Friday, 27 September 2013

Aurelia J. Schultz

Uganda’s New Industrial Property Act, Almost

P6261613 Having been out hunting for awhile – and let me tell you, it’s not easy for a vegetarian lion; soy okapi is just not readily available everywhere – this Little Leo is catching up on news that she missed and missed sharing with you.

Last month, Uganda’s Parliament passed an updated version of the Industrial Property Bill (2009). [Full text pdf of 2009 version.]  The Bill was originally presented in 2009 but was lost in the shuffle of elections and rotating parliamentarians.  The Bill will become law when (is this an “if”? Afro Leo wonders) the President signs it.

The Industrial Property Bill is important for several reasons.  Uganda currently does not have a law relating to industrial property; this will be the first and should repeal the existing Patent and Design Acts, one of which is left over from colonial days.  ah, 1937, such a good year, or so my grandpa has said.  Henry Zakumumpa does a great job of explaining, in layman’s terms, why this Act is so important for the health of Uganda’s people, here.  Additionally, before being passed by Parliament, the original bill was modified to incorporate future potential TRIPs extensions. 

The full text of the passed Bill is not yet available.  However, there is a Report from the Sectoral Committee on Legal and Parliamentary Affairs, which worked on edits to the Bill.  Based on that, some interesting expected features of the Bill include a provision that allows for the protection of local herbs and medicines despite not protecting pharmaceuticals.  Pharmaceuticals are exempt from protection until at least 2016, but local herbs and medicines can be protected under Traditional Knowledge.  Another is the removal of a provision criminalizing patent infringement.  The full, revised bill will be very interesting to peruse.

Huge hat tip to Primah Kwagala for helping Afro-Leo understand the history of the Bill and it’s path.

Photo: almost-complete building in Entebbe, taken by Afro-Leo

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Chijioke Ifeoma Okorie

Determining the accuracy of Caller Tunes Distribution reports and payments

In Nigeria, telecom operators (e.g. MTN, Glo, Airtel, Etisalat etc) offer various value added services such as ring tones, caller tunes, internet radio etc to their subscribers. To access these services, subscribers are able to download their preferred artiste’s song (as a caller tune) by paying a monthly fee (currently N50).
Caller Ring Back Tones

As copyright in these songs are owned by the respective artistes/recording company, the telecom operators will require authorisation from the copyright owner(s) before they can legally make the songs available for their subscribers’ use.

However, these telecom operators do not deal directly with the copyright owners. Rather, “content distribution companies” approach the copyright owner(s) and obtain license to distribute the relevant song(s) to the telecom operators. Under this arrangement, the telecom operators provide the distribution companies with distribution reports and also share the monthly download fee with them based on the agreed percentage (usually fixed by the telecom operators).

The content distributors then “work” on prepare new distribution reports and send same to the copyright owner along with the owner’s share of the payment received by the distributors (after deducting “advertising” costs, Value Added Tax etc.).

In these circumstances, copyright owners have always asked: How do I ascertain the accuracy of these distribution reports when I am not privy to the report received directly from the telecom operators? How am I sure that the distributor did not receive more than it has declared?

In this Leo’s experience, the Content Distribution Agreements are always the same; the distribution reports never arrive at the stated time; the (royalty) payments are never received at a stated time and when payment is finally made, the amount received after the above-stated deductions, is usually laughable.


In view of the foregoing, this Leo is yet to decipher what advantage the current arrangement serves for the copyright owners. Given the huge number of subscribers using these caller tunes and the number of “content distribution companies” springing up on a daily basis, it is suggested that the time and circumstances are both right for copyright owners to insist on dealing directly with the telecom operators or at least having a tripartite (3-party) arrangement where the copyright owners receive the same report from the telecoms operators as the distributors.
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Caroline Ncube

Evidence based copyright reform needed in South Africa

[Reposted, with some revisions, from info-justice, Link (CC-BY)]  The Law and Economics of Copyright Users Rights conference  which this Leo participated in, probed the value of economic empirical  evidence to copyright reform discussions.   This post gives an account of the use of such evidence in current reform discourse in South Africa.  As Afro-IP readers know, the Department of Trade and Industry (DTI) has taken some initial steps towards a comprehensive IP reform process by  publishing a draft national IP policy, which is currently open for public comment.  The copyright sections of the draft policy do not engage with user rights in a detailed manner. Some mention is made of the need to have meaningful exceptions and limitations (E & L) ( at p16)  and the need to ensure that  these are not abrogated online through the use of technological protection mechanisms protected by anti-circumvention provisions (at p29). Currently the Copyright Act falls far short of reasonable expectations – it does not provide for E & L for the visually-impaired and does not cater adequately for online and distance learning (see the findings of the African Copyright and A2K project). One would therefore expect the draft policy, as the first step towards copyright reform, to raise these issues and to do so in a robust manner informed by empirical and other evidence. Disappointingly, the policy only cites the following two sources at p 29:


  1. Pouris ‘Copyright TRIPS Exceptions in South Africa, Access to Education, Learning Materials’ (2009)
  2. WIPO Studies

The WIPO Studies are not fully cited so it is not possible to follow these up. The report authored by Pouris is not publicly available and I have been unable to locate a copy of it.  It is important to make evidence on which policy recommendations are made publicly available in order to enable those who wish to engage in policy discussions to interrogate the evidence.

In searching for 2009 Pouris report, I came across another report by the same author entitled ‘The Economic Contribution of Copyright-based Industries in South Africa’ (2011) which used WIPO methodology and found that copyright-based industries contributed 4.11% to the South African economy in 2008.  It states the following recommendation in relation to users’ rights reforms at p 53:

‘The South African copyright regime does not include exceptions and limitations for the visually impaired or for the benefit of people with any other disability (e.g. dyslexics) as well as for technological protection measures (such as encryption of the protected material) and electronic rights management information (such as digital identifiers). Furthermore, despite the existence of exceptions for purposes of illustration, for teaching and research, the legal uncertainty surrounding the use of works has led to the conclusion of agreements between the collecting societies and educational establishments to the financial detriment of the latter. As exceptions have the potentials to create value (Gowers Review, 2006)53 we suggest that DTI should review the Copyright Act in order to introduce limitations in accordance with the Berne Convention three steps test (article 9(2)) and with the fair use provision and to clarify clauses as necessary’.

Surprisingly, this report , which was commissioned by the DTI with technical and financial assistance from WIPO, is not referred to in the draft IP Policy. However, as noted by Joost Poort in his presentation, studies on the economic contribution of copyright industries (and their counterpart – studies on the economic contribution of industries that depend on E & L) are not particularly useful as it is difficult to extrapolate policy directions from them. What would be more useful are ex-ante and ex-post evaluations of the experience of countries that have effected policy changes.  According to Poort, such studies could have been carried out in relation to Korea and Israel.

Other relevant research which ought to have been cited is  the chapter on South Africa written by  Natasha Primo and Libby Lloyd  in ‘Media Piracy in Emerging Markets’ (2011) (available here). Beyond this study, and those referred to in the ACA2K book, there does not appear to have been any other demand-side studies on South African copyright.  A study of  entitled ‘The Economics of IP in South Africa‘  was published by WIPO in 2009.  However, this study does not address copyright. It is essential to carry out economic research to provide empirical evidence to inform policy and copyright reform discussions. As stated by the speakers on the ‘copyright flexibilities and social and economic development: current state of knowledge’ panel at the conference, such studies should  be cost- benefit analyses of  flexible copyright in both the short and long term from creator and user perspectives. It will also be very important to bring relevant existing research (mentioned above) to the attention of policy makers in comments submitted to the DTI on the draft IP policy.
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Darren Olivier

How grand is Grandmark? - SCA's spare part decision in RSA – Part 2

This is the second post by guest blogger Jeremy Speres on the Grandmark decision. In this post he considers whether Grandmark is a death knell for aesthetic designs for spare parts and summarises the trade mark aspect of the decision which is important as not all trade mark use is infringing use, it seems.

"This writer would have liked to have seen the court grapple more with the arguments for and against aesthetic design registrations for spare parts, as neatly put by Lodewyk Cilliers here.  The arguments raised by Mr Cilliers are supported by Dr Mikhalien du Bois and Prof. Visser, who go on to raise three other issues arising from the High Court decision in an excellent academic article in the SA Mercantile Law Journal.

 ed - Aesthetic Body Parts
In the High Court, BMW had attempted to argue that their designs were only partly functional and included aesthetic elements that entitled them to registration as aesthetic designs.  The High Court rejected this argument, in part because BMW had not distinguished between the specific functional and aesthetic features of its designs.  One gets the feeling that both courts could not have so easily dismissed BMW’s argument in this regard if BMW had adopted a more specific definitive statement for its designs.  BMW had adopted the so called “omnibus” definitive statement in terms of which the applicant for a design simply lays claim to the shape/configuration/ornamentation/pattern as shown in the representations/drawings accompanying the design application.  That is, no specific features are claimed.  Definitive statements have been likened to claims in a patent specification and are used to determine whether the design meets the novelty, originality and other inherent  requirements, as well as the scope of protection (see Burrells referenced above).  Perhaps a more specific definitive statement, carefully identifying the aesthetic features that are claimed by the applicant, presents a potential way for Original Equipment Manufacturers (OEMs) such as BMW to obtain some limited form of protection in their spare parts designs.  However, even if faced with a more specific definitive statement, it is difficult to see a later court overcoming the SCA’s reasoning that spare parts are intended to serve the sole purpose of replacing the original parts and are therefore wholly functional and unregistrable as aesthetic designs.

On appeal, BMW persisted with its claim of trade mark infringement, although interestingly it only relied upon one of the five registered marks it originally relied upon before the High Court – specifically the BM mark.  The appeal court adopted the same approach it followed in the SWARTLAND decision in determining whether the mark was used “as a trade mark” or “badge of origin”.  That is, the court looked to the context in which the mark was used (on the packaging of Grandmark’s components) in making this assessment, finding that a customer would not view the trade mark in isolation.  The court held that because the articles in question bore numbering and lettering surrounding the BM mark, and one article contained the wording GORDON AUTO BODY PARTS CO.LTD, the trade mark could not be said to be used as a badge of origin, but was instead used to identify the component concerned (and not the source of the component).


Grandmark is already billing their victory as a win for consumers (and their insurance companies) – see here.  BMW has, so far, been quiet – hopefully they aren’t too busy computing price increases necessitated by this judgement!" 
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Wednesday, 25 September 2013

Darren Olivier

How grand is Grandmark? - SCA's spare part decision in RSA

This is the first in a two post commentary by guest blogger Jeremy Speres of Floor Swart on the Supreme Court of Appeal decision in BMW v Grandmark which was delivered last week. This post deals deals with the alleged design infringement by BMW. The second post provides further commentary, addressing whether this decision does actually spell the end of spare part protection under design law in South Africa, as well as dealing with trade mark aspects of the decision.

S14(6)-are those teeth sharp ?
"Two members of the statutory committee appointed to review the predecessor to the current Designs Act once decried the current Act as follows: “the Act is rather like a camel…in the humorous sense of a camel being a horse designed by a committee” (as quoted in Burrells South African Patent and Design Law, citing Prof. Coenraad Visser in turn).

The parties in the long-running BMW v Grandmark dispute are all too familiar with the camel-esque nature of parts of the Designs Act.  Prof. Roshana Kelbrick previously summarised the facts and the findings of the High Court in a sterling piece on this blog here.  After BMW appealed the matter to the Supreme Court of Appeal, it was the turn of the Bloemfontein court to attempt to smooth the camel’s back. 

Alas, for those readers who had hoped for some clarity as to the scope of section 14(6) of the Designs Act, the appeal court expressly declined to consider it (see para 7).  Despite this, the appeal court did however concur with the High Court in a manner that will make it very difficult for spare parts to be protected through the Designs Act in future.  Section 14(6) can be read here.

Prior to the High Court decision, the general thinking was that section 14(6) prevents the protection of spare parts as registered functional designs, but that they could possibly be protected as aesthetic designs (provided the Act’s other requirements are met) as a result of the legislature not expressly including aesthetic designs within the ambit of the section 14(6) exclusion.  However, as Prof. Wim Alberts and Sara-Jane Pluke (the latter successfully represented Grandmark before both courts) have pointed out in an erudite piece in Without Prejudice (September 2012), the High Court effectively adopted an approach that extended the section 14(6) exclusion to aesthetic designs as well.  This was a result of the court’s finding that spare parts are, by their nature, wholly functional (their sole purpose being to replace other parts), and are therefore not registrable as aesthetic designs.  The appeal court concurred (see para 13).

On appeal BMW raised the argument that its spare parts are not wholly functional but incorporate elements that “appeal to and are judged solely by the eye”, entitling them to registration as aesthetic designs.  In this regard, BMW argued that because the designs of its vehicles as wholes qualify for aesthetic design protection, it follows that their constituent components must too.  The court dealt with this swiftly, stating that the component designs must be judged on their individual qualities, independently of the vehicle as a whole.  They are not selected because they appeal to the eye, but solely for the function they perform – to restore the vehicle to its original form (see paras 12 – 13).

Cheetah beater
To counter such reasoning, BMW submitted that an owner of one of its vehicles may conceivably choose to replace an original component with a component of a different design in order to modify the appearance of the vehicle, indicating that components do in fact have aesthetic qualities.   The appeal court however reversed that submission and found that it had to consider BMW’s components as covered by their registered designs and not the modified components of others instead.  In the words of the court, “Perhaps there are eccentric motorists to whom it might appeal to fit a BMW fender, for example, to a vehicle of a different kind – though it is difficult to imagine one – but the designs are not to be judged by their appeal to eccentricity.”  It is at this point in the judgement that one gets the distinct impression that we won’t be seeing Nugent JA (who wrote the unanimous judgement) driving around with a giant tail wing anytime soon…


Accordingly, the appeal court agreed with the High Court and held that BMW’s aesthetic designs were purely functional and fell to be revoked."
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Tuesday, 24 September 2013

Isaac

Diary of a Patent Lawyer in Kenya: A Curious Response

This Nairobi-based Leo is turning to blogging as a necessary distraction from the tragedy unfolding in Nairobi, but his prayers are with those affected.

Recently this Leo participated in helping a 14-year old Kenyan (“our inventor”) attempt to secure IP rights after he had designed a system useful in rearing domestic livestock as well as in wildlife conservation. At our inventor’s request, and with the guidance of a local wildlife conservation group, we prepared and filed a Utility Model Certificate application. So far, the filing has been the beginning of a very curious experience.
Pondering a curious response to innovation
(Curiosity, Patricia Pushaw)

Around the same time that we filed the application, it became clear that many other people had been installing very similar systems. In fact, at least one organization seems to have been installing quite a number of similar systems. It should be noted that aspects of our inventor’s system had been widely published (with much fanfare) prior to our filing, so it is very possible that such similar systems were in fact copies, inspired by the prior publication.

When our inventor and the supporting wildlife conservation group approached those making similar installations, the response ranged from dismissive to downright hostile. People angrily replied in two ways: “how can you patent something that will significantly help wildlife conservation?” and/or “this invention cannot be patented because it’s been known for years.” Both responses are irritating, albeit for different reasons.

Claiming that something shouldn’t be patented because it has virtuous applications is not new but it’s also not fair. Kenyan patent law doesn’t exclude humanitarian (animalitarian?) inventions, so why should we deny such reward to the intellectual efforts of our inventor? In any case, animal conservation has become quite the industry, particularly amongst NGOs and eco-friendly tourist services, so why not encourage innovation just as it’s encouraged in other industries?

The second response, that the invention cannot be patented because it was known previously, is irritating for its arrogance. It brings out the school-yard immaturity in me, instilling a burning desire to retort “Oh, yeah? Says who?!” Seriously, though, any patent lawyer (including this one) would have done a prior art search and would have known what sort of prior art devices were in existence as s/he wrote the application. Armed with the search results, it is the lawyer’s job to draft an application that will not be anticipated by the art. Of course there is never a guarantee that an application will become a patent, but a well-drafted application can often overcome even the most damning (i.e., closely related) art.


Unfortunately such objections have significantly discouraged our inventor, although perhaps the experience is merely a good introduction for a teenager to the cutthroat world of adulthood. How will this all turn out?  It may take years to know, considering that the Kenyan patent office will take at least 18 months to issue any Utility Model Certificate. When/if a Certificate is issued, then it is up to our inventor to decide how/whether he wants to enforce. In any case, this Leo only hopes that the experience will not discourage our inventor from spending his long future ahead inventing and creating.
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Friday, 20 September 2013

Caroline Ncube

IP policies in Africa - no 4 Botswana

This week the African IP policy series visits Botswana. Botswana  recently updated its patent law through the Industrial Property Act, 2010 and its regulations which came into force in September 2012 (see IP Watch commentary on the Act here). This Act introduced pre-grant opposition of patents, a measure that  has been suggested in South Africa's draft IP policy. Botswana does not yet have an IP policy but has a Competition policy (2005) and a Research, Science, Technology and Innovation (RSTI) policy (2011) which both address IP.


Botswana's national Competition Policy, 2005, exempts IP from its ambit in the following terms:
"The Policy recognises the important role intellectual property (patents, trade marks and copyrights) plays in Botswana's human and economic development endeavours -and the need to protect and safeguard the interests of intellectual property rights-holders [and presumably to balance these rights with those of other stakeholders, in the public interest, says this Leo]. Therefore, as a way of protecting intellectual property rights from infringement and in order to promote the development of creations and· innovations, intellectual property rights will be excluded and exempted from the ambit of this policy."

The RSTI policy states the following in relation to IP:
"Policy Commitments:
5.9.1 Since wealth creation and economic development hinge on Intellectual Property (IP) and
 knowledge [yes they do, but only if properly calibrated to ensure suitability for a
 particular jurisdiction],Government will continue to enforce compliance to the Botswana 
Intellectual Property Law to foster creativity and innovation [a word of warning: an over emphasis 
on the enforcement of inappropriately crafted laws can be counterproductive]. The law provides
 for protection of inventors and innovators against infringement of their Intellectual Property Rights (IPR)
 during commercialization and trade by according them exclusive rights for their inventions, innovations
 and creations during the term of protection, enabling them to realize economic rewards from their efforts.
 Intellectual Property Rights of interest to this policy include patents, utility models, and industrial designs
as they protect scientific and technological innovations and their economic impact.
5.9.2 Strategies for stimulating and enabling accelerated protection of scientific and technological
 creativity and innovation including appropriate support for technical assistance in processing of
 intellectual property protection will be developed. Research institutions are expected to develop
 institutional IP policies that are aligned to the national IP legislation and policy [but there is no
 IP policy yet] to encourage creativity and innovation.
5.9.3 Initiatives will be developed to capacitate intellectual property right holders to maximise 
their benefits in order to stimulate national creativity, innovation and information exchange between
 inventors and innovators. Intellectual property professional and funding bodies will be expected to 
support Small and Medium Enterprises in acquiring patents and other intellectual property rights
[hopefully, only where this is appropriate]. A culture of protecting innovations and inventions
 will be inculcated at an early stage by introducing intellectual property education and enhancing 
creative field curricula such as design, science and engineering.The IP education will raise 
awareness of and create interest to pursue intellectual property studies such as “Patent Law and
 Support” at postgraduate level. Botswana has an Intellectual Property Law that was revised in 2009,
but an IP policy to guide the management and exploitation of IP still needs to be developed.
5.9.4 Government commits to ensure that all legislation and policies that are important for stimulating
R&D are complementary and in harmony across sectors and aligned to Botswana’s multilateral
agreements."

There are no indications of when an IP policy will be developed and published but judging by the flurry of activity in the last  few in relation to the revision of the patent laws and the RSTI policy, an IP policy may be imminent. 
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Darren Olivier

UNISA Roundtable on GIs - Monday - Hurry

Afro-IP has just heard that there are a few seats left to participate in a UNISA hosted roundtable on GIs on Monday.

Prepare your thoughts for Heritage Day on Tuesday by spending the morning dedicated to the potential of South Africa's heritage. Speak with authority over the braai on Braai Day about your Karoo Lamb, Biltong and Rooibos infused beer. Hurry though, seats are limited. RSVP: hurtee1@unisa.ac.za

Perspectives on Geographical Indications: Protection, Trade, and Potential

The Centre for Business Law and the Special Interest Research Group on Intellectual Property Law of the University of South Africa invite you to this roundtable on geographical indications. The roundtable will be opened by Ambassador Roeland van de Geer, ambassador of the European Union to South Africa. Participants from government, academia, and industry include Francis Fay (European Commission), Mustaqeem de Gama (Department of Trade and Industry), Paul Michau (Camdeboo), Soekie Snyman (Rooibos Council), and Professors Esmé du Plessis (Adams & Adams) and Coenraad Visser (Unisa).

To ensure efficient participation, the number of participants is limited.

Date: 23 September 2013
Time: 08:15 to 14:00
Venue: Innovation Hub, Pretoria


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Darren Olivier

South Africa's Draft IP Policy - Harms' notes

Yesterday Afro Leo was pleased to receive former Supreme Court of Appeal Judge Harms' 19 page commentary on the draft IP policy lodged recently at the Department of Trade and Industry (see other policy notes published on Afro-IP here and here).

As one might expect it is an enlightening read. Harms' imagination leaves little to the imagination:

Candy/Fairy Floss or Cotton Candy
"... one cannot escape the conclusion that as policy it promises candy-floss: it is very sweet but it becomes sticky if you touch it and it disintegrates on eating, leaving no aftertaste."

It makes for good bedtime reading but it is not a bedtime story. Some of the problems are dire. Citing the disparity in the relative rates of growth of patent applications and per capita income across several developing countries (including China, Korea, Australia, Ghana, RSA and Kenya) he notes that:

"... a fair conclusion to be drawn from these figures is that there has been no growth in innovation in the RSA or, for that matter, in Africa [over several decades]."

That said, he is not critical for the sake of it:

"To prevent any misunderstanding about my approach to IPL I wish to state at the outset that I have always maintained that IPL tends to be greedy and that some aspects or manifestations do not necessarily serve the interests of a developing country. There is not a single model that fits all."

Sections A, B, C and D of the commentary all help to provide further context and perspective.

But he is critical.

"In short, the policy document fails in the same respect about which it complains. It did not co-ordinate with other departments or with the DTI or the Commission."

"While on the topic of neglected subjects there is the issue concerning the visually impaired and other people with disabilities....Government has often been approached to do something by creating a fair use exception for them. In spite of government’s general concern for the wellbeing of the disabled this request has not been processed."  (Andrew Rens makes a similar comment. See also Afro-IP background here.)

"Embarrassingly, the policy document shows some lack of appreciation of South African IP law."

"What can one say: an official document on IP that does not recognise the difference between the Berne and Paris Conventions?"

"Neither “health” nor the police have anything to do with patent enforcement."

"The document suggests the RSA does not have the capacity to manufacture drugs (p 23)."

"It would also have been useful to have statistics about applications under sec 56 of the Patents Act for compulsory licences for drugs and, if there are not any, an attempt to find a reason should have been made."

"The problem, which is universal and not appreciated in the document, is that generics are sometimes sold under counterfeit trade marks."

"The information is out-of-date."

Hi criticism is not beyond reproach - some would say, for example, that copyright does foster innovation (see his comments to the contrary in para 78).

Louis Harms currently sits as the Professor: Adams & Adams Chair of Intellectual Property, University of Pretoria. However, this commentary is in his personal capacity and his stated interest is purely academic. It would be a shame if it is not taken seriously by the DTI. As Appeal Court Judge Nugent (who penned the landmark BMW v Grandmark IP judgment earlier this week) expressed:

"Louis is internationally renowned in his field.....Lamentable is the conspicuous absence of his own country from that list [of international bodies that have sought his expertise to help formulate policy].

Let's hope his notes foster further constructive debate in RSA.

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Thursday, 19 September 2013

Aurelia J. Schultz

Attention all Nigerian Copyright Stakeholders

logoVia the Nigerian Copyright Commission (NCC) website, Afro Leo learns of an important meeting to occur in Lagos on 9th October.  That’s in just a few weeks!  The meeting is to discuss the new Levy on goods that can be used for infringing copyright. Full details on the meeting are below.

The Nigerian Copyright Act authorizes the Minister of Justice to implement a levy on material capable of being used to infringe copyright.  (Section 40.)  Levy amounts are to be published in the official government Gazette.  The current Minister of Justice, Mohammed Bello Adoke, has published new Levy information [pdf] that explains who pays the levy, when the levy must be paid, how levy funds are distributed and what materials or organizations are exempt from the levy.  Afro Leo notes that the Levy is dated 2012 so either this Little Leo or the NCC is a bit behind, perhaps both.

There is also a schedule outlining levy amounts.  Generally, digital storage media is 3%, paper is 2%.  Digital-duplicating devices are 2% and paper-duplicating devices are 1%.  Collected funds are distributed 40% to programs within the NCC and 60% to approved collecting societies.  Considering the history of conflict in Nigeria over approvals for collecting societies, Afro Leo wonders if the Levy will spawn more clashes.

When: Wed. 9th October 2013 at 10am
Where: Manufacturers Association of Nigeria House, No. 77 Obafemi Awolowo Way, Ikeja, Lagos, Nigeria
More info: http://copyright.gov.ng/index.php/public-notice

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Wednesday, 18 September 2013

Aurelia J. Schultz

New Domain Open for Business (and TM owner headaches)

africa siloutte Related to yesterday’s post on Tunisia domain names, the website TechBaron has report that the domain .africa.com is now available.  Many global company trademarks have already been acquired with the .africa.com domain.  For example the article lists starbucks.africa.com and twitter.africa.com.  It is not clear whether these domains were purchased by the respective companies or by domain squatters.  starbucks.africa.com resulted in nothing but a blank page and twitter.africa.com brought up a page of search results that included the twitter handle for africa.com.  miele.africa.com does appear to lead to an actual, official webpage, redirecting to the appliance maker’s international website.

Being a general rather than country domain, access to africa.com is rather easy and the costs are said to be lower than many country domains.  The article highlights another benefit, “owners of .africa.com domains purchase a domain that associates them with all 54 countries on the African continent.”  Is africa.com filling a need or simply giving global trademark owners another headache?  This Little Leo suspects that africa.com may be useful to international companies who limit their business to Africa but not much beyond that.

What do others think?  Will global trademark owners find themselves purchasing yet another domain to redirect to their main site?  Will they ignore this domain?  How tempting is africa.com as a domain for squatters?

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Tuesday, 17 September 2013

Jeremy

Tunisia domain name update

From the Abu-Ghazaleh Intellectual Property Group's latest newsletter comes some news from Tunisia, a country that doesn't feature often enough on this weblog, given its strategic and political importance within North Africa.
TUNIS - The Tunisian Agency for Internet (ATI) announced that it approved the registration of domain names with two characters and Internationalized Domain Names (IDN) letters (á, â, ã, ä, å, æ, ç, è, é, ê, ë, ì, í, î ï, ñ, ò, ó, ô, õ, ö œ, ù, ú, û, ü, ý, ÿ, ß). 

The registration of domain names under ". Tn" and "تونس." will be planned according to a schedule including three periods as follows: 

1- From August 1, 2013 until January 31, 2014: The registration of domain names with two characters and IDN letters is restricted during this phase to local governmental organizations.  
2- From October 1, 2013, until January 31, 2014: During this phase, the registration of domain names with two characters and IDN letters is allowed to holders of registered or filed trademarks in Tunisia.  
3- From December 2, 2013 until January 31, 2014: During this phase, the registration of such domain names is open to any person or entity in accordance with the terms of the naming charter of the national domain ". Tn" and "تونس.". 
This juncture is as good as any for reminding trade mark owners and their representatives that Tunisia has two scripts (Latin and Arabic) and three languages -- Tunisian Arabic, French and Berber -- all of which has repercussions for the scope of protection that a trade mark will enjoy.
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Friday, 13 September 2013

Caroline Ncube

South Africa's Draft IP policy - patent notes

A number of commentaries have been published on the Draft IP Policy's suggested patent reforms (see below for links to some of these). In general, the draft policy has been lauded as a welcome step for South Africa. For example, the TAC and MSF have welcomed the policy as they are of the view that, if implemented, these reforms will curb harmful practices such as the evergreening of pharmaceutical patents. However, there seems to be general consensus that the wording of the policy could be improved in future iterations so as to achieve coherence, clarity and certainty.

The draft IP Policy makes the following recommendations in relation to institutional reform:

  • use a combination of the depository and substantive examination systems
  • introduce pre-grant and post-grant opposition procedures
  • introduce utility or second tier patents


The idea is to retain the depository system for some fields of technology and to introduce substantive examination for others. The question is; how this distinction will be made? The introduction of substantive examination of patents will pose capacity and resource problems but these can be overcome by careful planning and some imaginative thinking. For example, in the short to medium-term, South Africa may consider collaboration with a similarly placed country for the training of patent examiners, and perhaps to outsource examination. It would also be prudent to use a peer or expert review system that allows suitable persons outside the patent office to assist with the examination of patents (see details of the Peer to Patent Project in the US, UK and Australia).

The re-introduction of a pre-grant opposition procedure (which existed under the 1916 and 1952 Patent Acts) would also provide a valuable opportunity for interested persons to challenge patents before they are granted. As noted in another post, Botswana recently introduced opposition proceedings. A post-grant opposition procedure will also enable the review of existing patents in a manner that is easier, and hopefully cheaper, that an application to revoke a patent.

After proposing the introduction of a second-tier patent system, the draft IP policy notes that such a system is already in place in Kenya  (see Kenya's examination guidelines). In deciding whether this is an appropriate route for South Africa to follow, it is necessary to ask if the system has proven successful in other jurisdictions and to then consider South Africa's unique circumstances that may affect the implementation and success of the system.

An opportunity to contribute to comments on the draft policy
The IP Unit at the University of Cape Town, to which this Leo is affiliated to, has created a google document here which is editable by anyone who wishes to contribute to comments being prepared by the unit for submission to the DTI. Afro-IP readers are encouraged to add any comments to this document.

Some commentaries
Battle on the horizon over IP policy draft, Mail & Guardian, 11 Sept
New policy gives generic medicines the upper hand, Mail & Guardian, 10 Sept
DTI's draft IP policy lays foundation to prevent abusive patenting, Fix the patent laws (TAC), 10 Sept
New Draft South African IP Policy Receives Initial Positive Reactions, IP Watch, 9 Sept
South African Draft Intellectual Property Policy: Initial Reactions, Andrew Rens, 9 Sept
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Aurelia J. Schultz

Opportunity for African Law Students

daddy bunny signing the guest book (1) cropped The Young African Research Arena (YARA) has announced the start of a new project called The Repository.  The Repository is designed to be an open access home for research papers written by African students.   YARA is asking for submissions of papers and running a contest for students who submit between now and December.  The prize, a Samsung Galaxy tablet.

Submission requirements:

  • between 2000 (minimum) and 4000 (maximum) words
  • contain footnotes with full references 

Judging criteria:

  • Originality
  • Grammar and Structure
  • Communication of a Coherent Idea

Students who are interested in submitting a paper can find more information at http://yararena.org/submissions.php

Submissions can be related to the student’s course-work or on a topic about which the student is just curious.  Even those who aren’t in an Intellectual Property course can write on the exciting IP happenings across Africa!  Since the repository is to be open access and everything YARA does is licensed under a Creative Commons Attribution-ShareAlike license, this Little Leo (pardon her American spellings) guesses authors will need to license their submissions to the repository accordingly.

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Monday, 9 September 2013

Darren Olivier

South Africa's Draft National IP policy - copyright notes

South Africa's draft IP Policy was published last week for comment within 30 days

What is the IP Policy?

It seeks to provide a national approach to all issues around intellectual property. In other words it would be the policy that guides future changes to, for example, legislation. It is important because it records the relative priorities of the country with respect to IP matters, and makes recommendations. 

Copyright and Software

Today, this Afro Leo considers the draft policy as it affects copyright and, in particular, the software industry. This is useful against the other big news last week - Microsoft's (MS) purchase of Nokia - a deal which is all about the perceived benefits of a jointly controlled IP portfolio (see IP Finance synopsis here). Put differently, the deal is an example of IP at work in the developed world by developed companies that create jobs, educate, innovate and whose technologies provide solutions. 

In a RSA context, solutions created by the software and device industry include facilitating access to information eg online University courses as well as services that assist in providing access and education around genuine life saving drugs eg mapping technology. These “access” examples are stated problem areas for RSA (ie restricted access to information and drugs, often blamed on IP).

In addition, both companies (Nokia and MS) have offices in RSA too - see here and here). In other words, if Nokia and MS are examples of what IP can do, then embracing an IP policy that facilitates their investment in a country like RSA or creating an environment for a similar home grown company, is not a bad aspirational benchmark for an IP policy, one would think. If so, how does the draft policy document fare?

The following sections are particularly relevant:

·         Objectives (page 4)
·         Types of IP (Copyright, US Digital Millenium Copyright Act and Fair Dealing/Fair  Use) (pages 14, 16)
·         Chapter 6: Copyright, Software and Internet (page 29)
·         Chapter 15: Enforcement of IP (page 42)

Notes

·         The objectives do not appear to be controversial. It seeks to bring RSA in line with the rest of the world but emphasises that we need to be aware of RSA’s own developing needs which include “access to knowledge” and “local empowerment, especially black empowerment”. The very fact that RSA is considering a co-ordinated IP Policy is, of course, very positive.

·         In general the document appears to promote "development", sometimes at the expense of "enforcement"; the relationship between strong enforcement as an innovation and investment incentive does not seem to be fully recognised (albeit that there is a stated intention to “foster the enforcement of IP” – page 42). How does a country attract investment from the likes of Microsoft, Nokia and others, if there are not laws that protect them? The policy is not altogether clear on how it will achieve this balance.

·         There is no specific mention of innovation, job or wealth creation through the software industry. This does not mean, of course, that it is not recognised. However, there appears to be view that enforcement and stronger protection for copyright would, inherently, be damaging because it reduces access to knowledge.

·         There is a recognition that, digitally, South Africa's Copyright Act is outdated and that there is no inspectorate to deal with “cyber counterfeiters” and so, there should be ratification of “digital treaties”. It is not entirely clear what this means but the sentiment seems correct.

·         There is a view that fair use/fair dealing exceptions do not cover RSA needs. These are likely then to expand, possibly to the detriment of copyright holders. For specific cases this might be required but it is difficult to tell what those will be from the draft.

·         There is a strong emphasis by the government, on using open source software (as opposed to proprietary software) for projects. It is recommended that “copyright legislation be amended in relation to the procurement of computer programs, with a view to ensuring that options for using low-cost and or open source software products are considered...”. This seems rather simplistic - if it is a case that software owners are charging too much then it can be addressed in other ways - see here, for example.

·         There is the possibility of a legislative change to allow “reverse engineering of computer software programs” consistent with its international treaty obligations. The meaning of this is unclear and ought to be considered carefully, especially if the policy appears to seek to exclude protection for software per se (see page 30) which would likely be a disincentive to the software creators. 

·         There is a recommendation to extend the fair use provisions to include “making and distributing copies from electronic sources (which presumably could include source code)” for education and research, commentary and review. Afro Leo notes that this is already an exception in the Act (see Section 19(b)).

·         There is a hesitancy to accede to the WIPO Copyright Treaty, DMCA and EU Database Directive. “The DCMA and EU Directive restrict the number of [free] downloads, whether for commercial or personal/research use.” Again, the Policy is not clear but will no doubt create concern from proponents of strong IP policies.

·         Common strategies are suggested at regional level (SADC and AU) for enforcement. This hints toward a regional customs authority which seems positive.

Conclusion

      In general, the draft IP Policy is noble in its objectives and its form, but contains some vague and worrying statements and recommendations for the software industry.  
      
      Readers (even co-bloggers) may well have strong divergent views and are encouraged to express them. 

      *Many thanks to Marius Haman for alerting this Afro Leo to the deal with Nokia and providing published deal information, and to Susan Olivier (Adams & Adams) for providing Afro Leo with the draft Policy.
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