A Prince by any other name…

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When Prince Rogers Nelson passed away on 26 April 2016 at age 57, fans mourned, musicians paid tribute and radios around the globe played the classic hit “Purple Rain” on high rotation. Prince was without a doubt one of the biggest music and fashion icons the world has ever seen, known for his eclectic work, flamboyant stage presence, extravagant dress and make up and wide vocal range.

But no icon is immune to the law – Prince encountered some difficulties relating to the artistic and financial control of his intellectual property during his life and it appears that he did not have his affairs properly in order at the time of his death. This is significant because Prince was not only a musical genius but also an artist and inventor. Prince was responsible for the below keyboard design and filed a US design patent in respect thereof, which expired a few years ago.

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In 1993, Prince famously appeared in public with the word “slave” written on his cheek after a dispute with Warner Bros. over the artistic and financial control of his music. He released the following statement to the media: “The first step I have taken toward the ultimate goal of emancipation from the chains that bind me to Warner Bros. was to change my name from Prince to The Love Symbol. Prince is the name that my mother gave me at birth. Warner Bros. took the name, trademarked it, and used it as the main marketing tool to promote all of the music that I wrote. The company owns the name Prince and all related music marketed under Prince. I became merely a pawn used to product more money for Warner Bros…”. “The Artist Formerly Known as Prince” was referred to as “The Love Symbol” until his contract with Warner Bros. expired in 2000 when he reverted to his birth name. The Love Symbol logo remained a significant part of Prince’s brand – he used the logo on his album artwork and continued to play a guitar in the shape of The Love Symbol. Interestingly, Prince returned to Warner Bros in 2014.

Prince and/or his legal representatives seemed to neglect the maintenance of his trade mark registrations. Consider this unusual timeline: Prince filed a trade mark application in America for his name in 1996 in respect of clothing goods and entertainment services. However, this trade mark was allowed to lapse in 2004. In 2005, Prince instructed a different law firm to re-file the application which also lapsed in 2013. In 2014, Prince enlisted the services of yet another law firm to file the trade mark application again. This application has recently been scheduled for publication. Prince also obtained protection for his Love Symbol logo in 2014 in respect of sound recordings and videotapes featuring music and entertainment, posters, publications, bumper stickers and stickers, clothing and entertainment services. These trade mark registrations remain in force today.

A more complex issue is who controls Prince’s likeness and image. Minnesota, where Prince spent most of his life, has no law allowing family members to inherit the right to control or license someone’s image. In Prince’s case, this “right of publicity” could be worth millions of dollars – this right includes control over Prince’s hair styles, outfits, big shoes and the motorcycle for which he became so well known. It appears that Minnesota state courts could recognize the right to publicity but Prince’s family would have to approach the courts in order to be granted this right and it is not certain that they would be successful in their claim, especially given that there is no precedent.

It was recently revealed that Prince did not have a will when he died. This means that the ownership of his intellectual property will be called into question. Prince’s musical compositions and lyrics and his artistic work, such as The Love Symbol, are protected by copyright. In the US, copyright protection subsists in an artist’s work for his lifetime plus an additional 70 years. If Prince had personal ownership of his work, his copyright would vest in his heirs for another 70 years. However, at this stage, it is uncertain who Prince’s heirs are. The media has speculated that Prince’s estate totals more than US$300 million, so it’s no wonder that more than 700 people are suddenly claiming to be related to Prince. Where there’s a will, there’s a way…

Kim Rademeyer – Partner
kim@rademeyer.co.za

Want to know more about the author? Read her “Me in a Minute” blog post.

Keeping Up With The Kylies

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Doing the locomotion to Kylie in 1986 is so far removed from applying the nail varnish Wear Something SPAR-Kylie in 2016. Which Kylie does the locomotion and which Kylie offers nail varnish? Is it Kylie Minogue or Kylie Jenner? That is the problem that the US Patent and Trade Marks Office (USPTO) now faces because Kylie Minogue (pop Kylie) has filed a Notice of Opposition to Kylie Jenner’s (reality Kylie) attempts to trade mark variations of her name Kylie in the battle of Kylie vs Kylie.

“What’s in a name?” one can ask… The Notice of Opposition filed by pop Kylie has listed the many ways in which her variations of the name KYLIE have been trade marked since 2003 and the many products produced by her. Her trade marks allegedly cover musical recordings, clothing, wallets, wristwatches, perfumes, body oil, essential oils, skin moisturizers, candles, bubble bath, bath salts, hand soap, hair gels, hairsprays and hair colours.

On the other hand, reality Kylie is seeking protection for the term KYLIE in connection with entertainment services. The application was published for opposition in August last year.

In opposing the application pop Kylie has claimed that if the USPTO approved reality Kylie’s application it would cause confusion amongst consumers between the two Kylies and dilute pop Kylie’s brand. In the opposing papers pop Kylie said that reality Kylie is a “secondary reality television personality”. This statement surely shows that pop Kylie hasn’t really been keeping up with the Kardashians, now has she?

So, who should own the name Kylie?

If you start typing Kylie into Google will you first be met with Kylie Minogue or Kylie Jenner?

Pop Kylie has been in the entertainment industry since 1979 and launched her first album “KYLIE” in 1988. Her hit “The Locomotion” went to No. 3 on the Billboard Hot 100 and she won a Grammy for the song “Come Into My World”. She also owns www.kylie.com and has sold more than 80 million records.

Reality Kylie is one of the most followed individuals on social media and has brought out new nail varnish named “Wear Something Spar-kylie” and “Rain in the S-kylie”. And of course she stars in the reality series Keeping Up With The Kardashians.

It is open to question as to whether the name or likeness of a famous person can be capable of distinguishing in relation to goods. The merchandise is bought not because it comes from a particular source but simply because it carries the name or likeness of a famous person. It is submitted however that if the person concerned has embarked upon his/her own programme of licensing his/her name or image in relation to goods and through use of the mark has established an extensive character of his/her name or likeness to the mark it will in fact be capable of distinguishing and be registrable as a trade mark.

Pop Kylie has had many years of use of the mark KYLIE and the goods and services that she offers thereunder have become synonymous with the word Kylie. However, should reality Kylie be given the benefit of the trade mark and her own name and the rights attached thereto in relation to the services i.e. entertainment with which she has become associated?

The USPTO has a difficult task before it, considering the notoriety of the two Kylies. We’ll let you know the outcome as soon as we do, in the next episode of Keeping up with the Kylies.

Kim Rademeyer – Partner
kim@rademeyer.co.za

Want to know more about the author? Read her “Me in a Minute” blog post.

Should I share my GIF?

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GIFs, or graphic interchange formats, are widely used. GIF, according to the format’s creators is pronounced “jif”, after the American brand of peanut butter – a contentious issue however, with many, including the White House weighing in on the debate and insisting that it should be pronounced with a hard “g” as in “graphic”. Regardless of your stance on the pronunciation thereof, you have probably encountered GIFs at some point. GIFs are particularly popular on social media platforms with Facebook and Twitter now having dedicated GIF buttons.

An animated GIF is a video file which comprises a number of frames which can be played in a sequence to form an animation. Due to the file’s small size, the resulting animation is usually quite grainy but is easily shared. The animation has no audio and can loop endlessly or stop after a few sequences.

GIFs often reproduce short extracts of films, sporting events or other copyright protected material. In some instances, GIFs include overlying captions which make them look somewhat different from the original work.

With the ever increasing popularity of GIFs and the ease with which one can now upload a GIF onto social media platforms and share them – is it legal to make and share GIFs of copyrighted material on the internet?

While this matter has not yet come before a court, some copyright holders have started enforcing their rights over video content that has been replicated using GIFs. While no legal action has yet been taken, Barclays Premier League has warned fans not to post unofficial videos of soccer goals online as this amounts to copyright infringement. They are even in the process of developing technologies to detect when GIFs of this kind have been shared in order to protect their copyright. The NFL (National Football League) in the USA has also sent several takedown requests to Twitter for certain tweets which included GIFs of clips of plays, highlights and blunders during a football game – all being copies of recorded events.

Is it Infringement?

In South Africa, copyright law is governed by the Copyright Act No. 98 of 1978 (“the Act”). While the Act has not yet been updated to deal with the use of copyright in an internet age, a copyright work of this kind would fall within the scope of a cinematographic film – a work which is protected by the Act.

When a GIF is created, a copy of the original work is made and in some instances, an adaptation of the original work is made. In the absence of any exceptions or consent from the author of the work, these acts infringe the copyright owner’s exclusive rights to the work accorded by the provisions of the Act.

Section 2 of the Copyright Regulations allows for reproduction of a work provided that certain provisions are adhered to:

‘The reproduction of a work in terms of s13 of the Act shall be permitted—

  1. a) Except where otherwise provided, if not more than one copy of a reasonable portion of the work is made, having regard to the totality and meaning of the work; and
  2. b) if the cumulative effect of the reproductions does not conflict with the normal exploitation of the work to the unreasonable prejudice of the legal interest and residuary rights of the author.’

The problem with this provision is that it is rather ambiguous. What exactly is meant by a “reasonable portion” of the work? It is conceivable that for a film, if enough of a significant or distinctive scene of that film is copied in a GIF, that it constitutes more than a reasonable portion of the work and therefore amounts to copyright infringement. Similarly for a sporting event, a GIF comprising a clip of a crucial goal could also constitute copyright infringement.

Are there any defences?

So what if the GIF does constitute more than a reasonable portion of the work or if you hit the share button one too many times and more than one copy is made? Are there any defences available?

The Act provides a limited number of exemptions from copyright infringement. In particular, it provides for fair dealing exemptions. These exemptions allow the public to make limited use of the copyright material without the consent of the copyright owner. Of particular relevance are the provisions of section 12(1)(b) and (c) of the Act in which copyright is not infringed if it is used for the purpose of criticism and review of that work or for the purpose of reporting current events.

In the case of a GIF which reproduces part of a protected work without modification (so that there would be no question that it is a parody), it is unlikely that the use of the GIF would be treated as a criticism or review or that it would be regarded as a report of current events.

For a GIF which may be considered an adaptation of the work i.e. when the GIF has an overlying caption or quotation, another defence may be applicable. Section 12(3) of the Act provides that copyright in certain works will be not infringed by a quotation taken from the work provided that “it compatible with fair practice, that the extent thereof shall not exceed the extent justified by the purpose and that the source shall be mentioned, as well as the name of the author if it appears on the work”.

Whether these GIFs can be considered quotations as envisioned by the Act remains to be seen. However, from a practical perspective, it may be difficult to adhere to and it is therefore unlikely that the acknowledgement requirement is fulfilled.

While not every GIF created or shared will fall foul of the provisions of the Act and amount to copyright infringement, it is wise to consider the content thereof before clicking that share button. GIF sharers should also be mindful that even sharing a link for a GIF of a movie or sporting event is still considered copyright infringement.

Even if you have been guilty of sharing a GIF which constitutes copyright infringement, it doesn’t necessarily mean that you will be facing a copyright infringement lawsuit anytime soon – the practical implications in enforcing these rights, particularly in respect of viral GIFs, are vast. You should however proceed with caution.

Hillary Brennan – Practitioner
hillary@mrf.co.za

Monty Rademeyer – Partner
monty@mrf.co.za

Want to know more about the author? Read her “Me in a Minute” blog post.

No Pets Allowed

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Sectional title living has grown in popularity for a number of reasons, including a heightened sense of security and affordability. Buying into a sectional scheme, however, has its advantages and disadvantages.

Unlike full-title ownership, where the owner is in complete control and is financially responsible for the property in its entirety, a person who invests in a sectional title scheme will own a part of the scheme. As a result, the person will need to comply with management and conduct rules as determined by a body corporate and, importantly for some, the body corporate may adopt rules relating to the keeping of pets.

The conduct rules annexed to the Sectional Titles Act, state the following;

  • An owner or occupier of a section shall not, without the consent in writing of the trustees, which approval may not unreasonably be withheld, keep any animal, reptile or bird in a section or on the common property.
  • When granting such approval, the trustees may prescribe any reasonable condition.
  • The trustees may withdraw such approval in the event of any breach of any condition prescribed in terms of sub-rule (2).

In other words, the ‘no pets’ rule is the default position for sectional title schemes, provided the trustees do not unreasonably withhold their approval if an owner or tenant applies for permission to keep a pet. Conditions under which that pet must be kept can be imposed and permission to keep the pet may be revoked if these are not met.

The conduct rules pertaining to a particular sectional title scheme can be altered from the standard rules by the body corporate. These new rules are filed with the Registrar of Deeds and all owners and tenants must comply. This enables, for example, absolute ‘no pets’ policies.

The following comments by Adam Civin and Ramon Pereira in the February 2015 issue of de Rebus clarify what this means:

In Body Corporate of the Laguna Ridge Scheme no.: 152/1987 v Dorse 1999 (2) SA 512 (D), the court held that where the conduct rules have not been amended by the body corporate (e.g. the default position applies), the trustees must apply their minds in considering an application from a pet owner. If the refusal is based on the application of a general policy or the desire to avoid creating a precedent, the court may set aside such a refusal. The reasoning is that, in applying their minds to the circumstances of each individual request, policy considerations does not come into play and the creation of a precedent cannot, in itself, be a concern.

On the other hand, if the conduct rules have been amended to include, for example a “no pet” policy, the matter becomes contractual.

Upon purchase of a sectional title unit, or signing a lease agreement to rent a sectional title unit, the purchaser, or tenant, agrees to these rules and is contractually bound to abide thereby. In this case, the Trustees are not obliged to consider an application by a pet owner.

In simple terms, a prospective buyer who would like to keep a pet should find out what the situation is before commiting to a purchase in any particular scheme.

If you are already an owner or occupier of a sectional title unit, it is wise to apply for written consent from the trustees to keep a pet prior to bringing the pet onto the property.

Robynne Zevenster – Practitioner
robynne@mrf.co.za

Monty Rademeyer – Partner
monty@mrf.co.za

Want to know more about the author? Read her “Me in a Minute” blog post.

How to cancel your Lease Agreement

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Gone are the days when the term “fixed” in “Fixed Term Contract” actually meant fixed.

Section 14 of the Consumer Protection Act (“CPA”), which came into effect in 2011, changed the way fixed term lease agreements are regulated.[i] The CPA, as the name suggests, protects consumers and gives them rights, which they did not have before. Explained below are some practical aspects of how the CPA will be applicable in your everyday lease agreements.

Duration of a fixed term agreement

The maximum duration that a lease agreement can be is 24 months. If a lease is for more than 24 months the agreement will be null and void, unless it is expressly agreed upon and the landlord can prove that a longer agreement is beneficial to the tenant. This means if your lease agreement is for more than 2 years it could be unenforceable.

Cancelling your lease agreement

In terms of section 14 of the CPA a consumer may cancel the lease agreement:

  • upon expiry of the lease, without penalty or charge; and
  • at any time during the contract by giving 20 business days written notice, subject to a reasonable cancellation penalty.

This means that irrespective of signing a 12 or 24-month lease agreement, the tenant may cancel the agreement for any reason by simply giving notice to the landlord, subject to a reasonable cancellation penalty.

What is a reasonable cancellation penalty?

The CPA does protect a landlord to some extent in that, when the tenant cancels a lease agreement prematurely, the landlord may impose a reasonable cancellation penalty. The question is what is a reasonable penalty?

Firstly, the penalty may not have the effect of negating the tenant’s right of cancellation. Thus it cannot be an amount equivalent to all the remaining monthly rent.

Regulation 5(2) to the CPA gives the following guidelines in determining a reasonable cancellation penalty, applicable to a lease agreement:

  • the amount for which the tenant is still liable to the landlord, up to the date of cancellation;
  • the value of the transaction up to cancellation;
  • the duration of the agreement as initially agreed;
  • losses suffered or benefits accrued by the tenant as a result of the tenant entering into the lease agreement;
  • the length of notice of cancellation provided by the tenant;
  • the reasonable potential for the landlord, acting diligently, to find an alternative tenant; and
  • the general practice of the relevant industry.

If the tenant cancels the agreement, the following costs would be claimable as a reasonable penalty:

  • the loss in rent income due to the property being unoccupied;
  • advertising cost in order to get an new tenant; and
  • any other actual loss suffered by the landlord.

The Regulations state the landlord must act diligently. The landlord must make a reasonable attempt to find a new tenant; he can’t just sit back and claim loss in rent income.

In determining a reasonable penalty all the above-mentioned factors will be taken into account and a value judgment would have to be made on what is reasonable in the circumstances. If the reasonableness of the penalty is in dispute the onus would be on the landlord to prove that the penalty is reasonable in the circumstances.

A tenant who exercises his cancellation right should insist on the landlord giving him a breakdown of how the cancellation penalty was calculated in order to assess the reasonableness of the penalty.

Minimizing the penalty

The problem is if you want to get out of your lease you might be liable for a cancellation penalty. There is however a way to prevent/minimize the cancellation penalty. This can be done by being proactive and helping the landlord find another tenant or giving a longer notice period, in order for the landlord to minimize his loss. It is thus possible to cancel the lease agreement without paying any penalty or, at worst, paying a small penalty.

Conclusion:

The CPA protects the tenant, where in the past if a tenant signed a fixed term lease agreement he would have been bound to fulfill that agreement. The CPA has paved the way for tenants to escape out of their unwanted lease agreement, without suffering a substantial financial loss. Although the CPA is not a “get free out of jail card” it does provide the modern tenant with far more protection than they had in the past.

[i] Section 14 is only applicable where the consumer is a natural person.

Kim Rademeyer – Partner
kim@rademeyer.co.za

Love Jozi Work Shop New Town launch

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No doubt you have heard about our fabulous client, Love Jozi? 

MRF were delighted to be invited to their new store opening which took place at the WORK SHOP NEW TOWN launch in Newtown Junction on 25 November 2015. Kristy West and Tiaan Calitz of our offices attended the launch and enjoyed the trendy industrial market concept offering more than 100 fashion, design and lifestyle brands under one roof. We congratulate Love Jozi on a successful launch thanks for inviting us to share in such a fun evening!

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Pandora Opens The Truworths Box

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THE LEGEND OF PANDORA’S BOX

Legend has it that the first woman, Pandora, was sent as a curse to Zeus’ men and was given a present upon her marriage. The present was a box that she was told never to open. Needless to say her curiosity got the better of her and she unleashed 8 demons into the world. The first 7 being the 7 deadly sins, and the last, which she managed to capture, was hope.

Recently, Pandora opened the Truworths box and they got themselves into a situation over which they had very little control.

BACKGROUND TO THE MATTER

Upmarket jewellery outlet Pandora who describes themselves as “purveyors of the finest collection of silver and gold jewellery ideal for your special moment” recently went head to head with clothing store Truworths Limited in the High Court in respect of the ESSENCE trade mark.

Truworths is the registered proprietor of the ESSENCE trade mark within South Africa but Pandora filed an application to cancel the ESSENCE trade mark from the trade marks register for non-use thereof by Truworths Limited. According to Truworths it has been the proprietor of the ESSENCE trade mark for the last 23 years. Pandora, however, alleged that ESSENCE was no longer being used by Truworths Limited in respect of the goods for which registration was obtained, i.e. jewellery.

LEGAL REQUIREMENTS

Under the South African Trade Marks Act 1993 “a registered trade mark may, on application, to the Registrar by any interested person, be removed from the register in respect of any of goods or services in respect of which it is registered, on the ground that at a date three months before the date of the application, a continuous period of five years or longer has elapsed from the date of issue of the Certificate of Registration during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods or services by the proprietor.”

Therefore, two criteria have to be met:

  1. there has to be a continuous period of five years or longer of use since the date of the issue of the Registration Certificate of a registered mark; and
  2. that there was no bona fide (genuine) use of the trade mark in relation to the goods in respect of which the registration was sought.

ARGUMENT IN COURT

Arguments for the removal of the ESSENCE trade mark centered around Pandora asserting that there was no use by Truworths of the trade mark ESSENCE in relation to the goods i.e. the jewellery in respect of which the registration was held. In terms of the Trade Marks Act “the application against the proprietor against whom it is being alleged is not using the trade mark has the onus to prove that they are still making use of that trade mark.” In this instance Truworths then had to prove that, at the date three months before the litigation started, it had been using its ESSENCE trade mark for a period of at least five years since the date of issue of its Registration Certificate and such use was bona fide.

In supplying proof, Truworths stated that the ESSENCE range fell under its formal range of clothing and could be found in selected stores and that it had been using the mark for twenty three years in respect of many of its garments which were clothing with a jewellery type appearance. The jewellery was attached to some of the clothing and could be detached and worn separately. The court was shown a white shirt with a detachable necklace and a stock sheet was presented showing that it had recently sold 305 of those garments. Pandora’s counsel argued that Truworths had not demonstrated that it had used the trade mark in relation to any commercially recognized category and that it was not used in respect of jewellery for which the registration was obtained. On the other hand Truworths indicated that while it did not use the trade mark exclusively for jewellery it was using it in relation to its clothing because the jewellery formed part of the garments.

JUDGMENT

The judge ruled in favour of Truworths indicating that jewellery was covered by the trade mark registration held by Truworths and the clothing chain was still using it and therefore the application for cancellation of the mark ESSENCE from the trade marks register was denied.

COMMENTS

It seems that when Pandora opened the box it had no control over the contents from the spill out from Truworths. However, it appears that the definition of clothing which falls into Class 25 has been stretched to include and encompass goods being offered in the jewellery class which falls into Class 14. Can it be said that jewellery and clothing are synonymous? Can clothing look like jewellery? Can 305 sales equate to continuous use for a period of five years? It is believed that these are questions that could have been explored more in depth by the court in its assessment of the facts before it.

CONCLUSION

However, what is evident is that it is essential for a trade mark owner to make use of its trade mark on an ongoing and consistent manner. Token use will not be sufficient and as a result one could then be fighting the opening of one’s own Pandora’s Box in defending an application for the cancellation of one’s registration.

Kim Rademeyer – Partner
kim@rademeyer.co.za

Copyright Amendment Bill 2015

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The Copyright Amendment Bill 2015, which aims to amend the Copyright Act 98 of 1978, has been published by the Department of Trade and Industry (DTI) for public comment. The DTI says the current policy revision is based on the need to bring the copyright legislation into line with the digital era and developments at a multilateral level.

Jeff Radebe, the Minister in the Presidency responsible for Performance Monitoring and Evaluation, who announced the approval of the publication of the Bill, stated that “The Bill addresses the licensing of copyright work and material in relation to commissioned work to prevent commercial exploitation”  and that the Bill “will help government to address the plight of musicians and performers by ensuring that royalties are paid on time by recording companies and broadcasters as most of them are dying as paupers.” However, while this sounds good in theory, a reading of the Bill exposes many errors, inconsistencies and far-reaching problems that are causing an uproar amongst industry experts.

Some of the more noteworthy proposed amendments are the introduction of a new class of works that will be eligible for copyright, namely “craft works”, such as pottery, jewellery and folk-art, a re-sale royalty right for artistic works, a “fair use” exception, which may only be used in limited circumstances, the management of digital rights and the introduction of a provision that purports to stop brand holders from restraining parallel imports through copyright infringement proceedings.

In principle, the Bill is a step in the right direction. There are some positive proposals such as provision for disabled people in that any translated or amendment of protected works for their purposes will not be considered copyright infringement, and the introduction of collecting societies for artists or owners of copyright.

However, the problems with the Bill far outweigh these positive developments. It has been submitted by industry experts that the Bill is badly drafted and difficult to understand. Further, it appears that basic principles of copyright law (and some other laws) and even the Constitution have been disregarded.

Some proposed provisions of the Bill are just absurd, such as the introduction of a provision that all copyright assignments shall be valid for only 25 years and the criminalisation of minor transgressions such as non-payment of a re-sale royalty to the original creator of a work, who may well be unknown to the purchaser at the time of the sale.

Possibly one of the most significant changes the Bill proposes is that the ownership held by individuals will automatically transfer to the state on their death. Not only is this provision unprecedented, the Bill does not indicate how this transfer will be administered. Surely depriving a person or their heirs of the benefits of a work is unconstitutional? Strangely, another part of the Bill prohibits the state from assigning copyright to anyone else – so the copyright can never be sold or exploited once it is transferred to the state.

It has been suggested that the Bill should be completely re-drafted – Professor Owen Dean, chair of intellectual property law at Stellenbosch University, believes that the Bill “displays a lamentable lack of knowledge and understanding of the basic principles of copyright law. While it has some good aspects, it is fundamentally so flawed that the DTI should go back to the drawing board and start afresh by using a drafting committee that has expertise in copyright law”.

Professor Dean warns that “if this Bill becomes law and the Copyright Act is amended accordingly, it will do inestimable harm, to our copyright law and will cause it to plunge into a freefall leading to decline”.

The public were given until 26 August 2015 to comment on the Bill. It is believed that a recent meeting facilitated by the South African Institute of Intellectual Property (SAIIPL) allowed for intellectual property practitioners in the Gauteng area to ventilate their concerns and discuss the far reaching and controversial implications of the Bill. We now await the passage of the Bill through Parliament but it may be a few years before we know whether the Bill will become law. Who knows, it may be referred to the Constitutional Court or even completely re-drafted. All we can do now is watch this space…

Kim Rademeyer – Partner
kim@rademeyer.co.za

Monty Rademeyer – Partner
monty@rademeyer.co.za

Sources:

  1. “HOT OFF THE PRESS: SA Copyright Amendment Bill published for comment” http://afro-ip.blogspot.com/
  2. “Copyright Amendment Bill approved by SA Cabinet” http://mybroadband.co.za/news/government/130406-copyright-amendment-bill-approved-by-sa-cabinet.html
  3. “Copyright Amendment Bill boggles legal minds” moneyweb.co.za
  4. “Converting Copyright into Copywrong” by Professor Owen Dean, published in Vol 2 Issue 2 of the SAIIPL newsletter, August 2015

Despicable Colours

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Minions – the mumbling yellow creatures that first appeared in the “Despicable Me” franchise, have become a phenomenon of their own, even earning them a starring role in the Universal Studios spin off film “Minions”. The films have been widely successful and Universal Studios has been careful to ensure that its success is secured as both Despicable Me and Minions are protected by way of trade marks and copyright. The trade marks cover a variety of products – ensuring that every piece of merchandise possible is protected.

Riding the wave of success these movies have brought, Universal Pictures and Illumination Entertainment have now joined forces with the Pantone Colour Institute (which define and standardise colours for use in industry world-wide), in the production of the very first character inspired colour – Minion Yellow.

According to Pantone, Minion Yellow “heightens awareness and creates clarity, lighting the way to intelligence, originality and the resourcefulness of an open mind – this is the colour of hope, joy and optimism”. This distinctive yellow colour can now be bottled up and used in your home as Minion Yellow is available in Pantone’s home and interior palate, so you too can experience the joy and optimism that this colour was developed to impart.

It remains to be seen whether Minion Yellow will be trade marked, to add to the arsenal of intellectual property protecting Universal Studio’s widely successful franchise. If Universal Studios does decide to trade mark Minion Yellow, it may not be all smooth sailing and like the plans of the despicable masters these Minions seek to serve, there may be a few obstacles along the way.

A particular shade of colour, often identified by the allocated Pantone number, can function as a trade mark provided that it uniquely identifies or distinguishes the origin of the particular goods or services to which the colour is applied. This does not however mean that a colour (in isolation) can be owned, as trade marking a colour simply gives the company or individual the right to use the colour in respect of those particular goods or services. Examples of successful Pantone trade marks include Coke Red (Pantone 484) as well a specific turquoise colour used by Heinz for its Baked Beans. The emerald green (Pantone 3298C) used by Starbucks (who is said to opening its first African store in Johannesburg next year) is also trade marked. Christian Louboutin was also successful in registering a trade mark for the unique red soles of the famous shoes.

However not all colour trade marks have been successful. In a long waged battle against Cadbury in the UK, Nestlè was successful in its opposition of Cadbury’s trade mark for Pantone 2685C, being the distinctive purple colour used on its chocolate packaging for more than 100 years. In Australia, the authorities recently upheld Woolworths’ objections to BP’s trade mark application for Pantone 348C, being the green used in much of its branding.

It will be interesting to see, given the relatively recent decisions rejecting colour trade marks, whether Minion Yellow would be allowed as a trade mark, thereby paving the way for the rise of character inspired colours. Perhaps “Shrek green” will be coming to a paint store near you.

Hillary Brennan – Practitioner
hillary@mrf.co.za

Monty Rademeyer – Partner
monty@mrf.co.za

To Copyright Or Copyleft? That Is The Question!

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The two most common types of licences are “copyleft licences” and “permissive free software licences”.

Copyleft licences require that information necessary for reproducing and modifying the software must be made available to recipients of the “executable” (geek terminology).  The source code files usually contain a copy of the licence terms and an acknowledgment of the author.  In terms of copyleft the author surrenders some of its rights under copyright law.  Instead of allowing the software to fall completely into the public domain, copyleft allows an author to impose some restrictions on those who want to engage in activities usually reserved by the copyright holder.  Under copyleft, derived works (eg. variations or developments of the registered software) may be produced provided the derived works are released under a compatible copyleft scheme.  The underlying principle is that a person can benefit freely from the work of others, but any modification, variation or modification of the original software made by the person must be released under compatible terms.

The goal of copyleft is to give all users of the software the freedom to copy, distribute and modify (adapt) without restriction.  Copyleft licences are distinct from other types of free software licences which do not guarantee that all “downstream” recipients of a program receive these rights, or the source code which is needed to make these rights effective.
A permissive free software licence is a class of free software licence with minimal requirements about how the software should be redistributed.  A permissive free software licence allows a redistributor to remove or restrict the right to copy, distribute or modify and does not necessarily require the free distribution of a source code.  Thus this type of licence makes no guarantee that future generations or versions of the software will remain free.

It is apparent that it is possible for a permissive free software licence to include a provision that makes it incompatible with a copyleft licence.  For example a permissive free software licence could include a clause requiring advertising materials to the credit of the copyright holder.

When an author contributes code to an open-source project the resulting software may be an explicit licence (eg. the contributor’s licence agreement) or an implicit licence (eg. the open source licence).  Some open-source projects do not take contributed code under a licence, but actually require (joint) assignment of the author’s copyright in order to accept code contributions into the project (eg. OpenOffice.org and its Joint Copyright Assignment Agreement).

It is difficult to understand the legal implications of the differences between licences.  With more than 180,000 open-source projects available and its more than 1400 unique licences, the complexities of deciding how to manage open-source usage within “closed source” commercial enterprises have dramatically increased.

Open-source licences are not necessarily compatible, making it legally impossible to mix (or link) open-source codes under different licences.

Licence compatibility is an issue that arises when licences applied to software packages contain contradictory requirements, rendering it impossible to combine source code or content from such works in order to create new ones.

Commercialisation of derived software incorporating FOSS may not be straightforward.  The primary business model for closed-source software involves the use of constraints on the use of proprietary software and the restriction of access to the original source code, requiring the user to purchase the right to use the software.  To this end, the source code to closed-source software is considered a trade secret by its manufacturers.

FOSS methods, on the other hand, typically do not limit the use of software in this fashion.  Instead, the revenue model is based mainly on support services.  The source code of the software is usually given away and can be freely modified.  There may be some licence-based restrictions on re-distributing the software.  Generally, software can be modified and re-distributed for free, as long as credit is given to the original manufacturer of the software.  FOSS based software can generally be sold commercially, as long as the source-code is provided.  There are a wide variety of free software licences that define how a program can be used, modified, and sold commercially (see GPL, LGPL, and BSD-type licences).

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