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Context - IP and social causes
The Philanthropic Collection (TPC) is the company that brought The CEO SleepOut to South Africa in 2015. The event that year raised over R25million (almost $2million) for its beneficiary Girls & Boys Town (GBT).
The FAQs (link no longer available) posted on the CEO SleepOut website records that independent consultancy IQ Business valued the social impact return on investment of the 2015 CEO SleepOut event at 1:1.3.15 (for every Rand invested in the event it delivered R3.15 for social good). For the 2016 event TPC increased this value to 1:4.24. Like the event or loathe it that's impressive. (For more information on how SROI values work, this Australian report is informative and TPC's initiative compares very favourably indeed.)
From an IP perspective the SROI value of a social initiative like The CEO SleepOut is encapsulated in its trade marks (branding that communicates the initiative), copyright (databases created as a result of the initiative) and knowhow (the skill of companies like TPC to bring it all together). The protection of this SROI and its associated IP are therefore as critical to the general public that donates and derives social benefit from the initiative, as they are to the sustainability of the initiative itself.
This is why it is not uncommon, indeed critical, for social causes to enforce their IP. In Boston College Law Review Lauren Behr's article entitled Trademarks for the Cure: Why Nonprofits Need Their Own Set of Trademark Rules advocates for greater protection for trade marks in the non-profit sector:
“because the work of these organisations affects the greater public as well as both potential donors and recipients”.
The dispute and the court case
During preparations for the 2017 event, it came to the attention of TPC that GBT had copied the database of donors for the 2015 event and were using it to solicit donations. TPC was obviously concerned because:
- it felt that such activity would compromise its ability to raise funds for the 2017 event that it was about to launch (ed - to protect the SROI);
- that the database contained personal information of its donors of which it was the custodian; and
- that GBT was in breach of its agreement not to solicit donations using the database, having been warned about this on several previous occasions, according to the papers.
In the circumstances, TPC felt compelled to approach the court for urgent relief on three grounds: copyright infringement, breach of undertaking and unlawful competition.
GBT denied the allegations and argued that it was the co-owner of the copyright in database. Its copyright defence was based on the premise that the 2015 event was in fact a joint venture between it and TPC and/or that because it had helped with certain manual entries on the database from a form completed by some of the donors, it was in fact a co-owner of the copyright in the database.
The judge agreed that the matter was urgent for TPC and in deciding for TPC felt sufficiently persuaded on the papers and in argument, to dispose of the case on the basis of the copyright claim alone.
The copyright findings
Judge Modiba ruled that GBT’s role as “partner” was simply an expression of TPC when referring to them, as it had done with all of its stakeholders e.g. its media partner, and did not create legal obligations nor a partnership nor a joint venture nor co-ownership of the database. In fact she described the notion as "absurd" (see para 25 of the judgment).
The judge felt that although circumstances required that GBT had both access to the backend of the website used to create the database and was involved in manually entering some of the information not capable of being generated by the website, this was not sufficient to create any rights in the database. She also felt that this was "absurd".
In support of this Judge Modiba quoted the 2016 case of Moneyweb v Media 24 Ltd where it was held that there must be sufficient application of the author’s mind to produce a work that could be judged to be original. The form created by GBT did not meet this threshold according to the judge.
The court upheld TPC’s claim and ordered GBT to pay their costs. The judgment of course does not mean that GBT are precluded from contacting donors (including those that were on their own database) it simple means that GBT must not do so using TPC's database.
