Monday, 3 March 2014

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.   


Anonymous said...

Where will the line be drawn, with reference to paragraph 41.9"the fixure lists are usually out there...advertised on billboarded in taverns": Taverns may "systematically" advertise on a weekly basis parts of the PSL's fixure list on their billboards or maybe in their local newspapers or handouts in order to get patrons through their doors. The taverns' aforesaid reproductions are for commercial purposes (maybe even combining such reproductions with a drink or meal special). What defence would the taverns be able to use - maybe that their "substantial" reproductions are "de minimus" (a bit of a contradiction)or would the taverns' reproductions constitute the mere imparting of information as contemplated in s16(1)(b) of the Constitution - even though it is for commercial purposes?

The question is probably just of academic interest, as it is doubtful the PSL would attempt to prevent or charge taverns license fees to reproduce parts of its fixture lists.

Jeremy Speres said...

Thanks for the interesting question Anonymous. Based on the logic employed by the court, it seems that a tavern would be in the same position as Gidani in so far as the essentials of a copyright infringement claim are concerned. Regarding section 16(1)(b), the court seemed to hold that an operation for commercial gain cannot be considered the “receipt or imparting of information or ideas” – see para 104. That would seem to put paid to a reliance on section 16(1)(b) by the tavern. I'm not entirely convinced however that the court was right on that point– see Judge Sachs separate judgement in Laugh it Off at para 85 where he states “some degree of commerce should not in itself exclude the activity from free speech protection.”

One disappointing aspect of the judgement is that the defendant did not pursue the implied licence argument, which would have made for an interesting discussion. This could be one potential defence for a tavern. Perhaps more appropriately, the defence of acquiescence or estoppel could be raised. In Gidani’s case, its predecessor had a licensing arrangement with the PSL and Gidani itself had been operating against the demands of the PSL for some time, so it could not viably have relied on acquiescence/estoppel. However, in the case of taverns, surely the PSL has known for some time that they are using the fixture lists. The interesting question then would be, does the defence of acquiescence or estoppel require the plaintiff to have been aware of a specific defendant’s conduct (i.e. a specific tavern) without taking any steps, or will it suffice for the plaintiff to have been aware of the conduct of a class of persons without taking any steps against any member of that class (i.e. the taverns)?

Darren said...

Jeremy, you raise an interesting point. I sat listening to Adv Bester trying to persuade a full bench in the SCA that acquiescence was part of law in a trade mark dispute (KG matter). It seemed clear to me that the burden is very high - it needs a positive act that is unequivocal that there is some form of consent and that delay tends to affect the remedy (eg no damages), not the lawfulness (or not) of the act concerned. I cannot see why it would be different in a copyright dispute. Acquiescence is in the UK statute for trade marks but has a different meaning to its common law version and equally unclear.

Jeremy Speres said...

Thanks Darren. What's also interesting is that you have the ability to think about tricky concepts such as acquiescence at ten to six in the morning! Yes, the burden seems to be quite high, but that's presuming the relevant forum accepts that the doctrine is part of our law in the first place. The then CPD in the New Media case seemed to accept Adv Sholto-Douglas' argument, which it described as "strong", that the doctrine was never carried over into Roman Dutch and, in turn, our law, but nevertheless found it unnecessary to decide the point.

Darren said...

Indeed Jeremy, Burt was quoting Grotius without much luck. Much like asking WG Grace if he could bat for SA today in Cape Town! And yes, while you guys in CPT are surfing at 10 to 6 in the morning ... us lot in JHB, blog.

Anonymous said...

Thanks Jeremy and Darren for your insightful thoughts. I guess we will then have to watch this space for some clarity...but I fear we will probably have to wait quite a long time should Gidani decides not to appeal the decision (albeit Gidani will have a tougher time to convince a court than a humble pub owner).