Wednesday, 7 August 2013

No IP in ideas: Makate v Vodacom

Over the last two days there have been media reports  (here,  here and here) about a matter between a former Vodacom employee, Nkosana Makate, and Vodacom in which Makate is claiming compensation for having  created the popular 'please call me' service concept (see here for a description of this service). According to these reports, Makate claims that he came up with this idea in 2000 and that Vodacom acknowledged his creation of the idea (via email sent to all staff in March 2001) and promised to pay him for it. He was not paid and first sent letters of demand to Vodacom in 2007 and instituted litigation in 2008 (It is thus possible that Makate's claim has prescribed). From an IP  perspective, this case is interesting because the please call me service concept could have been protected by IP and doing so would have strengthened Makate's position.

If Makate did not record his idea in some fixed or material form he will not have copyright in it as copyright only protects the expression of ideas ( for other eligibility requirements, see the South African Institute of Intellectual Property Law's primer on copyright here). Even if he did express his idea in some material form and thus has copyright in it, he would have to prove that Vodacom copied a substantial portion of  that expression to succeed in a claim of copyright infringement. It does not appear that he is making any such claim. 

Makate did not obtain a patent for his invention. It is likely that at the time it was conceptualised, this service met the patentability criteria of novelty, inventive step and industrial application. Indeed, competing cell-phone company MTN seems to have filed for a patent over the concept in 2001 (see report here). MTN also offers a similar service known as MTN callback (described here). 
Makate did not maintain his concept as a trade secret. If he had entered into a written agreement for payment in return for the disclosure his idea and secured this disclosure to Vodacom with a non-disclosure agreement, Makate would be in a better place. As it is, he has no option but to found his case on an oral contractual undertaking by Vodacom to pay him for his idea, which Vodacom is strenuously denying. 

It will be interesting to see how this matter unfolds. In the interim if any Afro-IP readers have any thoughts on the IP protection of cell-phone service offerings like 'please call me' or any further information on this matter please share these. 


Anonymous said...

"MTN seems to have filed for a patent"

MTN did file for and was awarded a patent that claims the concept in all its flavors.

Chebet said...

Although I do not know the IP laws in South Africa, i believe that nowhere in the world are ideas patent protected. But from my knowledge of Kenyan IP laws, the starting point is the basic idea-expression dichotomy. An idea is not protected or worthy of protection until it is expressed in writing. In Kenya, even after the idea is expressed in writing, if the originator of the idea is an employee, the starting point is that unless there is an agreement to the contrary, any IP attaching to this expressed idea belongs to the employer provided it was so 'expressed' in the course of employment. Therefore, I would think Mr Makete has, strictly, no right to compensation over and above his ordinary remuneration unless there is an agreement to the contrary (such as the one he alludes to by saying he had been promised some compensation/remuneration on account of the call-back idea). If on the other hand a patent protectible/protected thing results from this, Kenya's patent legislation provides that such an employee would be entitled to fair remuneration if the invention is of some "exceptional importance". There is no guidance as yet (in parliamentary law or judicial decisions) on what 'exceptional importance' is that would warrant payment of the fair remuneration by the employer.