Opened With Expectation and Closed With Profit

Posted on Dec 1, 2014

Opened With Expectation and Closed With Profit

Speech delivered by Judge Mabel Jansen at the book launch of Dean & Dyer Introduction to Intellectual Property Law

“In our court building, when one wanders in the judges’ corridors, the photographs of all judges who served on the Bench, adorn the walls. One looks at the photographs of judges Galgut, Holmes, Hoexter and many others whom one did not even know existed, and it is with sadness that one realises what a font of knowledge died with each of them. What is also striking is how soon most of the judges died after being appointed: appointed 1971: died 1976; appointed 2002: died 2008; appointed 1998: died 2007 – a fact which clearly does not augur well for my future.

But those who write or create live forever. Their imaginations and thoughts have been bottled. I have always maintained that it is mandatory for everyone to keep a diary. We only have to think of Anne Frank, Samuel Pepys and Benvenuto Cellini – who not only wrote an autobiography but also a highly interesting book entitled the Treatises Of Benvenuto Cellinini on Goldsmithing and Sculpture which gives one a fascinating insight into the manner in which jewels and sculptures were made in Florence in the sixteenth century and how various coloured tints were prepared. Cellini’s autobiography has been called one of the most colourful biographies ever written as it describes his many peccadilloes with mistresses, his enormous sense of self-satisfaction and illustrates how lawsuits regarding trade marks, trade secrets and copyright proliferated in sixteenth century Florence as technology blossomed. Cellini had his own style of dealing with lawsuits and wrote that: “When certain decisions of the court were sent me by those lawyers, and I perceived that my cause had been unjustly lost, I had recourse for my defense to a great dagger I carried; for I have always taken pleasure in keeping fine weapons. The first man I attacked was a plaintiff who had sued me; and one evening I wounded him in the legs and arms so severely, taking care, however, not to kill him, that I deprived him of the use of both his legs. Then I sought out the other fellow who had brought the suit, and used him also such wise that he dropped it.” – The Autobiography of Benvenuto Cellini, Ch. XXVIII, as translated by John Addington Symonds, Dolphin Books edition, 1961

Herman Melville said that in order to produce a mighty book, you must choose a mighty theme.

It is with pride that I can today announce the launch of Dr Owen Dean and Ms Alison Dyer’s textbook: An Introduction to Intellectual Property Law by Oxford University Press. The editors and co-authors of the textbook Dr Dean and Alison Dyer do not require any introduction. Editors have to separate the wheat from the chaff. Dr Dean is a leading specialist in the field of intellectual law and a prolific writer who has never baulked at embracing new solutions to new or old problems, presenting novel and innovative solutions or concepts and adopting approaches from other jurisdiction and giving them a South African twist. He embraced Anton Piller orders when it was not fashionable to do so, effectively established combatting ambush marketing in South African Law, was a trail blazer in the protection of traditional knowledge and is constantly researching new facets of intellectual property law. Whilst running a very busy practice he somehow managed, in between, to write his locus classicus Handbook of South African Copyright Law which he also, somehow, managed to update annually.

As head of Spoor and Fisher he steered a dedicated team of lawyers and taught them to be innovative. No wonder that Spoor and Fisher fought for shapes, such as that of the Weber Steven braai, to be recognized as trade marks even before the amendment of the Trade Marks Act. He firmly entrenched the use of market surveys and how they should be conducted in the protracted McDonald’s litigation in the face harsh and unwarranted criticism which he handled with his usual equanimity. One of the grounds of complaint was, inter alia, that he briefed me although I was pregnant at the time. (I am tempted to add the word “sic” as I would in an ex tempore judgment.) However, to adopt one of judge Erasmus’s malapropisms, the criticism was duck’s water off his back. That is another endearing and not well known characteristic of Dr Dean. He never had any qualms about briefing or employing women or black advocates when it was still frowned upon to do so. What also struck me is that he valued my input, even when I was a baby junior, as he was completely open-minded. Ultimately we were vindicated by winning the matter in the Appeal Court and were awarded the ICC’s award for the best appeal team worldwide for that year.

Another example is the Victoria’s Secret Inc v Edgars Stores Ltd. 1994 (3) SA 739 (AD) case, wherein spillover advertising was not regarded as sufficient to establish a reputation in South Africa without a trading presence. Nicholas JA still held in his judgment, and I quote it does not help to plunder the libraries of the world, this court is not persuaded.”

However, clearly the research that was put into the heads of argument paid off because very soon thereafter Harms JA held in the matter of Caterham Car Sales and Coachworks Ltd. V Birkin Cars (Pty) Ltd. and Another 1998 (3) SA 938 (SCA) that spillover advertising indeed could be taken into account. Indefatigable as usual, Dr Dean is currently the incumbent of the Anton Mostert Chair of Intellectual Property Law at Stellenbosch University.

Ms Alison Dyer has close on forty years’ domestic and international patent and design experience in the chemical, pharmaceutical and biochemical fields and related litigation. Both Dr Dean and Alison Dyer are past presidents of the South African Institute of Intellectual Property Law and, in addition to running very busy practices, still found time to lecture. For example, Ms Dyer lectured candidate attorneys in patent litigation and students at both the the University of the Witwatersrand and the University of Stellenbosch which happens to be Dr Dean’s alma mater.

It is their practical experience in the evolvement of intellectual property for a period of close on four decades and their academic input which render this textbook invaluable, as well as the input of various Spoor and Fisher lawyers who share their work ethos and who were mentored by them. I often wondered why certain judges would always refer back to much older authorities and only later realised that it was because they were actively involved in those cases and lived and breathed them. Many practitioners get stuck in a rut. Only the exceptionally gifted rise above that. Both Dr Dean and Alison Dyer have that ability.

I was honoured when I was requested to give input to Dr Owen Dean and Ms Allison Dyer’s new textbook, and to write the foreword. This was particularly so in that Spoor and Fisher helped me mould my practice and granted me a plethora of opportunities as an advocate. But for the firm Spoor and Fisher, I would not be standing here today and would probably only have survived six months at the Bar as my father predicted.

Socrates, millennia ago, stated that the secret of change is to focus all of one’s energy not on fighting the old but on building the new. However, I am mindful of the fact that he was sentenced to death by hemlock by a jury consisting of his peers for his long orations – a factor which I shall keep in mind.

Changes to intellectual property are rapid, radical and perpetual due to ever changing technology. In the South Gauteng Association 2013 High Court matter of Ketler Investment CC v Internet Service Providers the role of internet service providers was considered as well as spamming, websites and hyperlinks. Courts seem to be become increasingly more comfortable in dealing with modern technology. In this case, it is also stated that e-mails and the like form part and parcel of everyday life. (One should contrast this with what his Lordship Mr Justice Schutz wrote in a judgment many years ago, namely that there is an irrebutable presumption that everybody over the age of fifty is computer illiterate). It is with amusement that I recall judge Schutz stating that he could understand that a computer is a machine humming away, but that he frankly did not understand how a computer program was inserted into it or what the role thereof was. Our computer programmer clients were not amused to put it mildly.

What is interesting to note from this judgment, however, is the allegation that in the case of a commercial enterprise, defamation under the actio iniuriarum arises from loss of business reputation or status, and unlike a claim under the actio legis Aquilia, actual pecuniary loss is not a requirement. I pause to state that it is difficult to reconcile this dictum with the Constitutional Court’s statement in the Laugh It Off matter to the effect that substantial harm and actual damages have to be proved in cases of trade mark dilution. It is thus clear that courts are considering issues in isolation and not understanding how a judgment in an unrelated field of law actually impacts on intellectual property law cases and vice versa. As judges, who have to deal with all fields of law, the interplay between such fields of law soon becomes apparent. Practitioners need to be alert to this fact. Perhaps the most ominous of these changes in other fields of law are the inroads which modern technology can make into the rights of intellectual property owners. Such rights holders have every right to believe that a perpetual sword of Damocles is hanging over their heads, hanging on a thread which ancient sources state to have been either the hair of a horse or a spider’s thread. (En passant, one can mention that it is remarkable that thousands of years ago, the tensile strength of both the hair of a horse and a spider’s thread was known and put to practical use).

The timing of this textbook is perfect. The onslaughts on intellectual property law have been numerous and seen to multiply daily. The Draft National Policy on Intellectual Property of 2013 is one such onslaught. It is vague and difficult to understand and has to be read in the context of an article published in 2013 by the United Nations Development Programme. The vigilance of intellectual property practitioners therefore has to be constant and their endeavours to strike the right balance between the public’s rights to utilise certain works and the entitlement of rights holders to remuneration for their intellectual endeavours has to be constantly innovative. There are so many threats. Other Acts also have to be taken into consideration such as the Consumer Protection Act, the Counterfeit Goods Act and many more. Our courts are also tackling new subject matters such as the SCA’s pronouncement on needle time and the very recent Google Adwords case. However, the Adwords matter raises alarm bells. In denying that “aanleuning” forms part of the South African common law and in stating that the Adwords platform is acceptable as no deception and confusion arise, the question may legitimately be posed: does this mark the end of the road not only for section 34(1)(c) infringement in terms of the Trade Marks Act but also for protection in terms of the common law? Only time will tell. Laugh it Off already seemed to be an ominous nail in the coffin.

Threats also came from unexpected sources such as the South African Investment Promotion and Protection Bill of 2013, which, notwithstanding its non-threatening title, entitles the state to expropriate property without remuneration. Dr Dean and Ms Dyer explain clearly in this textbook that intellectual property is property as envisaged by the property clause in the Constitution. In this regard, one should keep in mind that the tendency is to allow such forms of expropriation by the state and has been given the stamp of approval by the Constitutional Court. As regards real property and mineral rights the Constitutional Court held in the recent case of Agri South Africa v Minster for Minerals and Energy 2013 (4) SA 1 (CC), a judgment delivered on 18 April 2013, that there was no expropriation of rights when the State is granted the right to give licences to third parties to exploit the mineral rights on the property of a proprietor as the proprietor of the property still holds the ownership of the property and the ownership of the minerals in the property.   Hence, it was concluded that the State was entitled to grant parties other than the proprietors the right to exploit the mineral rights in their property without remuneration, and thus sidestepped the constitutional requirement of remuneration by calling it a deprivation and not an expropriation of property. That bare dominium is cold comfort to a property holder was of no concern to the Constitutional Court.

The case is indicative of the frame of mind of the Constitutional Court judges. The argument that the diminishment of value of a right because another can exploit it, negates the existence of the right and the right of ownership thereof was resoundingly rejected by the Constitutional Court. The Constitutional Court held that there was no expropriation but merely deprivation. It should be kept in mind that section 25, the property clause of the Constitution, pertinently states that property is not limited to land.

Intellectual property students, practitioners and academics will therefore have to be particularly vigilant and well-informed. However, history has taught us that there is a reason for the existence of intellectual property laws. Fed up with trade marks, supermarkets commenced selling their own brandless products. In French they were referred to as “produits blancs” – or white products because they bore no trade marks. In an ironic twist these products became so popular that a supermarket sought to register the word “produits blancs” as a trade mark – to no avail – not surprisingly.

Mark Twain once said: Only one thing is impossible for God: To find any sense in any copyright law on the planet. This book greatly assists in deciphering the inexpicable. The insufficient time available to students and practitioners alike, render this textbook invaluable as it is pitched at precisely the correct level – it is neither too complex nor too rudimentary. Things will be clear and “the right way up” – unlike Matisse’s painting Le Bateau which hung upside down for 46 days in 1961 in New York’s Museum of Modern Art, without anybody noticing.

This book provides a sound foundational level of information addressing core points which give students, practitioners and judges and even clients a grasp of fundamental principles and enough insight to do further research should it be required. It is rare to encounter a textbook which deals with all aspects of such a diverse and difficult field of law such as intellectual property. It is even rarer to find such a textbook which has been distilled from decades of practical experiences and the intellectual endeavours of two such remarkable individuals as the authors Dr Dean and Ms Dyer. This book is written and edited by people who have lived, breathed and agonized over a manuscript, over which many students and professionals will too, albeit to appear in court, to draft heads of argument or to prepare for a final exam. We are all indeed beholden to them.

In fact the textbook, as an object, per se, represents the fruits of past monopolies that were granted. The invention of the press, fonts, the design of the cover and the contents thereof as expressed would not have been possible but for the protection of intellectual property.

Intellectual property will always leave room for the unexpected. As I have stated, it can be hard to define, yet its effects cannot be denied. As long ago as in 1932, MGM produced a film called Rasputin and the Empress. MGM studiously avoided legal action by Prince Yusupov, hence they changed his name in the film to Prince Chegodieff. Surprisingly, Prince Yusupov took umbrage at not being credited with the murder of Rasputin. He won an expensive court case against MGM which was forced to pay a substantisal sum in damages. To everbody’s surprise, a real Prince Chegodieff crawled from the woodwork and also sued the studio for the libellous use of his name and MGM was forced to pay him additional damages. The film’s inaccurate portrayal of Prince Felix and Irina Yusupov as Prince Chegodieff and Princess Natasha caused a historically significant lawsuit against MGM and gave rise to the “all persons fictitious disclaimer,” which has since become standard in Hollywood works of fiction and which, to this day, appears at the end of films.

A three year old asked his mother why she gave art classes to adults. He wanted to know whether they had forgotten how to draw. The mother answered in the negative stating that they had simply lost their creativity and curiosity. Dr Dean and Ms Dyer never lost their drive nor their curiosity. That, in itself, is remarkable. Many people become jaded. Sometimes one needs somebody to tilt at windmills – which turn out to be very real. This is what this textbook does. Most importantly, it makes us think.

It is a good book which is opened with expectation and closed with profit. In fact, as R D Cumming stated, a good book has no ending.

The books that help you most are those which make you think the most. The hardest way of learning is that of easy reading; but a great book that comes from great thinkers is a ship of thought, deep freighted with truth and beauty.

And with this sentiment by Pablo Neruda, I urge you to purchase this book immediately, thereby giving the authors their justified remuneration, and thereby to prosper in your own endeavours.”

Judge Mabel Jansen

Gauteng High Court

Click here for more information on the book Dean & Dyer: Introduction to Intellectual Property Law.