Monday 29 February 2016

Caroline B Ncube

Exceptional Authorship: The Role of Copyright Exceptions in Promoting Creativity - A seminar by Jane Ginsburg

[reposted from UCT's IP Unit website]
On the 24th of February 2016, the IP Unit hosted a CopyrightX:UCT special event and staff seminar at which Professor Jane Ginsburg of Columbia Law School presented a paper entitled ‘Exceptional Authorship: The Role of Copyright Exceptions in Promoting Creativity’ [available for download at SSRN]. The seminar was well attended and a lively debate followed Prof Ginsburg’s presentation. On the previous day Prof Ginsburg gave a guest lecture to LLB and LLM IP students during which she spoke about the reversion of copyright, which is  one of the proposals included in the Copyright Amendment Bill, 2015.
 
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Thursday 25 February 2016

Afro Leo

Slanted Trade Marks and Permitted Disparagement - Prof Alberts' Guest Post

Prof Alberts
Afro-IP is delighted to receive a guest post from Prof Wim Alberts on a recent decision out of the United States on the registration of potentially disparaging words as trade marks. If you like this post, don't forget that you can hear more from the Prof at his seminar in April.

Date: 5 April 2016
Time: 08:00 – 15:30
Venue: University of Johannesburg, Council Chambers, Madibeng Building, Auckland Park Campus
Attendance fee: R500
To register, please contact Mrs Morgan Buntting before 30 March 2016 – 
Download full event

Slanted Trade Marks and Permitted Disparagement

The Slants

Ex Americana semper aliquid novi.  This may be an apt description for the ruling of the United States Court of Appeal for the Federal Circuit in In re Tam, case 2014-1203, decided on 22 December 2015.  This 114 page decision makes for interesting reading for a South African in particular.  The casus belli simply was a trade mark application for THE SLANTS, filed in relation to entertainment in the nature of live performances by a musical band.  Section 2(a) of the Lanham Act prohibits, amongst others, the registration of disparaging marks.  Examples of marks that have been refused on this ground include:

STOP THE ISLAMISATION OF AMERICA

THE CHRISTIAN PROSTITUTE

DEMOCRATS SHOULDN’T BREED

FAGDOG

N.I.G.G.A. NATURALLY INTELLIGENT GOD GIFTED AFRICANS

Analogous “positive” marks that have been granted include:

THINK ISLAM

NEW MUSLIM COOL

MORMON SAVINGS

JEWISHSTAR

PROUD 2 B CATHOLIC

In the Tam matter, the Trademark and Trial Appeal Board refused the application for THE SLANTS as it was considered to refer negatively to Asian-Americans.  On appeal, the court stated the following on page 13:

“Although the term “slants” has several meanings, the panel found that substantial evidence supported the Board’s finding that the mark likely refers to people of Asian descent. This included an article in which Mr. Tam described the genesis of the band’s name by explaining: “I was trying to think of things that people associate with Asians. Obviously, one of the first things people say is that we have slanted eyes. . . Moreover, the band’s Wikipedia page stated that the band’s name is “derived from an ethnic slur for Asians.” The Wikipedia entry quoted Mr. Tam: “We want to take on these stereotypes that people have about us, like the slanted eyes, and own them. We’re very proud of being Asian—we’re not going to hide that fact. The reaction from the Asian community has been positive.”

Also noteworthy was Mr Tam’s statement that he named his band to “reclaim” and “take ownership” of Asian stereotypes.  Two important statements by the court were that strict scrutiny is used to review any governmental regulation that burdens private speech based on disapproval of the message conveyed. It was then held that section 2(a), which denies important legal rights to private speech on that basis, is such a regulation.  Accordingly, it is subject to strict scrutiny. It was said that it is undisputed that it cannot survive strict scrutiny (page 17).   Of particular importance though is the finding that the disparagement provision, which was held to discriminate based on disapproval of the message of a mark, is not content or viewpoint neutral.  Earlier (page 4) it was stated that it is a bedrock principle underlying the First Amendment that the government may not penalize private speech merely because it disapproves of the message it conveys. That principle, so it was said, governs even when the government’s message-discriminatory penalty is less than a prohibition.

The court mentioned that another rejected mark, STOP THE ISLAMISATION OF AMERICA, proclaims that Islamisation is undesirable and should be stopped.  The court also expressed the view that many of the marks rejected as disparaging convey hurtful speech that harms members of oft-stigmatized communities.  “  However, the First Amendment protects even hurtful speech” (page 4).  The important conclusion was reached that the part of section 2(a) that prohibits registration of “disparaging” marks was unconstitutional (page 4).


The question that immediately arises is what the impact of this decision will be on the famous WASHINGTON REDSKINS dispute, where the REDSKINS mark was expunged for being disparaging? There it was held in one of the various cases that a court must look at the views of Native Americans, not the general public(page 36)).  The basis of this decision is of course that the part of section 2(a) is constitutional.  In the Tam ruling the court stated that what the Patents and Trademarks Office does is to look at what message the referenced group takes from the applicant’s mark in the context of the applicant’s use, and it denies registration only if the message received is a negative one (page 22):

“Thus, an applicant can register a mark if he shows it is perceived by the referenced group in a positive way, even if the mark contains language that would be offensive in another context. For example, the PTO registered the mark DYKES ON BIKES…after the applicant showed the term was often enough used with pride among the relevant population.”

In a South African context, an outcome such as that in the Tam case would be unthinkable.  A plethora of legislation would see to that.  What would be interesting is how an “us” mark, that is, a mark filed by a particular disparaged group would be approached here.  Would the “reclaim” notion be accepted?  In the United States it would seem that an application filed by an outsider cannot be refused, as the disparagement bar no longer exists.  Therefore, even speaking as a non-American, one can perhaps predict that the Supreme Court will find grounds to overturn the ruling.

Professor Wim Alberts

University of Johannesburg
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Wednesday 24 February 2016

Afro Leo

Is IP a thread in Gordhan's Gordian knot? Comment

Gordhan
Over on Adams & Adams' IP commercialisation microsite "IP Live" blogger Darren Olivier provides a pre- speech comment on the Budget due to be delivered in about an hour in South Africa.

"This article entitled “What can we expect in Gordhan’s Budget” published by Independent Online and citing Bloomberg as author predicts a difficult speech for the Finance Minister who needs “must contend with dwindling revenue as commodity prices plunge, the worst drought in more than a century and slowing economic growth”.
There is of course no mention of intellectual property, a trade mark, copyright, patents, designs, brands etc so one would be forgiven for thinking that this is not about IP but you would also be mistaken if you thought that IP was not a component at all"
Read more about it here.
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Afro Leo

Vitriolic IP disputes - Mr Harris's rehabilitaton and the request to intervene by Fairhaven

Often, in the world of an IP attorney, solutions in litigation are limited to the area of law in which that IP attorney practises. For example, a patent dispute is normally resolved using the relevant legislation and a trade mark dispute normally involves the same, often with passing off thrown in too. Copyright is no different. Sometimes, there is a also a contractual dispute eg in theft of knowhow cases or use of companies legislation where company names are involved. Occasionally though, the dispute becomes more complicated either because the potential litigation traverses unique or different areas of law or because the IP attorney or his/her client wants it to or because his opponent does. A deliberate move into a "non traditional" form of litigation can often be extremely effective against a specialist IP litigator and his/her client but should be considered carefully.
 
disputed: www.fairhavenestate.co.za
In a recent case decided in the Cape High Court, we see an example of litigants using (and ultimately abusing) insolvency laws to resolve a domain name dispute. The letter below between litigants directly, disclosed by the court in rehabilitation proceedings for a certain Mr Dave Harris, reveals, quite alarmingly, both the frustration of litigation and the tactic:
 
Hi Dave
Hope all is well your side and that your health has improved. I have received your attorneys notice of withdrawal as attorney of record. He reminds me of the skipper on the Oceanos who made it to shore first when he saw that the tide had turned. Clever man, I will definitely be using him in future.
Dave, I have been keeping you fully informed of my actions from day one i.e
1) When you ‘stole’ the website, I told you that all I wanted was the website back or I would go to Brian Shaw (your curator) and fight ‘dirty’. I gave you a full copy of the documents and my reasoning that I would use to institute a 152 investigation. I did this as I did not want your money and did not want to fight. I wanted our website back. Your actions or lack thereof left me with no alternatives;
2) You gave me the middle finger and simply chose to ignore it. Your comments to certain of your staff was that it would just ‘create a bit of admin’ for you.
3) My repeated comments to you that the website is starting to cost you a fortune, fell on deaf ears. Even the blind could see that you had come to a gun fight with a water pistol with so much water that it could possibly keep you ‘in liquidation’ for a long time. If you dont settle we will ensure that you dont rehabilitate;
4) My last text to you on the 29 April in which I made it clear that you should pay our legal costs to date and return our website or else it would consume you, also fell on deaf ears. It was at this point that I started buying up the claims in your estate and realised that once I start spending serious money on claims any chances of a throwing you a life raft was over. At the moment the life raft that you holding onto is unfortunately tied to the Titanic with the captain having left by helicopter.
5) Your sneaky little move to try and rehabilitate before we could stop you was very feeble to say the least. Reading your application brought me to tears…. I thought I was reading the story of the Dalai Lama…. A good guy that had been handed a terrible hand. You should consider writing fairy tails and not commit your imagination to court papers;
6) I am in the final stages of negotiating the purchase of two more BIG claims in your estate that are going to cost you a fortune. I dont want to pay as much as I am about to but unfortunately they have come to realise that there might be some money in it for them. They are greedy…. Sorry I am trying my best not to blow more than another 5 million rand of yours on claims;
Looking at the crystal ball:
1) You will in all likelihood choose to ignore this email once again and hope that it goes away. It will not. This website will become your Bermuda Triangle. It will swallow everything you have and spit you out the other side… Please don’t ignore it;
2) If you don’t settle quickly, I am going to commit purchasing the next two large claims in your estate. I have got them down to 70 cents in the rand (you are welcome to use your stash and pay them a bit more and become my fellow creditor in your 152 enquiry…. You can ask yourself questions and answer them, which would be easier on you because you don’t have to ask yourself the difficult ones, I will ask those. At this point there will be no settlement at all and I will come for every last cent that you have. You have also spread so much negativity and false information that I will be left with no option but running a series of advertorials to rectify the situation. I am already thinking of the headlines…’Dave Harris spends his hidden treasure on a website’….’ Dave Harris web of deceit finally sinks him’… could be fun… or on Twitter ‘Twit overpays for website’.
My suggestion to you is as follows: (I am typing slowly)
1) Let’s settle this thing. I believe that your health has taken a turn for the worse that could possibly positively effect your judgement. Dont let this website become your epitaph www.fairHEAVENestates.now
2) Its costing you more and more daily….STOP IT
3) Even if you happen to get the website (which we don’t think will happen), you will be the loser….BIG time. We will use our gain on your estate to change Fairhavens name at YOUR COST;
4) We have put an offer to you that you must seriously consider. I cannot believe that after all this water under the bridge, you think it is remotely possible to continue at Somerset Lakes with Otto? Is it the nice Dave that works there? The bad one stole the website? We only know one leopard with one set of spots…. Let me once again tell you what I will be doing…. Your shareholding in Somerset Lakes is an asset in your estate. I will be bidding up to the amount of the shortfall in the claims that I will own (I intend to own about R7,8 million in claims shortly. Presently I only own R 1 million for that shareholding i.e I will be paying your estate, who will pay me out on the claims I have (less their 10% commission) I am even sure if I settle your curator his 10% commission he will net my offer and my claim off. I am not sure if Otto has a pre-emptive right on the shares? Possibly I will become Ottos partner…. exciting times;
A FINAL FINAL FINAL FINAL attempt at settling. I dont want to talk to you but dont mind if it will help to resolve the situation. I suggest that you sit with Otto and agree on a deal so that this utter madness can stop. I will be committing another approximately R 6 million of your money on Tuesday. I dont believe that it is too late to stop the ‘Slow train coming’ It has unfortunately cost you a fortune to date. It has the potential to cost you everything. Its in your ability to stop it. If you dont accept this generous olive branch, we will see you in court and I suggest you see a psychologist….and o yes… if you want me to send you the list of questions we will be asking at the 152 I will gladly do so…. You can take crib notes.
Your call….
THIS EMAIL IS SENT TO YOU WITHOUT PREJUDICE AND I RESERVE ALL OUR RIGHTS IN THIS REGARD IN TOTO “
This was followed by a series of threats by phone and through intermediaries.
Hi matey, I know that we no longer associate on a social basis but I’m sure you know why! I do however care about you and Carin. If you are even aware of today’s email from Dennis and the extent of the problem you should swallow your pride and consider it carefully. You and your dad have so picked the wrong guy to piss off. He is prepared blow millions just to get even with you. We really don’t want to see you guys burn. Think about yourself and Carin mate.”
 
If anyone still thinks that IP litigation cannot become vitriolic, they should think again. Ultimately the court found the tactic to be an abuse and ordered a punitive cost order against the litigant. Mr Harris successfully rehabilitated - though, one suspects, only in a legal sense.
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Tuesday 23 February 2016

Afro Leo

UJ Seminar - Presented by Dr Alberts - Don't miss it!


Click on pic for enlarged version


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Wednesday 17 February 2016

Afro Leo

Burundi signs up to Berne and WIPO Copyright Treaty

Burundi is the latest African state to accede to the benefits of Berne and WIPO's Copyright Treaty. These international frameworks provide greater protection for Burundi's local copyright works and send a positive message encouraging foreign direct investment. See notification from WIPO here.

"Graphic Arts. While people value the artistic expression of craftsmen, all the items they produce are functional as well as decorative. Baskets traditionally are woven by Tutsi women with the help of their servants. They are made from papyrus root, bast fiber, and banana leaves and are decorated with mud dyes in elaborate patterns. The baskets serve a variety of purposes, from water canisters, to carrying containers for the head, to storage vessels for food and seasonings. Other handicrafts include leather goods and ironwork, both of which are often decorated with geometric patterns similar to those used in baskets. Blacksmiths fashion spears for warfare and hunting, which are handed down from father to son. The Twa are famous for pottery, a tradition that dates back thousands of years."

Read more about Burundi: http://www.everyculture.com/Bo-Co/Burundi.html#ixzz40OZ4jUWo
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Wednesday 10 February 2016

Afro Leo

OAPI suspensions, Java decision, workshops and honours.

Prof Tana Pistorius is organising a workshop to be held in Pretoria on 14-15 April on the Patent Declaration - "The Patent Declaration was drafted by numerous academics worldwide under the leadership of Max Planck ... [which] mainly relates to TRIPS flexibilities... As part of this project workshops have been held in various countries to address the different themes. Panels are comprised of representatives from academia, government, the bench, practitioners and industry" There will be more on this in a later post as soon as we here more but the line-up looks great and topic, very relevant.

News just in from John Syekei in Kenya is that his firm has won the appeal in the Java case covered in Lita's #SandtonDiscussion last year. We look forward to more news on this in the coming days.

If you are in Midrand, South Africa, on 17 February and are interested in the role of the Companies Tribunal (responsible for adjudicating all company name disputes in South Africa), they are hosting a seminar on "Promoting a Culture of Resolving Disputes Through ADR" at the Gallagher Convention Centre. Contact Charmaine Wessels here for more information.

Woop! Woop! Afro-IP has appeared on the SiNApSE blog in part of their series aimed at uncovering the World's Best IP Blogs. Thank you to the ladies and gentlemen over in India for taking the time to make us one of their official "Honorees". If you have the time pop over to India on SiNApSE and check out the IP scene ever there.

Finally for today, much has been written and said on the suspension of two attorneys from OAPI. The excellent Tim Lince of WTR covers the development here following Afro-IP's post here:

"The African Intellectual Property Organisation (OAPI) has suspended two IP attorneys in Cameroon, and in turn prohibited parties from using their law firm for any IP services in proceedings before it, in what one of the lawyers contends to be a continuation of a bitter battle between the organisation and a group of agents who claim that it’s accession to the Madrid Protocol was implemented illegally."

Afro-IP reached out to Christian Dudieu Djomga who is a contributor and fellow blogger for comment. Christian remains frustrated echoing his comments to WTR that "..the official reason behind the suspension is because he, like others who have not been suspended, are represented more than once before OAPI but the real reason is his criticism of OAPI's accession to Madrid". He is already losing business after taking the stand. No doubt there is more to come on this story.
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Monday 8 February 2016

Caroline B Ncube

PAIPO & Agenda 2063


The operationalization of the Pan-African IP Organisation (PAIPO) is progressing slowly but surely within the unfolding of the AU's Agenda 2063. For details of this progress, see  the Paipo Watch where I  have been tracking PAIPO for the last few years. Much like bird watching in real life, this is a task that requires patience as (sometimes swift and not easily spotted) movement occurs once in while. Since I last blogged about PAIPO on Afro-IP in February 2015 (IP Policies in Africa no. 51 Tunisia)  several developments have occurred. The AU's Agenda 2063 has gained much impetus through the publication of the  First Ten-Year Implementation Plan 2014-2023 - (September 2015).The First Ten-Year Implementation Plan provides additional details to the broad plans for implementing PAIPO which were first stated in 2014 in the AU's Science, Technology and Innovation Strategy for Africa 2024 (see pp 36 and 39).
 This plan provides for the following steps for the implementation of PAIPO (at p66): 

  1.  the  PAIPO Draft statute would be reviewed by the Specialized Technical Committee on Justice and Legal Affairs and  thereafter be approved by the Summit in 2016;
  2.  consultations with Tunisia (Host Country) would be undertaken in 2017;
  3. the adoption of the Implementation Action Plan by the Assembly   ought to be achieved in 2017;
  4.  PAIPO would then commence its activities  in 2018; and
  5.  should be fully functional by 2023.
The Specialized Technical Committee on Justice and Legal Affairs met in November 2015 but no information on the outcome of its deliberations, if any, on the draft statute have been published. The 26th AU Summit (the 26th Ordinary Session of the Assembly of the AU) was held on 30 -31 January 2016 but its decisions and declarations are yet to be published on the AU website. However, a media briefing by South Africa’s International Relations and Cooperation Minister Maite Nkoana-Mashabane on the outcomes of the Summit stated that member states, the AU Commission and regional economic communities were urged to continue to seek domestic and regional compliance with the first Ten-Year Implementation Plan. In relation to PAIPO this entails the finalization of the organisation's implementation plan in pursuit of its planned adoption in 2017 and the commencement of PAIPO activities in 2018. If everything proceeds as planned the organisation should be fully fledged in 2023. 
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For earlier PAIPO coverage on Afro-IP see


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Afro Leo

WIPO's enabling program in Uganda

Hillary Muheebwa, writing for IP-Watch, reports from a recent WIPO training camp in Uganda that there is a renewed call for the protection of geographical indications and collective marks to make local products more valuable. The report also emphasises the need for SMEs to make use of Uganda's reputation in agribusiness to brand and enhance the value of their goods. The training program is one of many conducted by WIPO on the continent and aims at educating Africans on how to use intellectual property to create wealth.
 
"The objective of the Training of Trainers Program is to create a critical mass of trainers who have the basic knowledge, skills and experience to provide preliminary intellectual property assistance to entrepreneurs, students, and SMEs on effective IP asset management. This is to enhance the competitiveness and sustainability of the SMEs in the domestic and international markets."
 
It is notable from the article, which can be located here, that Uganda is facing structural problems in enabling some of the legislation that would facilitate the protection that SMEs require.
 
"Although Uganda has the Geographical Indications Act, 2013, the regulations to operationalise the act have not been passed, making it impossible to register geographical indications as of now."
 
These types of training programs are exactly what most, if not all, countries on the continent require. Unfortunately it is not uncommon for sentiment to be there, only for inadequate legislation or lack of reliable, inexpensive enforcement to hamper its effectiveness.

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