Page 17 – CIP – The Anton Mostert Chair of Intellectual Property

Two related United States Bills were recently the topics of much controversy. Public outcries and widespread online protests were followed by an unprecedented Internet blackout on 18 January 2012. The Internet blackout was supported by the likes of Google, Facebook, Reddit and Wikipedia to name but a few. The blackout was not only supported by the Internet high-and-mighties, but also thousands of lesser known sites rallying their users’ support against the Bills. Such was the nature of the blackout that Wikipedia, for example, took its English-language site entirely offline on 18 January rendering its wisdom useless to millions of Internet users.

At the heart of all the controversy are two Bills on which the US Senate intended to cast its vote on 24 January 2012. However, the major public outcry criticising the Bills, (with the Internet blackout as the cherry on the proverbial cake), persuaded the US Senate to postpone the vote on the Bills. The Senate majority leader made the following brief statement:

“There is no reason that the legitimate issues raised by many about this Bill cannot be resolved…. I encourage him (i.e. the Senator acting as Sponsor to the Bill) to continue engaging with all stakeholders to forge a balance between protecting Americans Intellectual Property and maintaining openness and innovation on the Internet.”

The two Bills at issue are the Stop Online Piracy Act (SOPA) and Protect IP Act (PIPA). They are closely related in that both intend combating trade mark- and copyright infringement on the Internet imposing not only sanctions against so-called infringing sites but also obligations on Internet service providers, search engines, payment network providers and Internet advertising services.

Writing from the perspective of an IP practitioner in South Africa recognising the necessity of local law reform particularly on the protection of copyright, the two Bills are interesting and telling of a nation adamant to protect IP despite the constant challenges faced by technological advances.

PIPA is more limited in its ambit than SOPA. It also appears that it is the lesser controversial Bill of the two. In terms of PIPA, the US Government or a “qualifying Plaintiff” (i.e. applicable holder of Intellectual Property rights) can obtain injunctive relief against the domain name used by an Internet site dedicated to infringing activities, or against a Registrant of such domain name, or the owner or operator of such Internet site dedicated to infringing activities, to cease and desist from undertaking any further activity as an Internet site dedicated to infringing activities. PIPA also provides that Internet advertising agencies may not contract to render their services to infringing sites and, where such services have already been rendered, to take technically feasible and reasonable measures to prevent such further services and to cease making available advertisements for that site.

SOPA attempts to tackle a variety of issues which include:

Granting injunctive relief against the Registrant of a domain name used by an infringing site;
The online streaming of copyrighted works which infringe copyright; and
Internet sites trafficking in inherently dangerous goods or services (including counterfeit goods).

Under SOPA a variety of obligations affecting third parties may arise once an injunction has been ordered against the Registrant of a domain name used by an infringing site. Such obligations include the requirement that:

A service provider must take technically feasible and reasonable measures to prevent access by its subscribers to the infringing site;
An Internet search engine must take technically feasible and reasonable measures to prevent the infringing site from being served as a direct hypertext link;
A payment network provider must take technically feasible and reasonable measures to suspend its service from completing payment transactions to the infringing site; and
An Internet advertising service that contracts to provide advertising to or for the infringing site must take technically feasible and reasonable measures to prevent its service from providing and making available advertisements to the infringing site.

On the streaming of copyrighted works (which include computer programmes, musical works, motion pictures or other audio visual work and sound recordings), SOPA includes the following sanction:

“Any person who wilfully infringes a copyright shall be punished as provided under Section 2319 of title 18, if the infringement was committed by the distribution or public performance of a work being prepared for commercial dissemination, by making it available on a computer network accessible to members of the public, if such person knew or should have known that the work was intended for commercial dissemination.”

A prohibition such as this causes major concern to a website such as YouTube, which no doubt on a daily basis facilitates the streaming of films, sound recordings and other works in which copyright may subsist.

The main objections to SOPA and PIPA included claims that the definitions in the proposed Acts are too broad and that it could be used against legitimate sites and businesses. A further claim is that the Bills are potential “job killers”, which is questionable particularly as SOPA has as its objective the promotion of prosperity, creativity, entrepreneurship and innovation by combating the theft of US property. Whatever the case may be, it is possible that many of the sites who participated in the Internet blackout (and probably more so even many who did not) are concerned with the possible implications which PIPA and SOPA may have to their businesses. Perhaps they should be reminded that the law looks at each case on its own merits and that if they are legitimate sites, they have nothing to fear.

Be that as it may, between Intellectual Property rights and maintaining openness and innovation on the Internet, it appears that democracy walked away as the winner.

Herman Blignaut

Author Bio:

Herman is a Partner of Spoor & Fisher, Pretoria and Fellow of the SAIIPL. He specialises in trade mark, copyright and unlawful competition litigation.

We are all familiar with the old academic adage, “publish or perish”, but when commercialisable research outputs have associated potential intellectual property, any published or presented outputs from the research prior to filing patent applications can result in a minefield for the patent applicant.

There are two important intrinsic requirements for obtaining a patent for an invention in most countries in the world, the first is that the invention must be new and the second is that the invention must be inventive or non-obvious. In order to be new, an invention cannot have been made available to the public anywhere, in any way, whether by publication, presentation, use, sale, and the like. In order to be inventive, an invention cannot be considered an obvious step forward on what was already known to skilled persons in the relevant technology field.

However, when considering novelty and inventiveness, a key factor set out in the patent law and practice of many countries is that there must have been an “enabling disclosure” in the prior art. This term is referred to in both the United States Patent Office Manual of Patent Examining Procedure (US MPEP) and also in the European Patent Office Guidelines for Examination in the EPO (EPO GE).

This term was taken over from another requirement of patent law, which is that a patent specification must fully, or at least sufficiently, describe an invention.

Specifically, US patent law states that “The specification shall contain a written description and process of making and using it in such full, clear, concise and exact terms as to enable any person skilled in the art to which it pertains or with which it is most nearly connected, to make and use the same…”.

This is essentially equivalent to the South African Patents Act Section 32 (3)(b) which provides that a “complete specification shall… sufficiently describe, ascertain, and where necessary, illustrate or exemplify the invention and the manner in which it is to be performed in order to enable the invention to be performed by a person skilled in the art of such an invention…”.

As in the test for the novelty and inventiveness of an invention, the question is asked whether a piece of prior art, such as a publication, presentation, or use, etc. provides enough information to the public, as to be an enabling disclosure which will destroy the novelty or inventiveness of the invention.

It is therefore important to understand what this term “enabling disclosure” means.

In the US, the approach to be used by examiners is set out in the MPEP. As a starting point, it is presumed that any piece of prior art that expressly contains or makes obvious all of the elements of the claimed invention is enabling and it is up to the patent applicant to provide facts that will persuade the examiner that this is not the case. It is also not necessary for the prior art to have proven efficacy in order to be enabling, there need merely be sufficient detail provided to allow a person of ordinary skill in the field to carry out the invention which is being claimed.

However, the mere naming or description of the subject matter of the invention in the prior art is not sufficient to be enabling if additional “undue experimentation” would be required by a person in order to produce the invention being claimed.

Also, if the prior art merely discloses a structure of a claimed compound, then if the patent applicant can provide evidence that shows that attempts to prepare that compound were unsuccessful prior to the date of the invention, this is enough to show inoperability and the prior art will not be considered to be enabling.

The EPO GE contains similar guidance that merely naming a compound in a piece of prior art is not sufficient unless it is also known how to prepare and/or separate the compound.

Furthermore, US examiners can consider what knowledge the public possesses before the date of the invention being claimed and consider whether a person with ordinary skill in the field would be able to combine their knowledge with the information described in the prior art to make the invention being claimed. Again, the EPO GE has similar guidance that a combination of the general knowledge of a skilled person together with the disclosed subject matter at the time of making the invention is enough to provide enabling disclosure. Evidence of this knowledge can be in the form of publications or patents that are available to the public.

The US guidelines indicate that an examiner may also make use of illustrations and pictures as enabling disclosures, as long as each claimed structural feature and how these are put together are provided in the illustrations/pictures.

The UK Patent Office also provides useful guidelines for patent examination, including references to relevant case law, which deal with enabling disclosure that may be persuasive to South African courts during revocation proceedings. In the UK, the guidelines have set out that there are two requirements for an invention to be anticipated by a piece of prior art. The first is that there must have been prior disclosure and the second is that there must be enablement, and these are two separate and distinct concepts that have their own rules.

Firstly, for there to be prior disclosure, the prior art must disclose subject matter that, if performed, would necessarily result in infringement of the patent in question, were it to be granted. Another way to put this is that if a prior art experiment, on more than 99 % of the occasions on which it is conducted, would reliably produce a particular result, then this can be considered as “inevitably” leading to the result in question and there would then be prior disclosure. When considering whether there has been prior disclosure, it is also permitted to consider the general knowledge of a person skilled in the field in combination with the prior art to determine whether each of the features of the claim under consideration have been disclosed.

Secondly, once it has been established that the prior art satisfies the requirement of prior disclosure, for there to be enablement, it must be possible for the ordinary skilled person to be able to perform the subject matter of the invention prior to the patent having been applied for. In other words, the test set out for enablement mirrors the test for sufficiency of disclosure in a patent description.

UK law also provides that if it is clear from contemporaneous evidence that the literal disclosure of a document is erroneous, then this disclosure is not part of the state of the art.

There is not much case law in South Africa dealing with enabling disclosure. Two cases seem most relevant, Elan Transdermal Ltd v Ceiba Geigy (Pty) Ltd 1994 and Bromine Compounds Ltd v Buckman Laboratories (Pty) Ltd 2006. In the Elan Transdermal case, Judge MacArthur referred to English case law, and indicated that on the assumption that the principle of enabling disclosure contained in English law is also part of South African law, unless a method of putting an earlier document into operation was self-evident, it will not be treated as anticipation. It therefore appears that the English law cases and guidelines regarding enabling disclosure will be applicable to South African law.

There is an even briefer mention of enabling disclosure in the Bromine Compounds case where the judge indicates that plaintiff’s counsel argued that disclosure in the prior publication must be an enabling disclosure, i.e. it must be sufficient for the practical working and real utility of the alleged invention. However, the judge went on to say that it was not necessary in the present case to determine whether the disclosure in question had been enabling.

Despite the lack of guidance in South African law, given the probability that UK patent law and guidelines will be persuasive to a South African court, as would case law from other countries such as the US and EPO members, an inventor needs to consider the possibility of whether prior publications and presentations may be considered to contain sufficient details to be enabling and therefore to anticipate a subsequent invention. When this is done, the inventor must not only consider their own work, but also the common knowledge of a person in their field and other publications, presentations or uses that are already known to the public.

So for academics involved in applied research, perhaps the old adage should be updated to “patent, then publish or perish”.

Joanne van Harmelen

Author Bio:

Dr van Harmelen is a Senior Associate of Spoor & Fisher, Cape Town, a Patent Attorney and Attorney of the High Court of South Africa. She specialises in Chemical and Biotech Patents.

Can Food Recipes be Patented in South Africa?

Cookery has become one of the most popular past times of the last few years. This is illustrated by the enormous popularity of TV shows such as “Masterchef” and “Come Dine with Me”; and cookbooks by celebrity chefs such as Jamie Oliver and Nigella Lawson. This leads to an interesting question – Can food recipes be patented in South Africa? To answer this it is necessary, as with any invention, to look into the statutory requirements for patentability.

No matter how delicious the dish, the recipe must still meet the basic conditions of patentability all other inventions must meet: the recipe must be useful, novel and inventive.

Section 13 of the previous Patents Act No. 37 of 1952 stated that;

“if in the case of any application it appears to the registrar that the application claims as an invention a substance capable of being used as food which is a mixture of known ingredients possessing only the aggregate of the known properties of the ingredients, or a process producing such a substance by mere admixture, then he shall refuse the application”.

In the light of this under the previous Act, recipes were not patentable. However, such a provision is not provided for in the current Patents Act. Because, there is now no explicit exclusion, one can draw the conclusion that food patents/recipes are allowable in South Africa. Therefore, recipes can certainly be patented if the patent application and claimed subject matter meet the statutory requirements, which can be difficult and impossible is some circumstances.

There are several stumbling blocks that one can encounter. If the recipe is an old family tradition passed down through generations, the primary hurdle is that the person who wants to patent it, will not be the inventor. Section 27 of the current South African Patent Act provides that:

“an application for a patent in respect of an invention may be made by the inventor or by any other person acquiring from him the right to apply or by both such inventor and such other person”.

In addition, the person who is the actual inventor is probably no longer known. nThe main stumbling blocks, however, are the novelty and inventive step requirement. The South African Patents Act provides that a patent may be granted for any new invention which involves an inventive step.

For an invention to be new, means that it must not have been available to the public anywhere in world – by word of mouth, by use, in any printed publication, or in any other way – before a first application is made for a patent. The problem with recipes is that it is likely that the recipe is an old family recipe and belongs to many families and has been published someplace by someone.

Since recipes are typically combinations of ingredients that are known for a specific purpose, even if the combination is new, establishing that the combination is inventive can be difficult. The difficulty lies in the fact that there are so many recipes and methods of cooking that it may be difficult to demonstrate novelty and inventive step.

Recipes primarily fall into two categories, namely 1) setting out a list of ingredients and 2) a method of combining the ingredients. Merely setting out a list of ingredients is unlikely to be patentable unless of course the inventor is using some ingredients that have never been combined before or the order of combining them is new and it’s not obvious to do so. So in preparing a patent application, one would ultimately set out a list of ingredients in their proportional ranges. Whilst this certainly may be new unless it has some feature that provides unexpected results, it isn’t patentable.

On a more practical note, the more the invention addresses new preparations or cooking methods, as opposed to merely new combinations of ingredients, the better the chances will be to receive valid patent protection. For example, if you merely take food items of the shelf and mix them without doing anything special to the process, then the proposed invention does not reach the level of inventive step required for patentability.

The recipe must therefore have some special feature (an inventive step) for example an achievement of unexpected results such as fat free processes or ingredients, the addition of certain off shelf ingredients like antioxidants, or defining process steps like preservation, fermentation, ageing, etc., to make a strong recipe patent.

In fact, there are several South African patents already directed to one or other types of food compositions. One of the South African patents for example deal with a potato based food product. The invention provides for a method of preparing a potato based food product comprising the steps of: processing potatoes into potato articles having a desired size and shape, blanching the potatoes, dipping the blanched potato articles in a solution to prevent non-enzymic oxidation of the potato articles, drying and coating the potato articles.

As can be seen in the example above, preservation in a recipe could be one of the defining steps to increase the chances of obtaining a valid patent. To reiterate this argument, the patent classification system which is used to classify patents according to the different areas of technology to which they pertain, provides for class A23. Class 23, provides for the preservation of foodstuff in general. Other defining steps can include for example, fermentation, ageing, and addition of food additives like antioxidants. Furthermore, if your food recipe contains some ingredients which in addition to giving nutritional benefits, also gives some therapeutic relief, this can also make for a stronger patent.

Therefore, if your recipe meets the basic patentability requirements and is not just a mere admixture of known ingredients and involves a special feature that achieves an unexpected result, which would not have been obvious for a skilled person to achieve in view of prior publications, then your food recipe could be patentable in South Africa.

Tertia Beharie

Author Bio:

Tertia is a Senior Associate of Spoor & Fisher, Pretoria, a Patent Attorney and Attorney of the High Court of South Africa.

The Advertising Standards Authority (“ASA”) has ruled that retailer Woolworths must stop using the phrase GOOD OLD FASHIONED as it imitates beverage manufacturer’s “GOOD OLD FASHIONED SOFT DRINKS” advertising slogan.

In 2006, beverage manufacturer Frankie’s Olde Soft Drinks (“Frankies”) launched its FRANKIES range of drinks. The range was based on “vintage” flavouring, which was emphasised in all promotional material through the use of the slogan “GOOD OLD FASHIONED”. The slogan appeared on all point of sale and advertising material, such as posters, table talkers and fridge wobblers but did not appear on the product packaging itself.

Frankie’s Olde Soft Drink Company (Illustration)

In 2011, Woolworths, a prominent South African retailer, launched a range of drinks bearing the phrase “GOOD OLD FASHIONED”, as shown below:

Woolworths Good Old Fashioned Flavoured Drinks (Illustration)

Frankies lodged a complaint before the ASA in terms of clauses 8 and 9 of the ASA Code, in effect claiming that the GOOD OLD FASHIONED slogan is its advertising property and that Woolworths was copying it and exploiting the advertising goodwill which it had built up in the slogan.

Woolworths submitted that Frankies was not using the slogan GOOD OLD FASHIONED SOFT DRINKS as a trade name or symbol as it did not appear on the packaging of its product. It claimed that it itself was not using the phrase in a trade mark or advertising sense but rather as a descriptive term to connote an old fashioned flavouring. Woolworths argued that the phrases OLD FASHIONED or GOOD OLD FASHIONED are descriptive and don’t qualify as advertising property.

In its ruling, the ASA Directorate emphasized that it had only been called upon to consider whether Woolworths had exploited any advertising goodwill in and/or imitated the slogan GOOD OLD FASHIONED. The ASA had not been called upon to consider other aspects – such as whether or not the Frankies products’ labels and/or bottle shapes had been copied.

The Directorate first considered the question of whether the slogan GOOD OLD FASHIONED constituted an advertisement and whether, if so, this slogan had been copied by Woolworths. As it ultimately found that Woolworths had in fact imitated the Frankie’s slogan, it did not deem it necessary to consider the issue of exploitation of advertising goodwill.

In determining whether or not Woolworths had imitated Frankie’s slogan within the context of the ASA Code, the Directorate concluded that Frankies was in fact using the slogan GOOD OLD FASHIONED in a trade mark or advertising property sense and not descriptively. The phrase always appears in quotation marks or in a speech bubble, which gives the impression that the words are attributed to the lady appearing on all of the Frankie’s advertising. An example of the Frankies’ promotional material is shown below:

Frankie’s Corporate Branding (Illustration)

Woolworths did not show that the phrases OLD FASHIONED or GOOD OLD FASHIONED are commonly used by other beverage manufacturers in South Africa and are not original to Frankies. Woolworths did give examples of companies and products which allude to the theme of “vintage” sodas but most of these examples are international products and even these don’t necessarily support Woolworths’ argument that the phrase is widely used. The one South African entity which uses the phrase “OLD FASHIONED CREAM SODA” does so differently from Frankies and uses the phrase in a much more obviously descriptive manner. The Directorate concluded that the phrase GOOD OLD FASHIONED SOFT DRINKS is indeed a crafted advertising property.

In turning to the question of whether Woolworths in fact imitated the Frankie’s advertising, the Directorate pointed out that Woolworths did not deny that it had copied the Frankie’s advertising but only denied that the phrase GOOD OLD FASHIONED was original and worthy of protection. Woolworths did not explain how it had come up with the idea of using the phrase GOOD OLD FASHIONED on its product labels. Despite being aware of Frankie’s claimed rights in the slogan GOOD OLD FASHIONED, (Frankies had notified Woolworths in writing that it considered the slogan to be its advertising property) Woolworths still went ahead and used the phrase GOOD OLD FASHIONED on its packaging. Woolworths offered no explanation for its choice to the Directorate.

The Directorate concluded that the only reasonable inference was that Woolworths had deliberately and intentionally copied the phrase GOOD OLD FASHIONED from Frankie’s advertising. In the circumstances, Woolworths was required to withdraw the packaging in its current form.

Interestingly, Woolworths has, as a result of the widespread press coverage on this challenge by Frankies, announced that it will withdraw the product altogether.

Megan Reimers

Author Bio:

Megan is a Partner of Spoor & Fisher, Pretoria, an Attorney of the High Court of South Africa, a Notary Public and a Fellow of the SAIIPL. She specialises in copyright litigation, unlawful competition, Advertising Standards Authority objections, passing off, company name objections and domain name disputes and intellectual property valuation.

The Anton Mostert Chair of Intellectual Property Law (University of Stellenbosch) and the Professional Development Project (University of Cape Town) is pleased to announce a short course (3 days) in IP law aimed at non-legal or non-IP practitioners, those in business, commerce, engineering, arts or sciences or indeed anyone with an interest in this crucial field of law.

The course is specifically designed to provide students with an introduction to this field of law and its practical application, and has no admission or examination requirements.

Presented by leaders in the field of IP law from both Universities, the course promises to be both exciting and rewarding while equipping students with a sound understanding of how relevant (and indeed crucial) IP is to every endeavour. To this end, the course will include specific reference to aspects of IP and IP law relating to and derived from electronic commerce, communication and digital work.

The course is kindly hosted on the campus of the University of Cape Town, and all full participants will receive a certificate from Stellenbosch University.

For more information please view the course brochure.

Date: 25 – 27 July 2012

Venue: University of Cape Town, Rondebosch

Registration Fee: ZAR 6000.00

Closing Date: 13 July 2012

Contact:

The Professional Development Project, UCT Faculty of Law

+27(0) 21 650 5558

paula.allen@uct.ac.za

shani.vavruch@uct.ac.za

Or simply complete the contact form here and we will redirect your enquiry.

Download course programme

If you cannot beat them, join them. For that reason this Chair of IP has decided to announce a NEW sui generis Protection of Traditional Knowledge Bill in the hope that something may yet be done to save us all.

Government’s current attempt at protecting traditional knowledge by amending current IP statutes remains an unmitigated disaster, the scope of which is yet to be fully realised. This Chair, among many others, has expressed its distress at the current Traditional Knowledge Bill (likely to be the Protection of Traditional Knowledge Act soon) in no uncertain terms. And despite the fact that the Chair’s criticism of the Bill has been cited with support by some of the world’s foremost authorities on IP and TK, the Portfolio Committee’s ignorance of these same facts is only exceeded by Government’s ignorance of (international) law. As a result, the current TK Bill is likely to survive its journey across the President’s desk.

For this reason, and after repeated pleas to do so, the Chair has decided to publish a new and workable TK Bill. This proposal is the work of the incumbent Chair and proves that TK is better protected by sui generis legislation. The intention is unmistakable – to illustrate how the Bill should appear. Although the Chair maintains its earlier position about the current Bill, this publication is intended to mitigate the calamity our IP law will face if the Bill in its current format becomes law. Therefore, the new Bill builds on, expands, corrects and delineates the scope of the current Bill to make it work (however difficult) as an independent statute for this (clearly) independent type of work.

Of course, trying to breathe life into the current Bill is an unenviable task, but at least it goes (a long way) beyond mere criticism of the current Bill.

Be warned: let it not be said that this Chair is in favour of the current TK Bill (our views are clear for all to see). However, if you insist on the current Bill, at least do it properly. Here’s how:

Documents to download:

1. The New Protection of Traditional Knowledge Bill

2. Synopsis of The New Protection of Traditional Knowledge Bill

A journalist who cannot define plagiarism is nearly as useful as a bucket without a bottom. Similarly, while the nation is expected to rise in defence of the independence of the press (and rightly so), one might be excused for thinking that all members of the media are capable of independent thought.

Unfortunately, judging by recent commentary on the SA Press Code, the captains of our printed media understand as little about plagiarism as the ruling party does about intellectual property law.

While addressing a hearing of the Press Freedom Commission earlier this week, Barney Mthombothi, the editor of the Financial Mail, expressed an opinion about section 1.8 of the Code.

In the most succinct manner, the Code will impose a blanket prohibition on plagiarism by stating: “a journalist shall not plagiarise”.[1]

However, in successive and largely verbatim online articles the Times Live,[2] Pretoria News,[3] the Mail & Guardian Online,[4] News24,[5] Business Day[6] (in chronological order) and The Namibian,[7] reported that Mthombothi’s address called for further clarity and suggested “more depth and definition (sic) in what plagiarism meant”.[8]

According to Mthombothi plagiarism is “actually quite a serious and vexing topic”[9] which “did (sic) not happen often”.[10] Furthermore, this “very traumatic thing”[11] (plagiarism) is “usually a fireable offence”[12] which “obviously involves taking something that does not belong to him or her”.[13] Therefore, while his first reaction would be to report such a “criminal offence”[14] to the police,[15] according to Mthombothi plagiarism is nevertheless not the subject of statutory enforcement[16] because it “should be kept in the confines of the media”.[17] As a result, so the reports go, the Code should be dismissed because “statutory enforcement would make it no longer free or independent”.[18] One may only assume that by “it”[19] the reports refer to the media in general, despite the confusion in context.

Finally, Mthombothi argued that journalistic plagiarism is detrimental to the credibility of the publication in question[20] and constitutes a breach of trust between the journalist and his/her editor,[21] who is usually only informed of plagiarism by the original author.[22] As a result, Mthombothi suggested that institutions of tertiary education should include plagiarism in the curriculum.[23]

Fortunately, some institutions consider plagiarism as something more than a “vexing topic”[24] and may therefore provide some, clearly overdue, guidance to the media.

Defining plagiarism

Locally, plagiarism is defined as the “use of the ideas, material and other intellectual property of others that are passed off as one’s own”,[25] and clearly covers a wider range of conduct than simple copying without citation.

Plagiarism may take a variety of forms, ranging from explicit copying to negligent manipulation of original text or work, and may be divided into three categories: the reproduction offences, the review offences and the quotation offences.[26]

The reproduction offences include the most obvious cases of verbatim (or lifted) text as well as the blended representation of copied text interspersed with original words, phrases, synonyms or omissions without giving due credit to the source.

The review offences include the most common forms of plagiarism: shallow paraphrasing and inspiration paraphrasing. Both instances of plagiarism involve the condensation of another’s work by reproducing the substance of the original text in abridged or amended form. The fact that the author has expended significant skill or effort to recapitulate the original work will make no difference.

Shallow paraphrasing occurs where the author indicates the source of information, text or ideas (usually with reference to the name of the first author) but then proceeds to reproduce portions of the original text verbatim or by replacing only selected key words or phrases.

Where the author manages to produce a digest, abstract or redrafted version of the original work in a new format, but fails to acknowledge the origin of the underlying idea, inspirational plagiarism is committed.

The quotation offences address all instances of negligent drafting or inadequate research where the author plagiarises despite the use of quotation marks or citations. The reproduction of original text in quotation marks will not survive the test for plagiarism if the quotation is not immediately followed by a citation of the first source. Therefore, reproducing a quotation from within an existing quotation would also constitute plagiarism where the first original author is not acknowledged. Similarly, where such a secondary quotation is incorrectly referenced or cited from a source that no longer exists, the attempted quotation is of no consequence and the author guilty of direct plagiarism from the second author’s work.

Dealing with plagiarism

Among academics the misappropriation of intellectual endeavour is considered the highest form of betrayal, and will always lead to disciplinary measures.

The ethical transgression that plagiarism (in whatever form) represents to scholars is considered inexcusable and a most effective form of career suicide. For academics and students alike, the maxim ignorantia iuris non excusat (ignorance of the law is no defence) applies to all cases of plagiarism while ignorare leges est lata culpa (ignorance of the law constitutes gross negligence) is usually the basis for dismissal, the forced surrender of a degree, loss of study credit or expulsion.

While the level of veracity that is demanded of scholars remains high, it is to be expected that a similar approach to plagiarism may be inferred from the journalistic integrity our media often professes and that each member of the press will be intimately familiar with the nature of plagiarism. Furthermore, if the press is indeed inexpert of plagiarism perhaps the practice of an institution-wide, binding plagiarism policy should be adopted similar to those applied at Universities everywhere.

Certainly, if the media has any hope of staying off the (rapidly approaching) statutory regulation of the press it should avoid calling on Government to define a fundamental principle of their core business. Unfortunately, the manifest lack of education on plagiarism in the media does not illustrate its ability to maintain a self-regulating regime.

The intellectual property issue

Thus, while plagiarism is certainly a “very traumatic thing”,[27] it is NOT a criminal offence and therefore not without more within the jurisdiction of any police service.

The common law crime of theft requires that another person permanently deprive the owner of possession and/or use of his corporeal property with the intention to appropriate such property into his estate.[28] Therefore, since ideas, words or sentences are incorporeal things (without a physical presence in the material world) they are not capable of being stolen. Furthermore, since plagiarism by default entails the reproduction of text, the original author is not dispossessed of ownership. The fact that plagiarism may deprive the first author of the financial or other value derivable from his work does not alter the position.

However, while criminal law does not apply to plagiarism, in some cases it may result in judicial proceedings on another basis.

The principles of copyright law dictate that production, attempted or actual sale or hire, distribution or dealing in any infringing material will constitute a criminal offence, provided that the person was aware of the fact that the work was (or contained) infringing material.[29]

Therefore, where an author commits intentional plagiarism and proceeds to deal in that work the elements for criminal copyright infringement (and not theft) are met. The inclusion of attempted use[30] in the Copyright Act therefore excludes the defence that no real income was generated by the infringement.

Furthermore, each instance of infringement is punishable by 3 years imprisonment and/or a R5000 fine (for a first offence)[31] or 5 years imprisonment and/or a R10 000 fine in the case of a further offence.[32]

In the case of journalistic plagiarism, the editor who bears knowledge of plagiarism will be liable in addition to the journalist(s). However, since the Act requires actual knowledge of copyright infringement, the doctrine of vicarious liability will not extend to the editor who was not alarmed (however negligently) to the presence of plagiarism.

However, the criminal provisions of the Act are seldom applied to instances of plagiarism for the simple reason that copyright infringement will only occur where a substantial part of the original work has been reproduced.[33]

This does not require verbatim plagiarism, but merely that a sufficient portion of the original work be reproduced. The test for a substantial reproduction refers to the quality (contextual merit) of the reproduced part(s) over and above the quantity of copied content.[34] A journalist may therefore be guilty of infringement where she copies only one key phrase from another but fails to properly acknowledge the source.

Fortunately, plagiarism in the media (and elsewhere) may also lead to criminal copyright infringement where no direct reproduction occurred. On occasion, the Court has held that a substantial part of the work would be reproduced where a detailed, original combination of ideas are borrowed from the original text.[35] This would of course render most cases of inspiration plagiarism an offence, especially where a member of the media lifts a story from another source.

The final word

Trust – it is indeed lamentable that the media considers the credibility of its sources as the first line of defence against journalistic plagiarism, while it is content to hide behind journalistic privilege to defend its pronouncements.

However, it is not unreasonable to assume that the reader will trust that his morning paper was produced by some journalist’s sweat of the brow. Unfortunately, it is increasingly obvious that the journalist in question did not always intend for his work to appear in that particular publication. And mind you – remunerating the first author or publisher does not change plagiarism into journalism.

It is easy to establish more than one instance of plagiarism in every issue of every newspaper on sale today, and clearly no degree of rigorous self-regulation is equipped to eliminate this heinous practice while the media admits to a rudimentary (and largely erroneous) understanding of plagiarism.

Of course, the press will be swift to counter with an argument involving restraints of time and resources. However, “nowadays [journalists] don’t even have to go out of the office”[36] to collect information for an article. Therefore, one may reasonably expect someone to spend at least some time doing more than press Ctrl+C, Ctrl+V, print.

[1] The South African Press Code (the Code) Section 1.8. Available at http://www.presscouncil.org.za/pages/press-code.php.

[2] Available at http://www.timeslive.co.za/local/2012/01/30/press-code-doesn-t-address-plagiarism.

[3] Avalaible at http://www.pretorianews.co.za/press-code-doesn-t-address-plagiarism-1.1223103.

[4] Available at http://mg.co.za/article/2012-01-30-plagiarism-oversight-prompts-press-code-concerns.

[5] Available at http://www.news24.com/SouthAfrica/Politics/Editor-Plagiarism-not-properly-defined-20120130.

[6] Available at http://www.businessday.co.za/articles/Content.aspx?id=163680.

[7] Available at http://www.namibian.com.na/news/full-story/archive/2012/january/article/south-african-press-code-doesnt-address-plagiarism/.

[8] Times Live 30/01/12 Press code doesn’t address plagiarism para 10. Available at http://www.timeslive.co.za/local/2012/01/30/press-code-doesn-t-address-plagiarism.

[9] Times Live Supra para 1.

[10] Times Live Supra para 2.

[11] Times Live Supra para 8.

[12] Times Live Supra para 2.

[13] Times Live Supra para 3.

[14] Supra

[15] Times Live Supra para 4.

[16] Supra

[17] Supra

[18] Times Live Supra para 5.

[19] Supra

[20] Times Live Supra para 9.

[21] Times Live Supra para 12.

[22] Times Live Supra para 7.

[23] Times Live Supra para 10.

[24] Times Live Supra para 1.

[25] Stellenbosch University SU policy on academic integrity: the prevention and handling of plagiarism Calendar 2012 Part 1: General para 5.2.1 p274

[26] This categorisation of plagiarism is the author’s own. For alternative classifications see: Harvard University What constitutes plagiarism? Available at http://isites.harvard.edu/icb/icb.do?keyword=k70847&pageid=icb.page342054; Princeton University Examples of Plagiarism. Available at http://www.princeton.edu/pr/pub/integrity/pages/plagiarism/.

[27] Times Live Supra para 8.

[28] For a discussion of theft see; Burchell J and Milton J 2002 Principles of Criminal Law 2ed Juta 540 et seq.

[29] The Copyright Act 98 of 1978 s27(1).

[30] S27(1)(b) refers to “offers of exposes for sale or hire”.

[31] S27(6)(a).

[32] S27(6)(b).

[33] This requirement is implied by s1(2A) of the Act. For a discussion of the substantiality requirement see also: Klopper H et al. 2010 Law of Intellectual Property in South Africa LexisNexis para 27.2.2 p202.

[34] Dean OH 2006 Handbook of South African Copyright Law Service 13 Juta 1-37 – 1-38. This was confirmed by the Supreme Court of Appeal in Haupt t/a Softcopy v Brewers Marketing Intelligence (Pty) Ltd 2006 (4) SA 458 (SCA).

[35] Galago Publishers (Pty) Ltd v Erasmus 1989 (1) SA 276 (A) 290H.

[36] Times Live Supra para 14.

Cobus Jooste

Major sports are big business and vast sums of money are involved in staging sport events.

This global trend was brought into sharp focus in South Africa during the 2010 FIFA World Cup, which provided an excellent example of the role that branding plays in major sports, both generally and more especially in South Africa., explains how best the law can be applied to benefit everyone involved.

A long established organisation, the Federation Internationale de Football Association (FIFA) has developed a very clear policy for protection of brands relating to the tournament. This has come to the fore more and more in recent years, especially during the 2010 FIFA World Cup.

FIFA adopts and protects several different categories of brands in connection with the World Cup. There are various generic brands which apply to its activities in general and to every World Cup, such as the mark FIFA, and the representation of the World Cup trophy. There are also brands which denote the particular tournament itself, such as GERMANY 2006 and SOUTH AFRICA 2010. Then there are event specific brands such as the official emblem for each World Cup, the official mascot for the tournament, and the name of that mascot. In the case of South Africa 2010, the official mascot was ZAKUMI.

Trade mark registration
At the forefront of FIFA’s programme to protect its brands is the registration of trade marks. Generic trade marks, such as the mark FIFA, have been registered in South Africa for many years in respect of a wide range of goods and services and consequently no special steps were necessary to prepare for the staging of the 2010 tournament.

FIFA registered the trade marks SOUTH AFRICA 2010 and WORLD CUP 2010 in a wide range of classes. For the event’s specific marks, FIFA registered the official logo, the so-called FOOTBALL PLAYER & DEVICE mark, the word ZAKUMI and the MASCOT DEVICE mark in an extensive range of classes. The official logo was the principal event-specific mark and required the most comprehensive protection possible. In addition to registration as a trade mark, the official logo was also registered as a design under the Designs Act in several classes.

For the 2006 FIFA WORLD CUP in Germany, FIFA also registered, or sought to register, various trade marks designating the event. Registration of all of the marks was sought for an extensive range of goods and services. Some marks were refused by the German Federal Supreme Court on the basis that they were basically descriptive of the event itself and therefore non-distinctive.

The South African experience
In South Africa, interestingly, the corresponding marks, such as SOUTH AFRICA 2010 and WORLD CUP 2010, were allowed to proceed to registration by the Registrar of Trade Marks without any objection from any third party, notwithstanding the decisions which had been reached by the European tribunals. South African trade mark law and the European laws are very similar on the question of the non-registrability of descriptive marks and it would have made sense that the South African marks would have suffered the same fate, or at least that they would have been the subject of objections. European counterparts. As it happens, the 2010 FIFA World Cup came and went without a single challenge to these marks, despite the fact that they were relied upon for purposes of the enforcement of FIFA’s rights in their marks.

The Merchandise Marks Act, 1941, contains a provision, in Section 15, which allows for the Minister of Trade and Industries to prohibit the use of certain marks. FIFA relied on this provision and made application to the Minister of Trade and Industry for the prohibition of a wide range of World Cup marks. The minister duly issued a notice prohibiting certain of the marks for which protection had been sought, but the protection was made subject to such convoluted and stringent conditions that no efforts were made to enforce any rights under that notice. The minister’s attitude in this regard was strange since on previous occasions marks such as the OLYMPIC SYMBOL and designations of other sports events have been granted protection virtually unconditionally. It is possible that the minister thought FIFA was overreaching itself in the degree of comprehensiveness of the protection that it was seeking for its marks, particularly given the wide range of trade mark registrations which had simultaneously been sought.

Passing-off
The common law remedy of passing-off also provided FIFA with a vehicle for protecting its marks. The enormous publicity attached to the staging of the 2010 World Cup undoubtedly established a strong and significant repute in FIFA’s various trade marks connected with the event. This repute, and the goodwill flowing from it, provided an ample platform for FIFA on which to make passing-off claims where other parties used marks wrongly, suggesting an association between goods/services to which they were applied and the tournament, without FIFA’s authority.

A finding that such a repute had been established was made in the case Federation Internationale de Football Association (FIFA) v Metcash Trading Africa.

FIFA’s ability to rely on passing-off was considerably fortified by an earlier case that it had brought in South Africa in 1994 during the time of the FIFA World Cup held in the USA. In that case, FIFA had successfully claimed passing-off against a clothing manufacturer which had marketed clothing bearing the trade mark “WORLD CUP” at the time of the staging of the event in the USA.

Even at that time, FIFA was able to satisfy the court that the term WORLD CUP denoted a trade connection with itself. This case was of great significance at the time because in an earlier case the court had held, in dealing with the phenomenon of so-called “character merchandising”, that there was no reason to suppose that the public would associate, for instance, a restaurant trading under the mark DALLAS with a television series having the same name.

The court thus refused to accept that the practice of “character merchandising” was established in South Africa. FIFA was able to overcome the court’s unwillingness to recognise this phenomenon and to satisfy the court that the use of the trade mark WORLD CUP in the given circumstances was likely to cause the product in question to be presumed to have a trade connection with FIFA and the football tournament.

The Trade Practices Act contains a provision which, in the context of major sports events such as the FIFA World Cup, effectively amounts to a statutory form of passing-off that is subject to criminal sanction. FIFA also relied on this provision to protect its trade marks connected with the 2010 FIFA World Cup. Although it and Section 15 of the Merchandise Marks Act are criminal provisions creating no civil law remedies, FIFA successfully used an unlawful competition argument to create a civil law cause of action arising out of the criminal statutes. The cause of action is based on the principle that when a party commits a criminal offence, it objectively acts unlawfully and, if that unlawful conduct causes damage to another party, that party has a claim in delict based on unlawful competition.

Ambush marketing
FIFA and other organisations owning event marks could also derive assistance in protecting their marks from the quarter of the Advertising Standards Association (ASA), a voluntary body constituted by the advertising industry. It has an Advertising Code of Conduct and, as an adjunct to it, a “Sponsorship Code”, which reads as follows: Ambush Marketing is the attempt of an organisation, product or brand to create the impression of being an official sponsor of an event or activity by affiliating itself with that event or activity without having paid the sponsorship rights-fee or being a party to the sponsorship contract.

The provisions of paragraph 3.7 of the Sponsorship Code are essentially similar to Section 9(d) of the Trade Practices Act and amount in reality to a codified form of passing-off relating particularly to major sports events. Breaches of these ASA Codes are enforced by various committees constituted by the ASA and a recalcitrant transgressor of the Sponsorship Code can be faced with an embargo on all its advertising imposed by the members of the ASA, which includes all the media and the printing industry. Such an embargo can have a far-reaching effect and penalty for a recalcitrant advertiser.

Artistic works
Finally, the official logo of the 2010 FIFA World Cup, as well as the appearance of the official mascot, constitute “artistic works” for purposes of the Copyright Act. Unauthorised reproduction or adaptation of these works can constitute copyright infringement, which is a useful form of protection in the context of a major event.

The same considerations apply, of course, to any mark which constitutes a literary or an artistic work for purposes of copyright law. Copyright infringement in respect of the official logo was in fact relied upon by FIFA in the build up to, and during, the 2010 FIFA World Cup, particularly at a time prior to the corresponding trade mark being registered.

FIFA thus had, and used, a strong armoury of IP weapons at its disposal to protect and capitalise commercially on its branding during the 2010 FIFA World Cup. The commercialisation of the brands connected with the tournament contributed substantially to the tournament being enormously successful in all respects, and particularly from a financial point of view.

Proper utilisation of the law
It’s apparent that South African law grants effective protection for sports brands, provided it is properly utilised, as was the case with the 2010 World Cup. This requires a proper understanding of the nature of brands in the field of sports and a considered approach to using the law and the facilities that it makes available to the best and fullest extent. However, sporting bodies and administrators appear to lack a proper appreciation of how sport fits into the intellectual property sphere and fail to adopt well planned strategies to maximise the value of intellectual property, and more particularly trade mark law, in protecting their valuable brands to the fullest extent. This unfortunate state of affairs appears also to extend to Government as well and its thinking is somewhat muddled on the issue.

All parties involved should understand that the administration of professional sport and the staging of major sporting events are big business and they should be treated like any other enterprise in the context of intellectual property rights. Sports brands are valuable items of property and should be treated as such. The example of FIFA and the 2010 World Cup should be salutary and its intellectual property rights protection campaign should be used as a template. When that stage has been reached sport and branding will come properly into its own.

Prof Owen Dean

In the past sport was a recreational pastime and it was played for pleasure and, on an international level, for the honour of one’s country. Sportsmen and women took part in sport on a voluntary basis. Times, however, have changed and most major sports are now played at top level on a professional basis. Major sporting stars receive very substantial incomes for plying their trade. Major sports have now become big business and vast sums of money are involved in staging major tournaments.

In the light of the fact that sports, sports events and sportsmen and women have become business enterprises it is not surprising that trade marks and brands have entered into, and become a feature, of the sports environment. Brands manifest themselves in the sporting environment in basically two ways, namely through sponsorships where sponsors of major sporting events, teams and the like use their involvement in order to gain publicity and prestige for their own brands, and through sporting enterprises adopting and promoting their own brands. It has become commonplace for sportsmen and women, sports teams, major event organisers, and even national sporting bodies, to adopt their own brands in order to identify a trade connection between themselves and their enterprises, and to distinguish their sporting manifestations from similar manifestations of others. These brands take the form of word trade marks, often the names of famous individuals, and/or logos which create a visual symbol of the sporting enterprise.

South Africa is very representative of the trends described above and this all came to a head, and was brought into sharp focus, by the 2010 FIFA World Cup held in South Africa. The FIFA World Cup is the world’s major sporting event and the circumstances of this event provide a good example of, and insight into, the role that branding plays in major sports, both generally and more especially in South Africa.

Full Text (Abridged)

This is an abridged version of the article as published in the quarterly Global Sports Law and Taxation Reports, March 2012 (41).

Full Text (GSLTR)

In recent news, the TAC (Treatment Action Campaign) has called on government to revise the Patents Act to reduce the patent protection available to pharmaceutical inventions, which the organisation believes is responsible for the high cost of medicines and a delay in the availability of generic medicines.

The organisation refers to the Doha Declaration, which has been signed by South Africa as a member of the World Trade Organisation, to support its call.

“Government has not yet been proactive in utilising these mechanisms”

There is no denying that the impact of diseases such as HIV/AIDS, tuberculosis and malaria on developing countries, including South Africa has been devastating. However, amendment of the Patents Act is not necessarily the best or more efficient way forward to deal with this health crisis. In fact, there are already mechanisms in place in both the Patents Act and the Medicines and Related Substances Control Act which address the very concerns raised in the Doha Declaration and provide mechanisms for government to step in and ensure affordable medicines. The problem is that government has not yet been proactive in utilising these mechanisms.

The Doha Declaration, which was signed in 2001, provides that member countries are not prevented by membership of the TRIPS Agreement from taking measures to protect public health and that the TRIPS Agreement can be interpreted to protect public health and to promote access to medicines for all. Certain mechanisms for doing so are set out in the Doha Declaration including: the right of member countries to grant compulsory licences and the freedom to determine the grounds upon which such licences are granted; and the right to determine what constitutes a national emergency in order for the government to exercise its “walk-in” rights and an affirmation that HIV/AIDS, tuberculosis, malaria and other epidemics, can represent a national emergency.

The South African Patents Act has a number of sections which may be used by government (or other parties) to give effect to the measures described in the Doha Declaration in relation to the public health issues and access to medicines.

Section 4 of the Patents Act sets out that a Minister of State can use an invention for public purposes on agreed upon conditions, or if there is no agreement, on conditions as are determined by the Commissioner of Patents on application by the Minister and after hearing the patentee. There are no grounds stipulated here, merely that the invention must be used for public purposes. However, this section has not to date been utilised by the State.

Section 78 of the Patents Act sets out that a Minister may on behalf of the State, acquire any invention or patent on agreed upon terms and conditions. No grounds are stipulated, only that conditions must be agreed upon between the parties. Again, the State has to date not pursued such an acquisition of a patent or invention.

Section 56 of the Patents Act sets out the grounds for an applicant to be able to apply for a compulsory licence from the Commissioner of Patents in regard to a patented invention where there has been an abuse of rights by the patentee. This section in particular, pertains to the compulsory licence provisions provided for in the Doha Declaration.

“a lack of access to affordable medicine would meet the requirements for such a compulsory license application”

Of particular relevance to the issue of access to affordable medicines are subsections (1)(c) and (e). In specific, subsection (c) provides that a compulsory licence can be applied for in a case where the demand for the patented article in South Africa is not being met to an adequate extent and on reasonable terms. Our courts have indicated that “adequate extent” means sufficient for the needs of South Africa and that a lack of “reasonable terms” may be evidenced by public dissatisfaction with the prices. Although the decisions are made by the Commissioner of Patents on a case-by-case basis to award a compulsory licence, it seems that a lack of access to affordable medicine would meet the requirements for such a compulsory license application.

Although more limited in application, subsection (e) provides that an applicant for a compulsory licence may do so on the ground that the price of the patented article is excessive compared to country of manufacture where the demand for the patented article in South Africa is being met by importation but where the price charged in South Africa is excessive in comparison to countries where the patented article is manufactured and there is no good reason for the substantially higher price.

Despite these provisions, very few applications for compulsory licences have been brought to the Commissioner of Patents.

Furthermore, the Medicines and Related Substances Control Act in section 15C sets out measures which can be applied by the Minister of Health to ensure supply of more affordable medicines. Firstly, the Minister can, despite the provisions of the Patents Act, prescribe that certain rights of an owner of a medicine registered in South Africa are limited and do not extend to acts in respect of the medicine. In other words, acts of infringement by a third party when pertaining to provision of access to affordable medicines can be allowed by the Minister of Health in terms of this section.

Secondly, in a more limited provision, the Act also sets out that the Minister can prescribe conditions on which a generic medicine can be imported by a person who is not the holder of the registration certificate for a registered medicine. However, the medicine must have originated from the site of manufacture of the original manufacturer.

The reality is that amendment of legislation tends to be a lengthy process and depending on the quality of the drafting can often have unintended or unforeseen consequences. As indicated, there are a number of existing mechanisms that can already be used and I believe that government should be lobbied to be more proactive in putting these mechanisms to use to provide more affordable access to medicines, which would in turn be in keeping with our undertaking as a signatory to the Doha Declaration.

Dr Joanne van Harmelen

Spoor & Fisher

CIP – The Anton Mostert Chair of Intellectual Property

Can Food Recipes be Patented in South Africa?

Defining plagiarism

Dealing with plagiarism

The intellectual property issue

The final word

Latest Posts

Notice