Page 16 – CIP – The Anton Mostert Chair of Intellectual Property

Copyright in parts of the National Anthem, as well as the composite work, does not belong to the State. This was the finding of Prof Owen Dean, incumbent of the Chair of IP, in a recent publication on IPStell (read more). The CIP’s research also found that copyright in the music of The Call (“Die Stem”) belongs to Prof JM de Villiers of the Department of Mathematics at SU.

This story was awarded to eTV as an exclusive, broadcast on national and satellite TV on 20 and 21 June 2012, and followed by a LIVE interview with Prof Owen Dean.

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News Story & Live Interview with Prof Dean

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Articles dealing with Nkosi Sikelel’ iAfrika and claims by various parties that they hold copyright in it and are entitled to claim, and have claimed, royalties for its use and public performance appeared over the weekend of 17 June 2012 in City Press and Rapport, and possibly other newspapers. These articles claimed that, unlike enterprising third parties, the South African Government has missed out on vast sums of money by way of royalties for use of the song such as at major international sports events.

With respect, these articles are well wide of the mark and exhibit a woeful ignorance of the law of copyright. They are misleading and have the potential to stir up strong emotions.

The ignorance of the journalists who wrote the articles is such that they, and possibly journalists in general, would do well to attend the introductory course on intellectual property law which will be offered to non-lawyers jointly by the law faculties of the Universities of Stellenbosch and Cape Town in late July (more information about the short course is available here). The articles also display less then complete knowledge of the history and background of Nkosi and indeed of the South African national anthem.

The Vine Oracle will proceed to rectify these shortcomings in this article.

First, a brief lesson in the basics of copyright law. Provided a song or other work is original and has been reduced to a material form, it can enjoy copyright virtually throughout the world without compliance with any formalities whatsoever such as registration. The copyright in a work is regulated in each country by the national copyright laws of that country. A work is “original” for purposes of copyright if it is the product of the author’s own individual effort and expertise. It need not be unique or inventive in any way. As a general rule a work cannot be original if it is a copy of a pre-existing work. On the other hand, however, a work can be original even though it embodies the whole or part of an existing work provided the author of the junior work adds something of his own creation to the existing material. The copyright which comes into existence in these circumstances, however, only encompasses the author’s new contribution and creates no rights in respect of the earlier work or pre-existing material. A derivative copyright of this nature can exist even though in making the derivative work the author might infringe an existing copyright. The fact that a derivative work may have its own copyright does not mean that the author of the derivative work can restrain or control the use of the pre-existing material which is not original to him/her.

Copyright in a work has an existence which is limited in time. The duration of the term of copyright varies from country to country and is determined by a particular country’s domestic copyright law. There are many countries, of which South Africa is one, which confer copyright for a period terminating 50 years after the death of the author of the work, while other countries grant this term for a period of 70 years after the death of the author. Once the term of copyright has expired, a work falls into the public domain and is free for use by all. The erstwhile copyright owner has no claim whatsoever to the right to control the use of a work once it has fallen into the public domain.

The ownership of copyright can be transferred by the author to another party and thereafter can be transferred to further parties by means of a written document or assignment effecting the transfer of the rights. Generally speaking, once the copyright in a work has been assigned, the former owner or assignor has no further claim to the right in the work. There is, however, an exception to this rule caused by an obscure provision of the British Imperial Copyright Act which was made law in the early twentieth century in all countries which were part of the British Empire or realm, including South Africa. This law applied in South Africa for the period 1916 to 1966 and continues to govern the ownership and term of copyright of a work made during those years. This Act provided that, where the author of a work assigns his copyright during his lifetime (and therefore divests himself of those rights), 25 years after his death the ownership of the copyright reverts to the estate of the author, somewhat like a homing pigeon returning to its base. It was this provision of our law which enabled the executor of the estate of Solomon Linda to successfully claim infringement of the copyright in the song Mbube/Lion Sleeps Tonight against Walt Disney in a celebrated case a few years ago.

For copyright purposes, a song (or an anthem) consisting of words and music, is a compilation of two separate works, each enjoying its own copyright. The melody of the song constitutes a “musical work” while the words or lyrics of the song constitute a “literary work”. Because each component has its own copyright, the ownership and duration of the copyright in each component work is determined separately by its own circumstances. It is possible for the music and lyrics of a song to have different copyright owners.

Second, the facts pertaining to the South African National anthem. The current South African National anthem is a composite of three separate segments. The first segment comprises Nkosi Sikelel’ iAfrika with Xhosa/Zulu words, while the second and third components comprise the music of Die Stem with, in the first instance, Afrikaans words, and in the second instance, English words. It dates from 1997 in which year it was officially proclaimed as the single National anthem.

“Nkosi is in the public domain while Die Stem is still subject to copyright protection”

Nkosi was composed in 1897 by Enoch Sontonga, a South African school teacher. The melody was based on a Welsh hymn entitled Aberystwyth written by Joseph Parry. Sontonga wrote the words of the first stanza in Xhosa and thereafter additional stanzas were added by the poet Samuel Mqhayi. Joseph Parry died in 1903, Enoch Sontonga in 1905 and Samuel Mqhayi in 1945. More than 50 years have passed since the death of all of these authors and this song in its entirety is thus in the public domain and no copyright subsists in it.

The words of Die Stem were written in 1918 by Cornelis Jakob Langenhoven as a poem. Langenhoven died in July 1932 and the term of copyright in his poem has thus expired and the work is in the public domain. No copyright subsists in it. Langenhoven’s poem was later set to music by Marthinus Lourens de Villiers and the composite work became the South African National anthem in 1928. De Villiers died in May 1977 and the term of copyright in the musical work will thus expire in 2027. The music of Die Stem, as distinct from the lyrics, is thus still the subject of copyright.

At some stage prior to Langenhoven’s death in 1932, de Villers assigned the copyright in the music of Die Stem to Langenhoven. In June 1957 Langenhoven’s heirs and the administrator of his estate assigned the copyright in both the words and music of Die Stem to the South African Government, ie The State. For legal technical reasons, this assignment was confirmed by an act of parliament, namely the “Stem van Suid Afrika” Copyright Act, No.2 of 1959. However, notwithstanding these assignments, for the same reasons as applied in the Solomon Linda Lion Sleeps tonight case, (see the article: Dean, OH “Stalking the Sleeping Lion” in De Rebus (2006) 16) the copyright in the music of Die Stem reverted to the estate of Marthinus Lourens de Villiers in 2002 and it or its successors in title is/are the current copyright owner.

“The State does NOT appear to own copyright in the National Anthem”

The current composite National anthem was compiled by Jean Zaidal-Rudolph, who also wrote the words of the English component of the anthem. Jean Zaidal-Rudolph is still alive and the term of copyright in her works will thus run for at least the next 50 years. It must be appreciated that the composite work created by Ms Zaidal-Rudolph is an original work and enjoys copyright, but only to the extent of Ms Zaidal-Rudolph’s own contribution, namely the manner in which the separate components inter-relate and merge with each other. However, as far as the English words are concerned, there is a separate literary work enjoying its own copyright in the full extent.

Ms Zaidal-Rudolph’s copyright does not extend in any way to Nkosi or Die Stem as such and the use of these works individually are unaffected by Ms Zaidal-Rudolph’s copyright. Unless the State has taken some steps to acquire the ownership of the copyright in the composite National anthem from Ms Zaidal-Rudolph, which appears not to be the case, the copyright in it vests in her.

To sum up, no copyright vests in Nkosi or in the words of Die Stem and they are free for unqualified use by all. The melody of Die Stem, the words of the English component of the current National anthem and the composite of the works embodied in the current National anthem are the subjects of copyright and their use is subject to the permission or licence of the respective copyright owners. In the light of the extremely obscure nature of the provision of our copyright law which vests the copyright in the melody of Die Stem in the estate of Marthinus Lourens de Villiers, it is extremely doubtful whether it is appreciated by anyone, including de Villers’ heirs and the State, that the copyright in this work is owned by private persons who are entitled to charge royalties for its use and public performance as part of the current National anthem.

“Registration with a collecting society has nothing whatsoever to do with the subsistence of copyright”

In practice music industry royalties for the use of works covered by copyright are collected by collecting societies, for instance in South Africa the South African Music Rights Organisation (SAMRO). There is an international network of national collecting societies which operate on a reciprocal basis. A copyright owner who wishes to utilise the services of a collecting society, registers his copyright with his national society. This manner of registration, however, has nothing whatsoever to do with the subsistence and ownership of copyright, which is determined by copyright law, but simply records what is believed to be the facts regarding the ownership of copyright. A copyright owner who does not register with a collecting society is free to collect royalties for the use of his work himself/herself. Consequently, the fact that a particular composer or copyright owner does not register with a collecting society is irrelevant to the ownership of a copyright in a work. New arrangements of existing works can qualify for independent copyright in the limited sense discussed above (namely the new own contribution of the derivative composer is protected) and royalties are only due to such a copyright owner if his/her particular version of the work is used.

Against this background, we will comment on the contents of the newspaper articles under discussion.

The articles suggest that the South African government has somehow lost the plot by not registering The South African National anthem with a collecting society and has in a sense “forfeited” its copyright. In the first place, the South African government does not appear to own the copyright in the National anthem, and in the second place, the lack of registration of the work with a collecting society is irrelevant to the subsistence of copyright and the right of the copyright owner to claim royalties for its use.

“anyone who pays for the use of Nkosi deserves to be ripped off”

It is stated that some 61 claimants have registered claims to Nkosi Sikelel’ iAfrika and are obtaining royalties for its use. At best such claimants can only claim rights in their particular versions or arrangements of Nkosi (provided they are original) and the use of Nkosi per se does not fall within the ambit of the rights of any such claimants. If, for instance, any such claimants were to claim that the inclusion of Nkosi in the South African National anthem impacts upon their rights, such a claim would be totally without any foundation. The Belgian singer, Helmet Lotti, is said to be one of the claimants to rights in Nkosi by virtue of his version of it on his album “Out of Africa”. With respect, Helmet Lotti in the past made spurious claims to rights in various other South African songs, including Tula Baba, and the unfounded nature of his claims and the fact that his use of the songs on that album indeed amounted to copyright infringement, were exposed in a copyright case before the Belgian Court (see our article on this blog entitled “Golden Oldies”). In the circumstances, anyone who pays any form of royalties for the use of Nkosi to any collecting society or to any person deserves to be ripped off unless he/she is specifically using a particular modern version of the work, which for the major part is unlikely.

It is suggested that it is necessary to apply to the National Herald for permission to use the current South African National Anthem. Apart from the fact that, as previously mentioned, the State does not appear to own any rights in the current National anthem, let alone Nkosi, the National Herald has nothing to do with the use of literary or musical works belonging to the State, as distinct from heraldic works such as coats of arms and possibly the national flag.

“the derivative of a name has absolutely nothing to do with copyright”

It is said that when versions of Nkosi are registered with international collecting societies they become derivative names of the national anthem. This statement seems to confuse the protection of the names, with which copyright law is not concerned, with the protection of literary or musical works. The derivative of a name has absolutely nothing to do with the payment of copyright royalties for use of a work.

The long and the short of it is that no-one, including the 61 “registrants” of claims to rights in Nkosi, is entitled to claim any rights in, or royalties from the use of, Nkosi as a component of the current South African National anthem. The only persons who can claim rights in, or royalties in respect of the use of, the current National anthem are the heirs of Marthinus Lourens de Villiers for use of the melody of Die Stem, and Jean Rudolph, for the use of the English words in the National anthem and the use of the anthem as a composite.

As a question of fact it would appear that none of these copyright owners are exercising any such claims and in the view of the Vine Oracle this is as it should be because the country’s National anthem should be free for use by all and it would be at variance with public policy for it to be otherwise. For the sake of good order, the South African government should take appropriate steps to acquire the ownership of the copyright in their respective works from the heirs of Marthinus Lourens de Villiers and Jean Rudolph so as to ensure the freedom of use of the National anthem as a national asset.

Nkosi is not a national cash cow from which the South African Government can or ought to derive wealth. Nor does it belong to anyone else. It may be part of our heritage but it is free for use for all. No-one, not the South African government nor the 61 pretenders, can monopolise or appropriate it. Long live Nkosi!

18 June 2012

LINKED CONTENTS

This article, and the works it refers to, has been reviewed by Prof Owen Dean in a recent LIVE interview on eTV. The research outlined in the article has also led to further factual discoveries, commented on in the eNews broadcast on 20 and 21 July 2012. To watch the VIDOES and the LIVE interview, click here.

The Iziko South African Art Gallery is currently featuring an expedition entitled “A Centenary Celebration of the life and work of Barbara Tyrrell”. Barbara Tyrrell is a South African artist and author and the exhibition comprises a selection of over 150 of her highly decorative and accurate visual reproductions of Southern African tradition costumes and tribal dress, as well as items of adornment. The various subject matters comprise traditional South African art works and are themselves copyright artistic works.

During the 1950’s and 1960’s Barbara Tyrrell undertook a journey through Southern Africa in search of the traditional dress of many different ethnic peoples inhabiting the region. She made countless sketches of traditional tribal attire, a large proportion of which were transformed into paintings. The exhibition of her works constitutes a marvellous vivid and colourful collection and record of a very wide variety of traditional attire and items of adornment. It provides a remarkable catalogue of traditional South African art works associated with clothing and attire and is probably a unique record of truly traditional African artworks. Her works currently form part of the Campbell Collections housed at the University of Kwa-Zulu Natal.

Barbara Tyrrell in Natal with Banukile – a Bhaca woman from Ixopo (Image: www.ezakwantu.com)

In the course of compiling her collection of works and when Barbara Tyrrell visited villages and other tribal habitats she communed with the tribes and peoples and made her drawings and paintings with their concurrence and blessing. The works were made in a relaxed and comfortable environment with the minimum of formality and bureaucracy. She simply travelled through the countryside and drew and painted what she saw while visiting local peoples and villages. In this way a valuable cultural and historic collection was assembled. She is now one hundred years old and her works will thus continue to enjoy copyright for at least the next fifty years.

Let us now fast-forward some sixty or so years to the year 2014. By this time, the Intellectual Property Laws Amendment Act, 2011, which was passed by Parliament in 2011, will presumably have come into operation. President Jacob Zuma will hopefully have broken away from his nuptial activities for long enough to signify his presidential assent to this Act and other acts passed by Parliament during 1911.

The Copyright Act and various other intellectual property statutes have by now been amended so as to provide IP protection for so called “traditional knowledge”. In a copyright context this term really means expressions of folklore and, more particularly, for present purposes, traditional art works. Traditional art works now enjoy retrospective copyright going back to the days of yore, extending forward in perpetuity, and they have been transformed from cultural treasures to items of commercial property capable of generating revenue. All the facilities and bodies created by the amending Act have been put in place and are operational. So, we have an august body known as the Council of Traditional Knowledge, a Traditional Knowledge Trust operating a trust fund, and a National Database, intended to provide a record of all and every work of traditional knowledge, regulating the traditional copyright industry. These entities are staffed by large numbers of people (cadres to whom some or other political debt is owed?) and a thriving bureaucratic apparatus is in full sway. The national objective of providing employment has been served (but is anything actually being produced or created ? – no mind)

An original sketch by Tyrrel published in “Her African Quest” 1950 (Image: www.ezakwantu.com)

Each and every work of traditional knowledge, and in particular traditional art, is the subject of copyright, no matter when (perhaps hundreds of years ago) and how, or by whom, it was made. Who or what is a “community,” owning copyright, remains uncertain. Is it an extended family, the members of a village, a clan, a tribe or a nation, such as the Zulus, as a whole? The owner of the copyright (the nebulous “community”) is entitled to require the payment of royalties in respect of the right to make reproductions and otherwise disseminate copies, of an artwork. Licensing of copyright is the order of the day, and indeed, a licence agreement with the text and conditions approved in advance by the Council of Traditional Knowledge is required to be signed. The royalties payable for using the work could be paid to the National Trust whereafter, after deduction of administration costs, some of it may, but not will not necessarily, flow back to the “community” from which it originates. Dissemination of longstanding traditional culture is now a business aimed at making a profit. The destination of the bulk of the royalties collected is, however, obscure.

Armed with her prior approved draft written licence agreement, a latter-day Barbara Tyrrell comes to a village in East-Griqualand and wishes to observe an initiation ceremony so that she might draw pictures and make paintings of what she sees, and in particular the costumes to be worn by the various participants. She will no doubt be charged an admission fee to witness the ceremony because “traditional performances” are now protected by the Performers Protection Act and consent (to which a price can be attached) is necessary to make any form of recording of what transpires. If the relevant community has appointed a collecting society to look after its money collections, as it is entitled to do, she may be able to negotiate with the collecting society. Otherwise, she must negotiate with the “community”, whoever that may be. Assuming the negotiations are successful and the licence agreement is signed, she will be entitled to make one or more drawings or paintings of what she sees, subject, of course, to the conditions of the licence. A licence is required in respect of each and every work reproduced. One hopes that she has a clear idea of what she ultimately intends to do with the pictures because that may influence the terms, and the cost, of the licence.

A watercolour painting by Tyrrell based on her sketches (Image: www.ezakwantu.com)

One of the major difficulties she faces is that she must determine which “community” is the copyright owner. This is the community in which the work originated or first saw the light of day. Since any community (whatever that may be) can subjectively determine whether a work is a traditional work of theirs, it may be that more than one community claims copyright in a particular work that she wishes to reproduce. In fact, there may be a dispute between several communities as to which community is the actual originator of the work. This enquiry may go back several hundred years. Was the work originally traditional to a Zulu community, or a Xhosa community? Did it originate with a Zulu community and was it then adapted by a Xhosa community, in which case each of the communities will own the copyright in separate aspects of the traditional work? If she is wise she will require the community with whom she ultimately enters into a licence agreement to furnish her with a warranty that it controls the copyright in the desired work and a corresponding indemnity against adverse claims being made against her. Indeed, she would be well advised to travel with her intellectual property attorney so that she can be advised as to the intricacies of copyright law as applicable to a myriad of traditional works. Otherwise she faces severe risks that, despite paying licence fees, she could end up infringing someone’s copyright and be liable for payment of damages.

One can understand that if the latter-day Barbara Tyrrell travels to a variety of communities in different parts of the country, and paints in excess of 150 different works (like her predecessor did), she will have her time cut out to sort out all the complex legal and commercial issues. A considerable amount of advance planning would have to go into the expedition so that she could ensure that she is armed with the prior approved written licence agreements when she arrives on the scene. No random wandering through the countryside this time round. It has all become terribly complicated.

One cannot help but ask the question whether a latter-day Barbara Tyrrell, or anyone in his or her right mind, would ever in a million years contemplate embarking on such a project at all. Given the hassles connected with it, there is scant prospect of this happening. However, it would be a great pity if she decides against it because this means that no record of the costumes used across the length and breadth of the nation would be created. Consider the sad cultural loss that would have occurred had Barbara Tyrrell been deterred from undertaking her project all those years ago.

An example of Tyrrell’s work in the Campbell Collections (Image: campbell.ukzn.ac.za)

There may, however, be some consolation to the latter-day Barbara Tyrrell. A silver lining to a very dark cloud, perhaps! Her logistical problems may conceivably be alleviated by the fact that, since a State-run database of traditional works has been created, each and every community will have gone to the trouble and expense of registering each one of their traditional art works in the database. Ascertaining comprehensive details of works and their ownership may be available at the simple press of a button. After all, an expensive and comprehensive database has been put in place at State expense and it would be a pity if it is not property utilised to the benefit and for the convenience of the Barbara Tyrrells of this world. The legislation is, after all, very far sighted and imaginative. Why would rural traditional communities not take the elementary step of registering their comprehensive portfolio of traditional works in the database in Pretoria? Surely this would be the passport to instant commercial success in commercially exploiting all their longstanding traditional works. It may well be worth the vast cost of the registration process.

The difference in the operating circumstances between, on the one hand, the Barbara Tyrrell of the 1950’s and 1960’s, and, on the other hand, the latter-day Barbara Tyrrell, must be attributed to the progress that has taken place in enabling traditional communities to commercially exploit their ancient traditional treasures. There is money to be made from the commercial exploitation of past traditional works and the communities have now been empowered to grasp some of that money. The treasure houses of the past have been unlocked. There is now no need to create any new works for the future. Why work at creating something new – expend trouble and talent – when there is plenty of money to be made from what has already been done in the past. One can simply sit back and reap the fruits the endeavours of the forefathers. Who needs the incentive of ongoing creative activity and achievement for future reward and the enrichment of art and culture? The pot of gold in the rainbow nation lies in the distant past, at the beginning of the rainbow. Cast your gaze backward, not forward!

It is a supreme irony that, assuming the latter day Barbara Tyrrell paints pictures featuring traditional art works, the copyright in her works will expire fifty years after her death and then fall into the public domain, as is the wont of intellectual property. It will be free for use, and to be built on for the future, by all. The copyright in those traditional art works depicted in her paintings will, however, on the other hand endure and be able to generate income for the fortunate communities forever. This is the bounty bestowed on the products of the ancestors by the amended copyright law. Perhaps there is after all also a pot of gold at the end of the rainbow, if it is ever reached! But, and herein lies the rub, is it possible that sane people will decide to give traditional works a very wide birth in conducting their commercial activities and that in reality there is no pot of gold at all?

Prof Owen Dean

7 April 2012

Gallo Music and Sting Music have locked horns in the South Gauteng Division of the High Court over copyright in certain songs named Thula Baba, Unomathemba and Siliwelile. Gallo claims that it owns the copyright in these songs and that Sting therefore required their authority to include them in the stage musical Umoja and that it is entitled to claim royalties arising out of the inclusion of these songs in the musical. Sting, on the other hand, claims that the songs are traditional and therefore in the public domain with the result that they are free for use by everyone, including itself.

Of course, as has been frequently aired in the past on this blog, once the Intellectual Property Laws Amendment Act (otherwise known as the “Traditional Knowledge Act”) comes into operation, the community, or communities (whatever they may be) from which these songs originated will be able to claim royalties for their use, over and above anything that Gallo may be able to claim. Accordingly, the claim that they are in the public domain may be a short lived illusion and Sting, like everyone else who wishes to use any work which can vaguely be categorised as being traditional, will have to pay the piper. Gone will be the days of utilising material in the public domain, at least as far as so called “traditional works” are concerned, for nothing. One may use the works of Beethoven, Mozart and the like with impunity (unless perhaps they too can be categorised as traditional) but not tribal works because they are sacrosanct..

Be it as it may, the court happily does not have to cope with this complication at the present time. What is in issue is whether the songs are truly traditional, or whether they are the original works of authors who have transferred their rights to Gallo.

Original copyright derived from traditional work

The answer to the above question may depend largely on the facts of the matter but it is important that the principle involved should be understood. At the present time songs which are truly traditional works are indeed in the public domain. However, it is possible for a composer to take a traditional song and adapt it or transform it into a new version, whereupon an original copyright is created as a derivative of the traditional work. Provided the composer of the derivative work expends sufficient talent and work in creating the derivative work, copyright subsists in it and he/she is the owner of that copyright. In the event that someone copies his or her derivative version, that copyright is infringed. The fact that source version of the derivative work may be in the public domain is irrelevant. On the other hand, however, in the event that the third party copies the source material, ie. the traditional version of the song, then the copyright in the derivative version is not infringed even though there may be substantial similarity between the third party’s version and the derivative version. In other words, while the maker of the derivative work can have an independent copyright in his new version, that does not give him rights in the traditional version which remains in the public domain and can be used by all (at least for the time being in the case of traditional work).

Interestingly, Gallo was involved in litigation in Belgium in a very similar matter a few years ago. That litigation also involved the song Thula Baba and in addition the songs Jikel-Emaweni and Quonguothwane (Click Song). The evidence in that matter showed that all of the songs on which Gallo relied were derivative versions of traditional songs and that the infringer (Helmut Lotti, the well-known singer) had copied the derivative versions and not the traditional versions. Accordingly, the Belgium court held that copyright infringement had taken place. The factual findings regarding the subsistence of copyright in the derivative versions and which versions had been copied by Lotti were made by a panel of expert musicologists, including an eminent South African expert.

In other words, the essence of the present matter appears to be: which versions of the relevant songs were copied by Sting? If the derivative versions in which copyright is owned by Gallo, were copied, then Gallo appears to have a sound case. On the other hand, if the facts show that Sting went back to the initial traditional versions of the songs and used these versions as their source material, then it would seem that there has been no copyright infringement.

This case highlights the kind of issues which are likely to arise in the future once the communities favoured by the so-called Traditional Knowledge Act get going and start claiming their dues for the use of traditional music and other works. In these circumstances, Sting will be caught between a rock and a hard place and the use of “traditional” songs in musicals is likely to face copyright infringement claims from a variety of sources, from both the Gallos of this world and the communities (probably a plurality of them, each advancing their own cause) which claim to have originated the songs. Let the games begin!

Dr O H Dean

18 May 2012

New TK Bill – Sui Generis Protection for Traditional Knowledge

The Mad Hatter in Wonderland

“Come on Baby Light My Fire”

Traditional Knowledge – Legislation in the New Tradition

The Desmond Tutu Peace Trust (DTPT) has bestowed a great honor on Stellenbosch University by engaging the services of the Chair of Intellectual Property (CIP) at the Faculty of Law.

The Chair has accepted the position of chief Intellectual Property Law advisor to the Trust and will in future be available to assist in all aspects of the Trust’s intellectual property rights management.

The first mandate to the CIP is to advise the Trust during current negotiations with Google Inc and others.

The CIP in its executive capacity (the IP Unit – Owen, Cobus and Sadulla) will provide its expertise on a pro bono basis to the Trust, and will meet with the CEO and representatives of the Trust during this week.

Owen’s article “Sport as a brand and its legal protection in South Africa” has been published by the quarterly Global Sports Law and Taxation Reports (March 2012, Issue 1, Pages 41 – 46).

An abridged version of this article has been published by CIP earlier, and the full text is now available in the PUBLICATIONS section.

INTRODUCTION

Intellectual property is commonly regarded as an esoteric branch of the law. It is characterised by being complex and until recently it has been a little understood and somewhat discrete area of the law. Its complexity stems from the fact that it has as its subject matter intangible items such as marks, ideas, concepts, goodwill, cultural expressions and the like. This must be contrasted with tangible goods like vehicles, ships, equipment, household goods, and immovable items such as portions of land, all of which have a physical existence. The application of the law to tangible, physical items is in principle less complicated than when the law is applied to intangible, immaterial items cast in the form of property.

The age of knowledge, information and technology has catapulted intellectual property into greater prominence in the world at large. There is now a far greater emphasis on the value and importance of items of intellectual property in all fields of society, but especially in commerce, industry and in the socio-economic sphere. Trade marks are recognised and acknowledged as being major, if the pre-eminent, assets of a business. Copyright in computer programs and in the entertainment industry has become a major economic factor. This in turn is bringing, or has the potential to bring, intellectual property law out of the shadows and into the limelight. Its esoteric nature is changing and it needs to become a widely disseminated and understood area of the law in order to keep pace with its ever evolving role in economics, both national and international.

Many of the problems which currently beset the implementation and enforcement of intellectual property law stem from the fact that in general knowledge of the law has not kept pace with the evolving economic importance of intellectual property law. While intellectual property as an economic factor has emerged from the shadows and into the limelight, intellectual property law has lagged behind and has manifested a measure of reticence to come out into the open. It behoves the custodians of intellectual property law to promote the popularisation of intellectual property law so as to bring it into harmony with its economic role in the modern world. In this way, intellectual property can assume its rightfull place in the modern economic world. This is a universal situation.

IP IN SOUTH AFRICA

South Africa is a unique blend of a first world and a third world society. It has many of the advantages of a first world country, but at the same time suffers many of the disadvantages of a third world country. It is indeed probably a microcosm of the world as a whole, which consists to a large measure of first world societies living side by side with third world societies with a concomitant yawning gap between the “have” and the “have nots” in an economic context. Accordingly, some of the problems which face intellectual property law internationally can be approached by viewing them in a South African context.

There is a perception that intellectual property exists only for the benefit of the wealthy and indeed that it stands in the way of economic opportunities for a broader section of society.

South Africa has highly developed and sophisticated intellectual property laws which by and large compare favourably with intellectual property regimes anywhere in the world. Likewise, in principle it has a well developed and effective legal system with a legal structure which is conducive to effective and efficient enforcement of laws. The legal profession, and in particular the intellectual property legal profession, is well schooled and qualified and it has all the expertise that is necessary to promote the efficient and effective enforcement of law. This is all consistent with a first world society. However, when the third world characteristics of South African society are brought into the equation, one finds that there is a paucity of financial resources and a lack of administrative skills and expertise, indeed of appropriate machinery, to make the system work as it should do. This is coupled together with widespread poverty amongst large sections of the population with the result that many cannot afford to utilise the systems which the law has put in place for the benefit of the individual, and in particular for intellectual property owners. The result is that there is a perception that intellectual property exists only for the benefit of the wealthy and indeed that it stands in the way of economic opportunities for a broader section of society, and in particular for the underprivileged and for those that have been previously disadvantaged. The economically underprivileged, who seek to provide an existence for themselves through informal trading, find themselves in conflict with the wealthy who seek to enforce intellectual property rights by means of a legal system which, by virtue of its cost implications, appears to be biased towards the wealthy and privileged members of society.

A CLOSED CIRCLE

The challenge of the legal system and more especially the intellectual property regime is to change this perception both in appearance and in substance.

In South Africa at the present time professional practitioners of intellectual property law are highly qualified. For instance, a patent attorney is in essence required to obtain an engineering or other technical degree, which involves studying at a university, usually on a full time basis, for three or four years. Thereafter the aspirant patent attorney is required to obtain a post-graduate law degree which requires a further three years study, making a total of at least six years in all. Having obtained the necessary academic qualifications, the aspirant patent attorney is required to join a law firm practising patent law and to serve a period of two years of articles of clerkship, at the same time studying for, and passing, bar examinations, to become qualified as an attorney. Over and above that, in order to obtain the qualification of a patent attorney, the individual is required to complete a rigorous four year course the culmination of which confers upon him the appropriate qualification and licence to practise. As a result, the individual can spend upwards of 12 years of intensive study and practical training in order to qualify to practise as a patent attorney. Acquiring these qualifications requires dedication and sufficient financial resources. As a consequence the process does not deliver large quantities of patent attorneys. Furthermore, the individual who invests this amount of time and resources in acquiring his qualification is inclined, and perhaps even entitled, to place a high price on the use of his services. This process results in there being a relatively small group of practising qualified patent attorneys which, by virtue of the economic laws of supply and demand, also promotes there being a high price for intellectual property legal services. The same considerations, albeit to a milder degree, apply to specialist trade mark attorneys. This situation is exacerbated by the fact that putting in place the infrastructure to practise intellectual property law in the modern age is an expensive process.

This area of the law is generally not widely offered or promoted by South African universities and this limited circle of knowledge is carried through into the judiciary.

The practice of intellectual property law in South Africa is characterised by a relatively small circle of practitioners whose services are expensive. This is conducive to making the practice of intellectual property law something of a closed shop. The economically underprivileged have difficulty in accessing intellectual property legal services. Knowledge of intellectual property law is also not disseminated widely. Since the legal education system is not geared to producing large quantities of graduates with knowledge of intellectual property law, this area of the law is generally not widely offered or promoted by South African universities. This further tends to narrow the ambit of knowledge of intellectual property law.

South Africa has the dual bar system of legal practitioners with the result that, generally speaking, trade mark and patent attorneys must brief advocates or barristers to appear before the courts in intellectual property matters. It is the exception rather than the rule that a young barrister commences practicing at the bar with any knowledge of intellectual property law. It is thus left largely to trade mark and patent attorneys to educate and train advocates in the enforcement of intellectual property law. This requires considerable effort and time on the part of the attorneys and there is a tendency for them to concentrate their efforts on a small group of individuals who have the attributes to master the subject matter. This leads to the creation of a small pool of advocates on which the attorneys draw in order to pursue litigation before the courts. In practice trade mark and patent attorneys have chosen those advocates who are of the highest quality to become trained as intellectual property law experts. Once again the economic rule of supply and demand comes into play and a combination of having a small pool of advocates to choose from, together with these individuals being in popular demand in other areas of the law by virtue of their superior skills and expertise, leads to the chosen advocates placing a high price on their services, thus increasing the overall costs of intellectual property litigation.

A further consequence of the closed circle of intellectual property legal experts is that the limited circle of knowledge is carried through into the judiciary. For the major part, particularly in the past, judges in South Africa are appointed from the ranks of advocates, and to a lesser extent, attorneys. The system described produces very few judges who have any experience of the practice of intellectual property law at the time when they are appointed to the bench. In the end result, the whole system from practitioners through to the judiciary is characterised by a severe limitation of bearers of the requisite knowledge rather than that the knowledge is widely disseminated.

It is necessary that intellectual property law should be popularised, i.e. brought to the people to a far greater extent. Popularising intellectual property law in South Africa is going to require the mould to be broken and the whole trend to be changed. The process is going to have to deliver a far wider circle of individuals who have a working knowledge of intellectual property law. Ways are going to have to be found to enable economically disadvantaged people to have access to intellectual property legal services and alternative, less complicated and less expensive, means of adjudicating intellectual property disputes are going to have to be found. If necessary, measures must be taken to enable the indigent to use intellectual property legal services which they are not in a position to afford in normal circumstances. At the same time, the credibility of the intellectual property legal system must not be impaired and indeed its effectiveness must be enhanced in order to enable it to better achieve its objective of providing compressive protection for intellectual property on an affordable and practicable basis.

EDUCATION AND TRAINING

The starting point for popularising intellectual property law commences with education and training. It is essential that instruction in intellectual property law should have a far broader base and the subject should become a standard component of general legal education. An intellectual property course at a reasonably advanced level should become a compulsory component of any law degree or diploma in the same way as areas such as the Law of Things, the Law of Property and Contract Law. If all law students are introduced to intellectual property law as part of their basic training, this will go a long way towards making knowledge of intellectual property law more widespread. By introducing students to it at an early stage, a major stride will be taken in demystifying and popularising intellectual property law. In order to achieve the objective of incorporating intellectual property law into basic legal training, it may be necessary for legislation to be passed to this end, or universities and other training colleges must be incentivised or persuaded to make intellectual property law an essential component of legal courses.

Induce bar councils to require a reasonable degree of proficiency in intellectual property law as a basic qualification for a licence to practise.

One of the ways of incentivising universities and other training institutions to give due recognition to intellectual property law would be to induce bar councils that regulate the practise of law to require a reasonable degree of proficiency in intellectual property law as a basic qualification for a licence to practise. If this could be achieved, it would follow that the universities and other educational institutions would be under a measure of compulsion to include intellectual property law as a basic component of legal curricula.

As far as the existing legal fraternity is concerned, it would be desirable for all legal practitioners as well as members of the judiciary, criminal law enforcement agencies and the like to undergo training or instruction in intellectual property law. In the modern world there is a strong emphasis on continuing legal education in order to ensure that the legal fraternity stays up to date with developments in the law. Intellectual property should become a standing item in continuing legal education.

In South Africa there has been a significant step in this suggested direction in that seminars and workshops dealing with intellectual property law have been held for law enforcement officers and even for magistrates, who are the first tier of the judiciary. This process should be continued and expanded so as to include higher level members of the judiciary, such as high court judges.

It would assist with the education and training of lawyers in regard to intellectual property law if the laws themselves could be simplified and be made less technical. One of the impediments to a more broadly based understanding and knowledge of intellectual property law in the past has been the perhaps excessively technical nature of the law which has made it conducive to a high degree of specialisation. Popularisation of intellectual property law necessarily entails the law becoming more user-friendly and thus more easily understood and more widely practised.

ANTON MOSTERT CHAIR OF IP LAW

The abovementioned considerations underscore the creation and operation of the Anton Mostert Chair of Intellectual Property Law at Stellenbosch University. The Mission of the Chair encompasses, as it were, preaching and spreading the “gospel” of Intellectual Property Law and making it known and available to the world at large. To this end, the Chair has fostered the creation of a Postgraduate Diploma in Intellectual Property Law and a LLM Degree in Intellectual Property at the University. It will also be conducting a certified Introductory Course in Intellectual Property Law aimed at giving basic tuition in this branch of the law to non-lawyers. The Chair also operates its IPSTELL blog on which it gives meaningful comment on topical IP issues, as well as a website on which general information on IP and the works of the Chair can be obtained.

The Chair sees itself as a custodian of IP and in this context will do its utmost to influence the proper development of IP law in a sound direction. It offers its services to the Government and any entities working for the good of IP law in this regard. It calls on others to pursue a like quest and is willing to co-operate with them to achieve the common goal.

Prof O. H. Dean

30 April 2012.

On the Internet there is only one thing that really matters – prominence. It is the nexus of all factors that drive the ever-expanding cyberspace. In this world, the attention span of every visitor is measured in seconds, and the amount of traffic to a specific website measured with scientific precision.

It is, therefore, not surprising (and a cause for concern) that trade marks are set to become a casualty in the battle for online supremacy. The fact that trade mark infringement on the Internet is a present danger is not new. However, few realise the extent to which the domain name system is open to abuse by those undeterred by the provisions of the Trade Marks Act.

The reason for this is alarmingly simple: the domain name system (DNS) allows the registration of domain names (website addresses) regardless of any intellectual property rights. It is therefore possible to obtain a domain name that contains the registered trade mark of another for whatever purpose. In addition, the DNS is largely subject to arbitration regulations that, in many cases, afford less protection than the Act.

In the game of numbers, the Internet packs the biggest punch and trade mark rights are a favourite target

In 2008 ICANN (the international regulator of the domain name system) announced the creation of a new set of domain names specifically aimed at brands, institutions and organisations. These new registrations will create a set of domain names not followed by the traditional .com, .co, .net et al suffixes, but in stead allow anyone to register any word as a domain name.

Applications for these new domain names have just closed, and one may well ask: is there really any cause for concern?

The answer, from an intellectual property rights perspective, is YES. Everything about the Internet is about numbers, and it is a game with only one rule: the larger number wins. To succeed in online business, your website requires visitors. The more visitors you attract, the more business you will do (or refer at a fee). The more business you do, the more revenue you generate. The more revenue you generate, the higher the advertising fee you can charge for space on your website.

As a result, websites are forever engaged in a tussle for higher listings on search engine results. Consequently, many are prepared to register (or purchase) domain names that contain the trade mark of competing (or even unrelated) enterprises in the (realistic) hope that this would divert visitors to their website. In addition, few are deterred by the outcome of an arbitration hearing at some future date or the judgment in an (unlikely) civil suit for trade mark infringement. It is only the number of visitors today that matters.

Traffic numbers

The days of a simple hits counter (indicating the total amount of page views) is long gone, and privacy considerations have yet to realise how much information is being collected about every website and individual page visited. By including a simple series of code with the programming of a site the Webmaster is able to track, in astounding detail, the particulars of every visitor. This includes the country, region, city, network, language, operating system, browser program, Internet service provider and screen resolution. In addition, very little effort on the part of the web programmer is required to review the visitor’s engagement with a website (and every of its component pages, buttons, pictures, social media features or links) historically and in real time.

And among these details, the most important statistic is the traffic source. This indicates the route each visitor followed to arrive at a specific website (or landing page of that site). This number consists of two categories; direct visits (where the individual is connected to the site by typing the address into the browser program) and linked visits (where the traffic is relayed through another website).

In both cases, the specific website address is of paramount concern, and the higher the number the better.

At the nuts and bolts level, Internet traffic is directed with the aid of IP (Internet Protocol) addresses expressed as a series of unique numbers (eg: 173.194.41.166) that is linked to a specific computer where a website is hosted. Each IP address in turn is linked to a unique domain name (eg. www.maties.com) that is easier to communicate and simpler to remember.

While social media has undoubtedly sounded the death toll of the searchable web, most internet users still rely on search engines to find a specific website. As a result, Webmasters concern themselves with the number of linked visits from search engines and, of course, the position of their website in the search results.

In this race to the top, possessing the right domain name provides a considerable lead, and the more variations of a specific domain name you own the greater the advantage.

However, the algorithms applied by a search engine when generating its results are far more complicated and depends on a multitude of variables including; the established number of prior visitors to every site listed, its geographic location, age, number of social media hits, language and actual contents.

For this reason, the number of direct visits to a website is just as important and often preferred in excess of linked visits.

Because traffic numbers are directly linked to the advertising revenue of each commercial website and responsible for the market penetration (and success) of new products or services, developers spend a great amount of time and money on search engine optimisation (SEO) and social media integration to deliver more visitors to their website.

Although not yet tested, it would be an interesting (and certainly successful) method to establish the reputation of foreign well-known trade marks in a specific jurisdiction where the mark is not registered with the aid of website traffic statistics.

Domain Names vs Trade Marks

The domain name system (DNS) is managed globally by ICANN and any number of authorised domain name registrars (both internationally and locally) depending on the type of domain registered.

The only requirement for the registration of a domain name is that it should be unique. The registrar is therefore not concerned with any prior use, reputation, registered trade mark or any other intellectual property right that may exist in respect of the domain (or any part thereof) for which registration is sought. A domain name is simply allocated on a first-past-the-post basis.

If you do not protect your trade marks before someone else registers it as a domain name, the consequences may be severe

In addition, the DNS does not provide for a process of opposition to registration or any pre-registration review. Therefore, it will only remove or transfer a registered domain name upon a court order or the outcome of an ADR hearing.

This position, of course, leaves it open to any individual to register any domain name in furtherance of its own traffic rating tactics, regardless of trade mark considerations.

Indeed, many have registered misspelled trade marks as domain names to direct traffic to their own (competing) website, or registered derivatives of famous marks as part of their domain names to increase their search engine ratings. In addition, the DNS does not prohibit the registration of pejorative or griping domain names (eg: helkom.co.za; sickfacebook.com; audi-sucks.com) and will only consider certain registrations as abusive or offensive under limited circumstances (of which trade mark infringement is only one factor).

Unfortunately, ICANN has recently increased the risk of such registrations with the announcement of a new open-ended, sponsored range of generic top-level domain names available for registration. This will allow brands, industries, institutions or groups to register a single domain (eg: .woolworths, .sony, .nike) and then manage all second level domain names (eg: .food.woolworths) at its discretion. At the close of application in April 2012, more than 800 applicants have filed for new individual domain names.

In addition, the new gTLD Program also admits the very first Internationalised Domain Names (IDN) that may contain any of the non-Latin alphabet characters or numerals. The IDN is based on the range of Unicode characters and includes the entire ASCII character map. It is therefore possible to register a domain name in any language or script using any alphabet (or multiple versions of the same domain name using a different alphabet), which is likely to lead to widespread potential trade mark infringement.

Actionable?

Business is about money, and the Internet is big business. Therefore, to secure the fundamental role of trade marks in business the Internet is forcing us to adapt to a new kind of match, where the courts are shunned in favour of fides driven online fora.

When faced with the domain name question, the traditional remedies for trade mark infringement remain (alarmingly) unaffected. In addition, where domain names are concerned an ADR (alternative dispute resolution) system is usually preferred. In the case of gTL domains the WIPO Arbitration and Mediation Centre is considered the best alternative to a trade mark infringement suit, while local ccTL (.za) domain disputes are settled according to the ADR Regulations promulgated in terms of s 69 of the ECT Act.

Although there is no reason why a registered domain name may not be challenged based on the provision of the Trade Marks Act, the interpretation of the UDRP rules applicable to domain names will in most cases afford the trade mark proprietor a more suitable remedy.

Among others, these include:

The fact that the contents of the website (linked to the infringing domain name) is irrelevant to a finding of confusing similarity between the mark and the domain name. The addition of generic or descriptive (or even derogatory words) to the mark contained in the domain name is disposed of in a manner analogous to that of trade mark litigation.
The determination of rights to the mark is conducted on a prima facie basis. That means the possession of a registered mark anywhere constitutes a sufficient right provided that a sufficient level of distinctiveness, renown and/or prior use of the mark has been reached.
The nature of the goods or services offered by the website is irrelevant, as is the class of registration of the mark. A case of bona fides concurrent use is therefore more difficult to make.
Unregistered marks and personal names may also form the basis of a complaint.

These factors are applicable to existing and new domain names. In addition, ICANN’s new gTLD program includes a series of trade mark-orientated provisions that may prevent abuse or infringement, provided that the trade mark proprietor is alarmed in time.

This includes (for the first time in the history of the DNS) a form of review.

Regarding the new brand-based domains the new system allows for an objection process through which a rights holder (such as a trade mark proprietor) may oppose the registration of a proposed domain name. This of course means that the application-to-registration process for new gTL domains will include a longer waiting period and a more prominent public record of applications. The first round of applications closed on 12 April 2012, and publication of the register is due any day.

In addition, applications under the new program had to be accompanied by a rights management policy regarding the further (second tier) registrations of awarded domain names to avoid potential trade mark infringement.

Finally, the program obliges all successful registrants to incorporate measures that subject their domain name and all second level domain names to ICANN’s UDRP (Uniform Domain Name Dispute Resolution Policy).

All interested parties now have the opportunity to lodge comments about a proposed mark (or the new program in general) with ICANN before 30 June 2012 for consideration and/or file an objection to a domain with WIPO within 7 months.

A battle plan

The outcome of trade mark litigation based on a domain name is notoriously difficult to predict. Similarly, post-registration domain name dispute resolution is still a new (and far from exact) exercise.

In stead, many trade mark proprietors elect to make an offer to purchase the (potentially) infringing domain name from the registered owner. However, this practice has given rise to an enterprising occurrence – the cybersquatter.

This entails the widespread registration of domains that include the trade mark(s) of deep-pocketed proprietors that are likely to make an offer to purchase the domain.

The registration of a domain name without the intention to use it or in an effort to obstruct the business of another is considered a mala fides registration and therefore a ground for its removal from the register. However, these practices remain widespread and more frequently linked to international sports and cultural events, or famous brands.

What is to be done to protect the exploitation of a trade mark in the domain name register? Clearly, in this numbers game the trade mark proprietor has only one chance to win: be the first.

For those who were savvy enough to register their trade mark-based domains widely and applied for the new gTLD’s, nothing more than the usual monitoring of domain names is necessary. Unfortunately, for those proprietors caught napping, the only available course of action would be to investigate the new gTLD register and bring an application to WIPO as soon as possible.

And if you do nothing? Be prepared to find your website (and your business) on page 25 of Google’s search results.

Cobus Jooste

Copyright law had its origins in the 18^th Century when the need was felt to protect the investment of printers in carrying out the new-fangled process of mass production of books. Its ambit was extended over the years to cover additional forms of works such as musical and artistic works and then in the 20^th Century a major quantum leap was made and work such as sound recordings, published editions, television broadcasts and others were brought within its ambit. Throughout the ages, copyright has shown an ability and a willingness to adapt to meet changed circumstances and to cater for new forms of expression of the fruits of intellectual activity. In this way, rules formulated to deal with the printing and distribution of books were successfully adapted to deal with far removed exigencies such as computer programs and the dissemination of works over the internet.

The adaptability of copyright ensures that it remains relevant despite technological changes

In the result, the horizons of copyright law have been broadened over the ages and it has been able to remain relevant. Technological changes and developments have posed enormous challenges to the ability of copyright to evolve and expand and the phenomenon of the internet has tested the adaptability of copyright to the ultimate and perhaps to breaking point. The ease and speed with which works can be disseminated worldwide in an instant over the internet is bringing copyright to a crisis point and new ways of enforcing copyright and giving effect to the rights which it confers upon creative people will have to be found. The real challenge to copyright in the future lies in its enforcement and not necessarily with its ability to adapt itself to deal with ever evolving forms of works.

The secret to copyright’s adaptability has been its foundation on certain basic principles which have proved to be evergreen and enduring. In order to qualify for copyright, a work must be original, that is to say it must be the result of the independent effort and expertise of the maker or author, it must exist in a material form, which means that there is no copyright in ideas but simply in the manner and form of their expression, the author of the work must be identifiable and have certain characteristics or attributes, and the work enjoys protection for a limited and predetermined period, whereafter it falls into the public domain and is free for use by all.

The application of these basic principles to new forms of essentially homogenous works which have arisen over the years has enabled copyright to evolve with the times. Computer programs, could, for instance, be accomodated because they and their circumstances of creation could be fitted within these basic principles. In general it has not been sought to fit within the ambit of copyright works which cannot comply with these basic conditions or requirements, i.e heterogenous works.

Preserve the foundation of copyright protection

In certain circles a trend has developed in recent times to try and protect under the aegis of copyright works which do not, and cannot, comply with these basic tenents . The South African Government is a prime transgressor in this regard. By means of the Intellectual Property Laws Amendment Act, 2011 (which has been passed by Parliament but not yet assented to by the State President) it is sought to protect works of so called “traditional knowledge” as species of works qualifying for copyright. These works of “traditional knowledge” or “cultural expressions” entail folk law, traditional stories, traditional art and the like, which have no known author, and which have been in existence for ages and which currently fall outside the parameters of works eligible for copyright. They are not adapted to enjoy copyright protection because they cannot meet the basic requirements for such protection. Artificially imposing them on copyright law cannot be achieved without riding rough shod over the fundamental elements of copyright.

It is one thing to adapt copyright law on an evolutionary basis so as to cover new types of works which meet the basic requirements of the law. It is an altogether different matter to attempt to adapt the law to deal with completely heterogeneous types of works which are not suited to incorporation in the fold. Adapting copyright law in this manner cannot but undermine it and ultimately lead to its destruction. Whatever the merits for granting some form of protection to these traditional works might be, this objective should not be achieved by the destruction of a body of law which has successfully evolved with the times for several centuries. A new form of protection should be devised for traditional works if it is felt that they deserve protection.

It copyright is to survive into the 21^st Century and beyond, it must adapt to cater for new forms of homogeneous works. However, if it is to be adapted to try and protect forms of heterogeneous works, it will not survive in a coherent form.

Prof. O H Dean

19 April 2012

The age old proverb says “there is no smoke without fire”. The legislatures of several countries are about to turn this proverb on its head. The anti-smoking lobby has gained such strength in these countries that the fire brands of the anti-smoking lobby with their fiery rhetoric have moved governments to do their utmost to achieve the demise of smoking as a social practise. These campaigns have resulted in fire generating no smoking. It is not the objective of the Vine Oracle to debate the merits or demerits of such a policy. The Vine Oracle is, however, a custodian of intellectual property law and has a comment to make on the strategy of destroying trade marks or brands in order to achieve this objective.

Numerous countries, including the United Kingdom, Australia and South Africa, have banned the use of cigarette trade marks in advertising and have required very prominent warnings regarding the dangers of smoking to be printed on cigarette packets and the like. This practice has seriously undermined the value of cigarette trade marks because trade marks thrive on use and exposure to the public for their wellbeing. While it has often been claimed that smoking can retard the physical growth of children, there can be no doubt that inhibiting the use of cigarette trade marks limits their growth as items of intellectual property and as commercial assets.

A business’s trade marks and other intellectual property can be amongst their most valuable assets or items of property

It is well known trade marks can be extremely valuable commercial assets of a business and some of the most famous trade marks, like COCA COLA and MICROSOFT, have been valued as being worth several billions of US dollars. A business’s trade marks and other intellectual property can be amongst their most valuable assets or items of property.

Intellectual property shares many characteristics with physical or tangible property, as indeed it should, since they are both forms of property, merely being intangible and tangible varieties, respectively. The constitutional court has indeed ruled that intellectual property falls within the ambit Article 25 of the Bill of Rights in the Constitution, the Property clause, and that it thus enjoys the same degree of protection as tangible property.

A registered trade mark can become invalid and liable to cancellation – thus to being extinguished – through not being used in the course of trade for a period of five years or more. It follows that, if the proprietor of a registered trade mark is prevented from using his trade mark in relation to the goods for which it is registered for a period of five years or more, he can lose that item of property through it being extinguished. In the event that the non-use is brought about by the State, and more particularly by legislation, the State is in effect expropriating that property. Accordingly, it can be argued that, by preventing registered cigarette trade marks from being used, the State is depriving the trade mark proprietor of his property and indeed expropriating it.

In terms of the Article 25 of the Constitution, a person cannot be deprived of his property – having it expropriated – unless due compensation is paid by the depriver of the property. In the present instance, the State is the doer. Consequently, if the South African government forbids the use of cigarette trade marks it is arguably expropriating those trade marks and it is thus required to pay due compensation to the trade mark proprietors. Given the repute and value of trade marks such as ROTHMANS, DUNHILL, PETER STUYVESANT and the like, each of these items of property has a value of many millions of Rands. Quite a treasure trove to pay in compensation!

An arguable case for compensation after expropriation

It is reported that the Australian government has legislated for cigarettes to be sold from this December in drab olive packs with large health warnings and no brand logos. Four tobacco companies have instituted court proceedings in Australia to stop this measure. The litigants have brought their case on the basis the new law is unconstitutional and that the government will be acquiring their property without compensation. The case is seen to be a test case on a worldwide basis as other countries, including South Africa, are contemplating similar legislation. As argued above, the Vine Oracle believes that the tobacco companies have an arguable case, and certainly would have a good prospect of success in South Africa, given the property clause of the Bill of Rights and the Constitutional Court’s interpretation of it.

It will be recalled that a few years ago the government yet again made noises about stopping South African Rugby from using the SPRINGBOK emblem, which is a registered trade mark owned by SA Rugby. At the time, Professor Owen Dean, the current incumbent of this Chair of Intellectual Property Law, expressed the view in the media that by preventing SA Rugby from using the SPRINGBOK emblem the government would be depriving South African Rugby of an item of property and that this could not be done without paying due compensation. This contention formed part of the lively debate which at the time surrounded the government’s proclaimed intention. We all know that in the final result the government largely backed down on this issue and the SPRINGBOK emblem remains the brand of SA Rugby and is to be found in all its glory on the national rugby jersey. Who knows, perhaps the government was influenced at the time by the argument that it would have to pay compensation to the tune of many millions of Rands to South African Rugby if it went ahead and prohibited the use of the SPRINGBOK emblem? It certainly ought to have taken very serious account of this eventuality.

In proclaiming its intention of emulating the Australian government and preventing the use of brands on cigarette packets by legislation, has the South African government properly thought through the implications and consequences of its action? Does it feel sufficiently strongly about this issue to pay millions of Rands in compensation to the proprietor of each registered trade mark which is prevented from being used in this manner and thus being condemned to a certain demise?

A case of this nature brought by tobacco companies in South Africa would give the Constitutional Court a different morsel to chew on. It might even appreciate a change of diet from the kind of fare that has been dished up to it of late by the politicians.

Perhaps the government should put this issue in its pipe and smoke it!

19 April 2012

CIP – The Anton Mostert Chair of Intellectual Property