South Africa: PSL v Gidani - copyright in fixture lists

Another valuable contribution from Jeremy Speres (Floor Swart) on Friday's decision in a case involving South Africa's Premier Soccer League and national lottery operator, Gidani over copyright in fixture lists:

"This weekend turned into a rather pleasing footballing affair for this writer, being a football supporter and IP lawyer.  A combination of Liverpool FC ending the weekend just four points off the top (peering way, way down at their poor Mancunian rivals) and the delivery of an absorbing copyright judgement by the High Court in Johannesburg on Friday involving football fixtures provided much merriment. 

The plaintiff, the Premier Soccer League, administers SA’s apex football division and produces annual and weekly fixture lists.  The production of these lists involves broad consultation and application of judgement (interestingly, reference is made to the need to avoid Pirates and Chiefs playing each other midweek at night for safety and security reasons!)

The defendant, Gidani, is the national lottery operator and has been reproducing the PSL’s fixtures by operating a football based lottery game.  After the usual nasty letters, the PSL resorted to copyright infringement proceedings.

Gidani appeared to dispute that the fixture lists had sufficient substance to qualify as “works” attracting copyright, arguing that they are “common place, trite, trivial”.  The court however decided not to address this aspect but addressed the originality requirement in detail.  The court adopted the traditional “sweat of the brow” approach - the exercise of skill, judgement or labour is all that’s required (subjective elements) but not creativity or novelty (objective elements) - and found that the fixtures were original.

The court waded into the debate about whether objective factors should be considered in the originality assessment.  At para 68, the court approved of the obiter statement made in the seminal Waylite Diaries case that objective factors are relevant, despite this statement being rejected outright by none other than Prof. Owen Dean.

The court was not swayed by recent decisions of European courts, most notably that of the ECJ in the Football Dataco matter, where copyright in football fixtures has been rejected.  Rightly so, the court noted that such decisions were taken after the implementation of the Database Directive which introduced an objective element of creativity to originality.

Most beguiling from an SA IP law perspective, the defendant invoked a judgement that tends to strike fear in the hearts of many local practitioners – Laugh it Off v SAB.  Essentially, the defendant argued that its right to freedom of expression, including the freedom to receive or impart information or ideas, should temper the monopoly afforded to the plaintiff.

The court agreed that the reasoning in Laugh it Off applied equally in copyright matters in that the interests of a copyright owner should be balanced against the defendant’s right to freedom of expression in determining the scope of the monopoly.  Most interestingly, the court implied, at para 106, that the requirement of “substantial economic detriment” introduced in Laugh it Off may be applicable to copyright.  I can already hear the groans!

The court however distinguished this case from Laugh it Off by focusing on the fact that the defendant was engaged in a purely commercial enterprise generating many millions of rands without an element of parody.  The court seemed to find that an infringement with no purpose other than to generate commercial gain cannot be shielded by the right to freedom of expression.  Perhaps then, in cases involving pure commercial gain with no element of parody or public interest, this presents a potential escape from the clutches of Laugh it Off, not only in copyright matters but trade mark dilution matters too?

Ed - this is indeed welcome news for copyright in RSA and especially given the recent rumblings of action groups over copyright in the draft IP Policy that it inhibits access to knowledge/education (another potential human rights balancing act). This writer has always wondered whether the Laugh it Off case was influenced by the political nature of the subject matter and the timing of the judgement being so close to end of apartheid. In that case the T shirt manufacturer was also making money (he was not a political activist). In a more recent example RSA felt quite comfortable using far reaching anti-ambush marketing legislation for the the World Cup (football) that also potentially eroded freedom of expression. IP is indeed alive and well, at least for the time being.