Tuesday 27 November 2012

Darren Olivier

South African Bill seeks to impose jail sentence on gTLD offenders

You could spend two years in a South African jail or be fined R2million (+-$250000) if you apply to register, use or licence .CapeTown, .Zulu or even .FafDuPlessis as a gTLD (general top level domain) anywhere in the world, without the permission of the South African government.

This will come to pass if the proposed amendments to the Electronic Communications and Transactions Amendment (ECT) Bill, 2012 published recently, become law.

The Bill seeks to amend the ECT Act 2002 to bring it into line with the international community as far as communication is concerned and, for the most part, it seems a very good piece of proposed legislation. It deals with efforts to facilitate electronic trade, build confidence in electronic communications and improve security.

From an IP perspective, there are a number of amendments that affect how RSA's domain names are managed and governed. For example they have sought to remove confusion regarding  the different "authorities" in the Act by simplifying the Domain Name Authority as ".zadna" and provided it with clearer governance principles and responsibilities. This also sounds positive.


The Bill touches on the liability of Internet Service Providers by extending the remit of the Act to include wireless application service providers (WASPS) and bringing in some much needed balance to the take-down provisions. The current legislation provides powerful tools for take-down of website pages that infringe both copyrights and trade mark rights (something the rights owners in the US have been trying to introduce with difficulty), in particular, through a simple complaint process.

The Bill introduces a right of reply before a service provider is effectively obliged to take the page down. This means that the service provider has 10 business days to reply to a take down and if the complaint is then not resolved then a further 10 days to effect the take down or be liable for a "a related offence". There are also provisions to speed up the process where irreparable or substantial harm may be caused. In Afro Leo's humble opinion the wording could be tightened so that the provision is clearer.

Prohibition on uniquely South African symbols

However, the introduction of what are effectively provisions to protect geographical and cultural denominations expressed in the first paragraph of this post (see also the italics below) is the most interesting to this blog:

Firstly, South Africa does not have legislation that protects uniquely South African names and places, unless they are trade marks which very often they are not or plant varietal names. The way such protection is obtained is normally through international legislation designed for that purpose eg geographical indications and not through legislation designed to facilitate e-trade.

Secondly, it is odd for such severe penalties to be introduced for breach of what is now effectively claimed as a RSA brand or property. Take Facebook as an example. The site has many more followers then there are citizens in RSA and it also has many "uniquely" Facebook names. Yet if its rights are infringed its recourse, like every other company, is through the Courts where the penalty of two years in prison is not available.The same goes for Le Comite Interprofessionnel du vin de Champagne, the group entrusted to safeguard the "uniquely French name" Champagne.

Thirdly, as the ECT Act is designed to facilitate national and international e-trade it seems strange that there are provisions contained in it that make it an offence to register .zulu (which the explanatory note to the ECT Bill describes as "innately wrong") when, for example. the Queen (England) has not sought to imprison those who attempt to register .english or the White House those who attempt to register .liberty. In other words, it seems to grate against the concept of reciprocity and harmonisation which is a stated objective of the Bill.

Fourthly, the Bill proposes that ministerial consent first be obtained before an application for gTLD can be made. However, it is not clear how to go about asking for that consent. Readers may be aware that the Heraldry Act and Merchandise Marks Act have similar provisions for the protection of the national RSA flag that are largely ineffective as this post illustrates.

A fifth reason is that those who have applied for gTLDs are already subject to a process whereby governments and communities can object to the registration of a gTLD. The basis of the objection is wide enough to include public interest grounds. See for example, the objection procedure here.

Lastly, there are some practical problems.

The proposed amendment:

(5) No person may use, license or apply for registration anywhere in the world of a

geographic or cultural qTLD that is uniquely South African without the written permission
of the Minister, which qTLD may by way of example, include any reference to or be the

same as a South African national language, a South African place name, a South

African heritage site, a South African historical event, a South African product or service,

or a South African national team or national representative of any kind.

For example, what is uniquely South African? There are so many place names that are inherited from names of places in other countries (Margate, Ramsgate, East London, Hyde Park, etc) that one probably cannot say that they are uniquely South African albeit that they are protectable place names.

There is a possiblility too that if the political party COPE (whose name comes from a South African heritage name) had to apply for a gTLD for its members, they would need to seek the permission, most likely from an opposing party Minister. The fracas that occurred when COPE was established indicates some expected difficulties with that process - see Tune in live for ANC v COPE name battle.

There is also the difficulty of determining who or what is a uniquely cultural property of the country. If one accepts that the Protea (our national flower) is a uniquely South African property (forgetting for a moment about the Protea hotel chain) then the cricket team Proteas is too (also as the name of a national side) but what about its players who are citizens of the country made famous by the national team? Faf Du Plessis's mercurial efforts yesterday, for example, have made him a national hero. Does he by extension become a cultural property and is he a "national representative"? If so (and it looks likely), the provision could impinge on his right to commercialise his own image or benefit commercially from his own success.

National symbol protection

Of course the idea behind protecting South African property is correct. We have experienced a Swiss national trying to claim exclusivity in Europe for "biltong", there have been difficulties protecting "rooibos", countries like Ethiopia have had to go to great lengths to protect their coffee region names and, in Kenya, the Kikoi has been the subject of a legal tussle between nations. However, Afro Leo is not persuaded that the place for that protection is in a national Act of this kind for the reasons explained above.

Darren Olivier

Darren Olivier

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