point is that we now know of South Korea's involvement in an ICT project in Angola.

Afro Leo is also aware that South Korea has supported or pledged to support ICT initiatives in countries such as South Africa and recently in Rwanda. Let's hope that its ICT assistance to these countries would trickle down to the work of their intellectual property (IP) offices. See A-Z of African official IP websites for Rwanda and Angola.

So, for those countries struggling to maintain or get their IP offices online, we now know which country is at the forefront of ICT and probably, best positioned to assist bilaterally.

South Korea’s collaboration with the African Development Bank, see here 
South Korea to share experience with Africa, see here 
South Korean Don to support Rwanda on ICT see here
2012 Africa-EU Cooperation Forum on ICT in November 2012 see here
NEPAD e-Africa Commission see here and for Infrastructure Consortium for Africa see here
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Monday, 20 August 2012


A review of African official IP websites: no.6 Burundi

BurundiLast year, Afro-IP reported, with optimism, that Burundi's intellectual property office (IP) had a web presence; this is no longer the case as of today. Further in his web space quest, this Leo found nothing on Burundi and IP including the responsible Ministry. So far in our review series, the following countries have faltered or still digitally stagnant: AngolaBeninBotswana and Burkina Faso. Sadly, Burundi has joined the faltering club.

Perhaps, it may well be that it could no longer afford to have its IP office online and/or that it has other pressing matters to contend with. (Certainly, Afro Leo is not remotely convinced with any of these assumptions)

Anyway, this Leo ponders: considering that Burundi's economy is predominately based on agriculture, and knowing how the Ethiopians have used IP, would Burundi benefit from a similar model?

Apparently, China and Burundi are 'true friends' see here
Ethiopia's coffee brand to be promoted in China see here
Burundi's revenue from tea exports rose by 11% see here
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Tuesday, 14 August 2012


Ambush marketing and the Olympics

The Olympics is finally over and sports fans around the world can stop trying to set records for TV watching. But while most people were happy to doze, waiting for the ladies’ beach volleyball or similarly riveting viewing, IP litigators were focussing not on the on-screen sport but on the crowds, watching for the flash of an orange skirt or the glimpse of a Nike swoosh. Sadly, one of the most unsporting of ambush marketing attempts took place out of public view, in the athletes’ Olympic village. The Guardian reports here that an athlete posted a photo of a bucket full of condoms ‘which featured a sign reading "Kangaroos condoms, for the gland downunder", and a picture of a boxing kangaroo’. Unfortunately, the Guardian continues, ‘the London Olympic organisers provided 150,000 free condoms in dispensers for the 10,800 athletes at the Games, supplied by Durex which paid for the supply rights’ and so these additional supplies were not welcome.
As the author of a recent publication on ambush marketing put it, it was fortunate that the London Olympic Games Organising Committee had to deal with the problem, and that it did not happen during the Vancouver Winter Olympics, when the Canadian Organising Committee would have been tasked with the matter.
And the best that South Africa could produce in the ambush marketing stakes was some lollipops and orange miniskirts!
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Monday, 13 August 2012


A review of African official IP websites: no.5 Burkina Faso

Now that the 2012 Olympics is officially over, this little Leo feels that certain African countries may well begin an appraisal of their performance at the games. Outside Africa, Jamaica should have no reason to be downbeat as the brand equity in Usain Bolt continues on an upward trajectory as well as the island’s popularity just in the past two weeks or so. No wonder Jamaica can easily capitalise on this goodwill, like the United Kingdom, to drum up foreign direct investment which would inevitably include tourism.

For the African country in review today, its athletes will be heading home without any medals in their bags and one couldn’t just imagine laying any blame on them if they didn’t have the basic facilities or support to stand a chance. Ask Uganda’s Stephen Kiprotich, the 2012 Olympic marathon champion why he moved to Eldoret, Kenya. The adage, ‘you reap what you sow’ is often true – at least for sportsmen and women.

Let’s now talk intellectual property (IP). When Afro-IP visited Burkina Faso on 18 July 2011, we found a website for its copyright office but none for the IP office. Today, while the copyright office’s website still functions and appears updated (‘good news’! says Afro Leo), there is still, sadly, no website for the IP office.

Considering the above, a parallel - in this little Leo’s view - could be drawn here and the main question is: how can there be any improvement or development in IP administration if the office is starved of necessary support or facilities in present terms? 

Want to know who won what?, see here
Afro-IP probably jinxed the Olympics Africa Village by mentioning it here only for it to abruptly shut three days later see here, here and here
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Thursday, 9 August 2012

Darren Olivier

Thursday bits and bobs

This day is Women's Day in South Africa. It is a day to commemorate the march of women in 1956 to petition against oppressive legislation but is also now much more than that. The entire country takes a break to recognise the achievements of women in society. It also means that you will get an "out of office" from most local IP practitioners, so be prepared.

Over on the Afro-IP Linkedin Group Sunny Lin posted a question on how to start and administrative action in Sudan. It seems that a well known Chinese brand is being counterfeited in that country. This will be of special interest to those who are following the development of Chinese "formal" IP and also evidence of a reversal from China as the stereotypical "copiers" to China as "creators and protectors of IP", and Africa from the "the dumping ground for Chinese counterfeit goods" to counterfeiters themselves. Of course, we have known this for a while.

Turning stateside, WSJ MarketWatch carries a press release from Silicon Valley based Sable Network advertising a unique service which seeks to garner RSA ex-pat skills to mentor and assist entrepreneurs, product innovators and universities with new venture growth, technology transfer and foreign market access. Afro-IP notices that there is much talk about intellectual property in the release but no noticeable expert to provide the skills, so we have written in to see how we can help.

 Stickers for the clever
Afro Leo wonders whether anyone leaving the country to become the pool of talent that Sable Network wishes to use, will require exchange control approval before they can board the plane - after all they have know-how, know-how is IP and IP is capital according to the changes in the excon regs.

Check in Desk: Anything sharp with your luggage?

Passenger: No, just me.

Check in Desk: Over there please, special scales for valuation and then excess intellect payment there. Next.

A US based company called Knowledge Tree hit the venture capital headlines recently by raising $4.75 million in funding for its cloud based document management business. It gets a mention on this blog because of the company's African origin and also because it seems whilst ideas and innovation are in no short supply here, in order to get real lift off businesses may need to move to countries like the US. Comments welcome.

That said, a recent INSEAD Innovation report states that "The dynamics of global innovation are changing as a result of the activities of emerging economies". According to The Global Innovation Index 2012  strong performances in innovation were highlighted by several emerging economies, including Ghana, Kenya, Namibia, Senegal, Swaziland and Zimbabwe. In Africa, Mauritius scores top marks but one questions whether this is simply because of their favourable tax regime for registering/holding IP than strictly as a result of innovation. More info here.

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Monday, 6 August 2012


South Africa: IP is "capital" after all

Back in February 2010 a South African High Court ruled that a trade mark assignment entered into without prior exchange control approval from the South African Treasury did not contravene the South African Exchange Control Regulations. The South African Reserve Bank had previously required treasury approval from any South African entity wishing to transfer intellectual property offshore.Without approval the transfer of rights was null and void.

In Oilwell (Pty) Ltd v Protech International Limited (noted by Afro-IP here) the Supreme Court of Appeal (SCA) confirmed that foreign exchange approval was no longer required for an assignment of trade marks. The court based its decision on an interpretation of the term 'capital' in the Exchange Control Regulations, which provide that any transaction whereby capital is exported from the republic requires exchange control approval. The SCA held that a trade mark does not constitute 'capital' as envisaged in Regulation 10(1)(c) and that, accordingly, foreign exchange approval was not required to transfer trade marks offshore.

In response to this, the exchange control authorities have now amended the regulations specifically to state that 'capital' does include an IP right, whether registered or not, and that “exported from the republic” includes the transfer of an IP right to a person who is not resident in the Republic of South Africa. This means that it is again necessary for exchange control approval to be obtained when any intellectual property is assigned to an offshore entity.

Source: "Exchange Control Regulations amended in response to Oilwell decision" by Megan Reimers (Spoor & Fisher, Pretoria), Trademark Law Review, 30 July 2012
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New Djibouti IP law up-and-running

In February 20090, Darren reported on this weblog that Djibouti had passed a new Intellectual Property Law. Afro Leo now learns that this new IP law finally came into effect on 9 June 2012; he understands that the Patent and Trade Mark Office is now operational and that it is accepting new applications.

Source: NJQ and Associates Newsletter, July 2012

For more about Djibouti, see Kingsley's A to Z feature here.
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A review of African official IP websites: no.4 Botswana

Apart from being the world’s greatest sporting event, the Olympic Games ceremony made this little Leo realise that there are 204 countries -- or 205 including the Independent Olympic Athletes -- present. This was indeed a great opportunity for some countries in Africa to come out of obscurity, thanks to the BBC's informative commentary.

Increasingly, most events are not just confined within enclosed settings: we can now share them, including our experiences, via various social media platforms, or if we are that interested, easily find out about them using search engines such as Google and bing. As information communication technology becomes, arguably, important to socio-economic growth, most things are becoming relevant; country information – particularly those in Africa – are becoming readily accessible; and the success of these countries can also be discussed as a going concern.

Afro-Leo feels that not many of our readers or those interested in African artworks in the UK, are aware that the Ministry of Youth, Sport and Culture (MYSC) and the Botswana Investment and Trade Centre (BITC) do have a stall set up to showcase Botswana's artistic creativity in Kensington Gardens, London, during the Games. According to this report, this Brand Botswana initiative has already attracted a lot of attention and there was an “overwhelming” demand for the works on show. It is also stated that the BITC has brought along brochures and booklets detailing various investment opportunities in Botswana. At the time of writing, the BITC had no website or social media presence.

Last year, Afro-IP also discovered that there was no official website for Botswana's IP office; 12 months later, it is unfortunate that this has not changed. Now you might realise why this little Leo chose to go round the circle to bring that news to you.

See here for Botswana’s Amantie Montsho finishing fourth in the women's 400 meter final at London's Olympic Stadium. 

See here for 'Africa becomes land of opportunity', a piece urging law firms to tap into the continent's growth (the author reminds his readers not to treat Africa as a 'single' country -- well, this little Leo hopes that none of the lawyers reading that thought so in the first place).
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Friday, 3 August 2012


To patent or not to patent: forthcoming seminar

From Isaac Rutenberg, a US-based patent attorney now living in Kenya, comes more news of a fascinating forthcoming event:

To Patent, or Not To Patent: Protecting Computer Software A seminar and training workshop in Kenya
 The Centre for Intellectual Property and Information Technology Law (CIPIT) at Strathmore Law School (in Nairobi, Kenya) is hosting a training seminar on 14-15 August, 2012, to discuss intellectual property, and particularly patents, as applied to computer software. The seminar is co-hosted by iBizAfrica, the business incubator at Strathmore University.
 Participating organizations include the United States Patent and Trademark Office, the World Intellectual Property Institute, Vision 2030, the Kenya Industrial Property Institute (KIPI).
As the Kenyan ICT industry grows, protection of intellectual property (IP) is becoming increasingly important. Protection of IP rights for computer software can be challenging, particularly in the area of patents. An understanding of the applicability, benefits, and drawbacks of patents, copyrights, trademarks, and other forms of IP is critical to the ICT sector.
 Computer software is not specifically excluded from patent protection in Kenya under the Industrial Property Act of 2001, and the Kenyan patent office (KIPI) has several options for dealing with software patent applications. This seminar will provide an opportunity for attendees to learn about the positive and negative aspects of computer software patents, and will provide attendees an opportunity to voice their support or opposition to such patents. Experts from the USPTO, WIPO, academia, and local businesses will be presenting in a roundtable discussion to cover the issues.
 Day two of the seminar will provide practical guidance and will focus on effectively using IP in the ICT sector. The training workshop will explore protection via patents, copyrights, trademarks, trade secrets, and domain names. Other topics will include IP in licensing and fundraising activities.
 Target Audience
This training seminar will benefit anyone with an interest in obtaining IP rights for computer software. Lawyers will benefit by an enhanced ability to advise clients in the ICT sector. Large ICT companies will benefit by having an opportunity to voice their opinions about the treatment of computer software by KIPI. Entrepreneurs and start-up companies will benefit by learning the most appropriate and effective ways to treat IP within the ICT industry.
 The Kenya ICT Board is a major sponsor of the seminar. Sponsors also include Google.
 For more information, see http://www.strathmore.edu/sls/cipit/index.html or send email to cipit@strathmore.edu
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Wednesday, 1 August 2012

Darren Olivier

Face-up via Facebook

It has been reported today that a South African court has followed decisions made in other countries to allow for service of legal notices on social network addresses:

"Legal history was made in the Durban High Court on Tuesday when Judge Esther Steyn agreed to allow service of a notice on a man being sued on his social networking Facebook page. The judge said she would give reasons for her ruling on Friday."

Full story here.
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This blogger was in such a rush to be first off the starting grid that she didn't notice that a large chunk of the BMW judgment is missing from the SAFLII site. Thanks to Wilma Gilson from Spoor and Fisher for telling me.
For those who are interested, paragraphs [37] - [60] have been omitted from both the RTF and the PDF versions of the judgment. These paragraphs continue BMW's arguments on the distinction between functional and aesthetic design, and deal with Grandmark's counterclaim for expungement of the registered designs. In brief, BMW argued that section 14(5) of the Designs Act allows protection to be granted to the 'aesthetic' portions of a design that also incorporates functional features. The court held  that individual vehicle body parts did not have aesthetic characteristics, although the whole vehicle might have an aesthetic value, and that a vehicle part has no independent existence - its only function is to form part of the vehicle.
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