SCHOOL OF BUSINESS

LS 320 / BS 490 / ES 460 / ES 550

INTELLECTUAL PROPERTY LAW

2017/2018
Revised Copyright © 2017 Mwansa Christopher Mulenga

Module leader: Mwansa C. Mulenga, LL.M Commercial Law, LL.B (Hons) (Derby), CIOB (London).

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TABLE OF CONTENTS

UNIT TOPIC PAGE

PART 1 Introduction to Intellectual Property

UNIT 1 INTRODUCTION TO INTELLECTUAL PROPERTY

PART 2 Copyright Law

UNIT 2 COPYRIGHT
UNIT 3 THE IDEA / EXPRESSION DICHOTOMY
UNIT 4 AUTHORSHIP AND OWNERSHIP OF COPYRIGHT
UNIT 5 SECONDARY OR DERIVATIVE WORKS
UNIT 6 WORKS EXCLUDED FROM COPYRIGHT PROTECTION
UNIT 7 AUTHOR’S RIGHTS
UNIT 8 EXPRESS ASSIGNMENTS AND LICENCES
UNIT 9 COPYRIGHT INFRINGEMENT
UNIT 10 DEFENCES TO COPYRIGHT INFRINGEMENT AND PERMITTED ACTS
UNIT 11 REMEDIES FOR COPYRIGHT INFRINGEMENT
UNIT 12 COPYRIGHT ADMINISTRATION IN ZAMBIA
PART 3 Trade Mark Law

UNIT 13 TRADE MARKS

UNIT 14 REGISTRABLE AND UNREGISTRABLE TRADE MARKS
UNIT 15 TRADE MARK INFRINGEMENT AND DEFENCES
UNIT 16 PASSING OFF
PART 4 Patent Law

UNIT 17 PATENTS
UNIT 18 PATENT REGISTRATION
UNIT 19 PATENT OWNER / INVENTOR
UNIT 20 EXCLUSIONS FROM PATENTABILITY
UNIT 21 PATENT INFRINGEMENT, DEFENCES AND REMEDIES
PART 5 Industrial Design Law

UNIT 22 INDUSTRIAL DESIGN LAW

UNIT 23 DESIGN INFRINGEMENT, OFFENCES AND REMEDIES
PART 6 Traditional Knowledge and Folklore

UNIT 24 TRADITIONAL KNOWLEDGE AND FOLKLORE

PART 7 Geographical Indications

UNIT 25 GEOGRAPHICAL INDICATIONS

PART 8 Unfair Competition

UNIT 26 UNFAIR COMPETITION

PART 9 Protection of New Varieties of Plants
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UNIT 27 PROTECTION OF NEW VARIETIES OF PLANTS
PART 10 Law Of Confidence

UNIT 28 LAW OF CONFIDENCE

PART 11 Intellectual Property and Development

UNIT 29 INTELLECTUAL PROPERTY AND DEVELOPMENT

PART 12 Intellectual Property International Litigation

UNIT 30 INTELLECTUAL PROPERTY INTERNATIONAL LITIGATION

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PURPOSE:
This module will equip the student with the knowledge and competences to distinguish a
“sale of goods” contract from all other types of contracts and be able to relate the Sale of
Goods Act 1893 to the day-to-day sales transactions between the sellers and the buyers. It
will also introduce the student to the law and practice of international trade and the Vienna
Convention on international trade. The student will also appreciate the importance of
intellectual property law in a global economy.

LEARNING OUTCOMES:

At the end of this module the student should be able to:

 Recognise a “sale of goods” contract;
 Outline and explain the implied terms in the contract for the sale of goods;
 Appreciate the importance of the passing of property and risk;
 Understand the relevant consumer protection legislation;
 Understand and appreciate the importance of intellectual property rights protection;
 Explain the advantages of the United Nations Convention for the International Sale of
Goods (CISG) in international trade.
METHOD OF LEARNING:
Distance education with two weeks residential classes at the end of the semester.
ASSESSMENT
Continuous assessment will be of at least two (2) assignments and a test.

Students will be required to write end of year examinations as per University regulations.
Continuous Assessment 40%
Final Examination 60%

EXAMINATION FORMAT
The examination is unseen, closed book and 3 hours in duration. Students are required to
answer 5 questions out of 7.
Students will answer 2 questions from section A and 3 questions from section B. Question 1
is compulsory. All questions will carry equal marks (20).

RECOMMENDED READINGS
Aplin T and Davis J, Intellectual property Law, OUP Oxford, 2009

Alces P.A., Commercial Law of Intellectual Property, Aspen Publishers, 1994

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Bainbridge D.L, Intellectual Property, 8th edition, My Law Chamber, 2010

Barrett M, The Emmanuel Law outlines series: Intellectual Property, 2nd ed., Aspen
Publishers, 2008

Dratler J, Intellectual Property Law: Commercial, Creative, & Industrial Property, Volume 13,
Library of Congress, 2006

Fishman S, The Copyright Handbook: What every writer needs to know, 11th edition, NOLO,
2011

Kanja M. George, Intellectual Property Law, UNZA press, 2006 Lusaka

WEB SITES

www.wto.org

www.wipo.int

http://ec.europa.eu

www.zamlii.org

UNIT 1 INTRODUCTION TO INTELLECTUAL PROPERTY

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Intellectual property (IP) law is concerned with legal rights of creative effort of the human
intellect, that is to say, creations of the human mind. It also includes the commercial
reputation and goodwill of a business enterprise. Intellectual property rights are like any other
property right. They confer rights on the creators or owners of patents, trademarks or
copyrighted works to benefit from their own work or investment in a creation. These rights are
outlined in Article 27 of the Universal Declaration of Human Rights, which provides for the
right to benefit from the protection of moral and material interests resulting from authorship of
scientific, literary or artistic productions. Like any other property, Intellectual property gives
the owner of the property the freedom to use it as she/he wishes, provided that its use is not
against the law and the right to exclude or limit others from so using it.

It is important to protect intellectual property rights as it is both just and appropriate that the
person putting in the work and effort into an intellectual creation has some benefit as a result
of this endeavor and hence encouraged others and industries based on such works to grow
as more people see that such works bring financial benefits.

The importance of intellectual property was first recognized in the Paris Convention for the
Protection of Industrial Property (1883) and the Berne Convention for the Protection of
Literary and Artistic Works (1886). Both treaties are administered by the World Intellectual
Property Organization (WIPO).

However, the 1980s to early 1990s where a frustrating period for the developed countries
who felt the World Intellectual Property Organisation (WIPO) was not effective enough in the
protection of Intellectual Property Rights (IPRs). The ascendance of the third world or
developing countries to WIPO membership was felt to have:
(i) Given rise to complex and highly politicised negotiations.
(ii) No real international enforcement mechanism available if signatories to WIPO did
not comply with their conventional obligations especially for major intellectual
property exporters.

This led to the establishment of the international regulation of intellectual property under the
jurisdiction of the World Trade Organisation (WTO) at the Uruguay Round of Multilateral
Trade Negotiations and the formation of the TRIPs Agreement which binds all members of
the WTO. The high level of harmonisation of various Intellectual Property Rights (IPRs) has
created enormous pressure on developing countries and has been said to be quite counter-
productive for these nations to meet these standards.

EXAMPLE
THE WORLD PHARMACEUTICAL INDUSTRY
An investment of many years and R&D expenses (lab time for creation, testing, government
or agency approval procedures) running into the hundreds of millions of pounds sterling (or
yen, rand, lira, dollar) may be necessary before any new medicine reaches the market.
Without the IP rights to exclude competitors from also making such a new medicine, the
pharmaceutical company creating such a new compound would have no incentive to spend
the time and efforts outlined above to develop their drugs.
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Without patent protection, such a company would face economic losses originating from the
"free-riding" of their competitors whilst without trademark protection, this company, again,
could not build "brand loyalty" that, hopefully, would last beyond the years of protection
granted by patents.

FORMS OF RIGHTS
The intellectual property rights (IPRs) together form the Intellectual property and can be
broken down as follows:
- Copyright and Related rights
- Trade Marks
- Patents
- Geographical Indications
- Industrial Designs
- Traditional knowledge and Folklore
- Law of confidence
- Genetic resources

The following are some of the things that are protectable:

Designs for objects
Geographical indications of origin for certain types of products
Performances
Images
Companies' names
Broadcasts
Logos
Industrial processes
Videos
Trademarks
Chemical formulas
Computer games
Integrated circuits
Computer programs
Inventions Perfumes

The following is a brief outline of some of the major IPRs which shall be discussed in this
course:

COPYRIGHT
Copyright is concerned with the protection of rights in literary, artistic, musical and dramatic
works. The copyright system seeks to protect creative or intellectual effort of the author by
conferring exclusive rights on the owner in respect of the exploitation of a protected work.
The world’s first copyright statute on intellectual property was the Statute of Anne which was
enacted in the United Kingdom in 1709.

Examples include books, music, architectural drawings, etc.

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COPYRIGHT'S RELATED RIGHTS
These include performances and broadcasts such as concerts, plays, etc.

TRADE MARK, SERVICE MARKS AND COMMERCIAL NAMES

Trademarks seek to protect the holder’s economic interests in the trading name or sign /
logo. A trademark may consist of a graphic, a name and now even sounds and smells, e.g.
Microsoft

The Trademarks play an important role of differentiating the goods and services offered by
one company to that of another. The Zambian law on trademarks can be found under the
Trademarks Act Cap 401. Trademarks are closely associated with the doctrine of “Passing
off” which operates to prevent a party from using names or other indicators likely to mislead a
third party as to the true identity of the person or company with whom they are dealing. This
is to create an impression that a person is connected with a well known organisation.

PATENT
The patent system protects inventions by conferring, more or less a monopoly on the rights
owner and it works on the principle of “first come first served” basis.

INDUSTRIAL DESIGNS
Protect the aspects of the design of products: e.g. a car or an umbrella, etc

UNFAIR COMPETITION
This is protection against unfair competition by a competitor who may be imitating another
competitor’s goods or services with a view to deceiving the customer.

IMPORTANCE OF PROTECTING INTELLECTUAL PROPERTY

The progress and well-being of humanity rest on its capacity to create and invent new works
in the areas of technology and culture and as such it is felt that the protection of new
creations encourages the commitment of additional resources for further innovation. This
then leads to the creation of jobs and industries and which in turn spurs economic growth.
Therefore, the intellectual property system should help to strike a balance between the
interests of innovators and the public interest, providing an environment in which creativity
and invention can flourish for the benefit of all.

JUSTIFICATION FOR PROTECTION OF IP RIGHTS

IPRs grant the owners exclusive rights to do certain acts whilst prohibiting others from doing
the same acts.
E.g. - Copying the works
- Restricting others from using the works
- Charging higher prices.

Michael Spence “Justifying Copyright” Dear Images: Art Copyright And Culture”
Spence argues that the unauthorised user of a work receives a benefit from its use and
thereby “reaps where she has not sown”. He refers to the bible regarding this phrase and
argues the behaviour is neither condoned nor condemned.
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Spence quotes Galatians 6:7that;
“Do not be deceived; God is not mocked: for whatever a man sows, this he will also reap”

However, Spence further argues that to condemn all reaping without sowing would be to
condemn all imitation and stifle development of artistic traditions. Spence concludes with a
view that we all reap without sowing as long as we feel it is justified even without the consent
of the creator.

INTERNATIONAL AND REGIONAL PROTECTION FRAMEWORK

In the mid 19th Century, individual countries were concerned that their traders’ interests would
not be protected when in foreign countries. From this emerged the Berne and the Paris
Conventions which are administered by the World Intellectual Property Organisation (WIPO)
an agency of the United Nations.
In 1883 the European states adopted the Paris Convention for the Protection of Industrial
Property (Covering patents, trademarks and industrial Designs). Then in 1886 they adopted
the Berne Convention for the Protection of Literary and Artistic Works which governs
copyright.
The underlying principles for these conventions are:
(i) Non-discrimination
(ii) National treatment – no barriers for entry of a foreign author or inventor in a member
state’s national market and hence should be treated no differently than the nationals.
(iii) Right of priority protects the rights holder from unauthorised use of the copyrighted or
patented work.
With these conventions in place, it is up to the member states to come up with their own
national legislation as long as there was no discrimination against foreigners from other
member states.
However, under these agreements, some member states denied patent protection for
pharmaceutical products so as to contain the cost of necessary medicines leading to
divisions between the developed and the under-developed or developing states hence the
frustration of the developed nations with WIPO.
This then is how the developed nations agreed to bring the Intellectual Property regulations
under the jurisdiction of the World Trade Organisation (WTO) with the creation of the TRIPs
Agreement. With the advent of globalisation, the TRIPs Agreement binds all the member
states of the WTO.

The TRIPs Agreement

The Agreement on Trade Related Aspects of Intellectual Property Rights 1994 (TRIPs
Agreement) forms part of the World Trade Organisation (WTO) and incorporate under Article
9 the key provisions (Articles 1 -21) of the Berne and Paris Conventions but excludes the
moral rights.

WIPO ADMINISTERED CONVENTIONS AND TREATIES

Amongst the many roles that WIPO carries out to support the worldwide promotion of
intellectual property rights, is its role in the administration of specific treaties and conventions.
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The international protection for trademarks, industrial designs and appellations of origin is
carried out through three registration systems, namely:
(i) The Madrid System for trademarks.
(ii) The Hague System for industrial designs.
(iii) The Lisbon Agreement for the protection of appellations of origin.

1. The Berne Convention

This is the most important international legislation on copyright law which has been re-
enforced by the TRIPs Agreement 1994 by incorporation of most of the Berne Convention
obligations.
The Berne Convention Article 3 provides protection to the following people:
(i) Authors who are nationals of a Union Country for their unpublished or published works.
(ii) Authors who are not nationals of a Union Country but have their habitual residence in a
Union Country for their unpublished or published works.
(iii) Authors who are not nationals of a Union Country but whose works are first published in
a Union Country or simultaneously published in a Union Country and non-Union
Country.
The Berne Convention is underpinned by the fundamental principles of national treatment
and minimum rights. Article 5 (1) provides that,
“Authors shall enjoy, in respect of works for which they are protected under the convention, in
countries of the Union other than the country of origin, the rights which their respective laws
do now or may hereafter grant to their national as well as the rights specially granted by this
Convention.”

The two major principles of the Berne Convention are:

(i) THE PRINCIPLE OF NATIONAL TREATMENT
This simply means that a country of the Union cannot discriminate between its own nationals
and those of another Union country when it comes to copyright protection.

(ii) THE PRINCIPLE OF MINIMUM RIGHTS

This principle requires a Union Country to offer the minimum rights specifically granted by the
convention to authors of all Union countries. However, most if not all Union countries offer the
same minimum standards of protection to both their own and foreign authors. These
minimum rights include economic rights, moral rights and the duration of protection.

2. The Rome Convention

The International Convention for the Protection of Performers, Producers of Phonograms and
Broadcasting Organisations 1961 (Rome Convention) provides for the protection of
producers of phonograms, i.e. sound recordings, performers and broadcasters. The
fundamental principles of the Rome Convention are that of national treatment and minimum
rights which is equivalent to the Berne Convention. The protected rights must last for 20
years from the end of the year in which the fixation was made, when the performance took
place or when the broadcast took place. However, the Rome Convention Article 1 provides

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that its obligation in no way affects the protection of copyright in literary and artistic work
offered by the Berne Convention.

3. WIPO Copyright Treaty 1996 (WCT)

The WCT is a protocol to the Berne Convention and provides for the protection of programs
and databases as literary works. The protection lasts for 50 years.

4. WIPO Performances and Phonograms Treaty 1996 (WPPT)

The WPPT provides for the protection of performers in the digital technology age, such as the
internet, and protection lasts for 50 years.

REGIONAL PROTECTION OF INTELLECTUAL PROPERTY RIGHTS

ARIPO
The African Regional Intellectual Property Organisation (ARIPO) was founded in Lusaka
Zambia in 1976 under the auspices of the United National Economic Commission for Africa
(ECA) and WIPO. Membership is open to all member states of the African Union with
present membership standing at 18 states, which are Botswana, Gambia, Kenya, Lesotho,
Liberia, Malawi, Mozambique, Namibia, Ruanda, Sierra Leon, Somalia, Sudan, Swaziland,
Uganda, Tanzania, Zambia and Zimbabwe.

UNIT 2 COPYRIGHT
Copyright is a property right (intangible property) which subsists in certain original works of
the human intellect which includes written material, music and works of the fine arts, such as
paintings and sculptures, and technology-based works such as computer programs and
electronic databases. Copyright covers literary works (such as novels, poems and plays),
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films, music, artistic works (such as drawings, paintings, photographs and sculptures) and
architectural designs. Rights related to copyright include those of performing artists in their
performances, producers of phonograms in their recordings, and broadcasters in their radio
and television programs.
Copyright law in Zambia is governed by the Copyright and Performance Rights Act 1994
(CPRA) as amended by the Copyright and Performance Rights Act, 2010.

COPYRIGHT IS AUTOMATIC
A copyright does not need to be registered and the only protection is that it is recorded in
some permanent material form. The CPRA section 39(4) provides that the existence and
enforceability of a copyright shall be independent of whether or not it is registered under the
Act. Therefore, copyright protection starts at the moment that the work is recorded in material
form and the owner of a copyright protected work possesses the right to copy and to prevent
others from copying it. The author just has to prove when the work was created and that it
was created by him/her. The author should ensure to keep good records and ensure to date
all drawings and record the names of anyone who did the work. This should also be applied
to all creations such as models, text, images, sketches and presentations.
The person who creates the work remains the copyright owner being its author. Copyright
subsists in the authors’ works during the lifetime of the author and continues for a period of
50 years after the author’s death (CPRA s12 (1)).
The copyright owner has the exclusive right to do whatever they want with their work, such as
copying, broadcasting, selling copies to the public or granting permission to another in return
for a payment, e.g. granting permission to book publications in return for royalties. The
copyright owner can also restrict the use of their work.

The copyright protection is only for works which are an expression of thoughts and not ideas.
E.G. PK Chishala did not have a monopoly in kalindula songs since the concept of such
songs is an idea and hence not protected by copyright. As such, anyone else is free to
sing a kalindula song. However, singing a kalindula song by taking a substantial part
or parts from his songs will infringe on his copyright.

However, where literary, dramatic, musical or artistic works are created by the employee in
the course of employment, the employer will be the first copyright owner unless with prior
agreement to the contrary.
Like every other property, copyright can also be assigned by the copyright owner by way of:
(i) Gift
(ii) Will or intestacy
(iii) By operation of the law
(iv) Granting a licence.

Re: Dickens [1935] Ch 257

Charles Dickens wrote a will and left gifts to people. He left all his unpublished works (private
papers whatsoever and where so ever to his friend (sister in law) and all other property to my

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children. The friend finished of the book entitled Life of Christ and wanted to sell it. The
children challenged her as they claimed to own the copyright.

Held
Dickens left the friend with the material on paper and not the copyright (i.e. the written work).
Copyright was held by the children

COURT COMPROMISE AGREEMENT:

The friend could not publish as she would infringe copyright which was held by the children.
The children could not publish as they did not have the manuscript.
The court allowed the book to be published in the public interest and the parties to share the
proceeds.

NB: The Law in England was changed after this decision and now the manuscripts pass with
copyright if left in a will.

COPYRIGHT RELATED RIGHTS

Copyright can also subsist in a translation of a literary work, performing a work in public,
broadcasting the work and even storing the work in a computer.

COPYRIGHT AS A MEANS OF EXPLOITING A WORK

Copyright provides a mechanism for the allocation of risks and income derived from the sale
of the work. It further provides protection in respect of both published and unpublished works.
An important aspect of protecting copyright is the likelihood of their economic value.

E.g. A singer would be rehearing his songs in private before final release. If anyone else
overhead the singer, copied the songs and sold them without permission of the
copyright owner would be infringing copyright. The singer would bring an action and
demand for remedies such as damages, sales profits and even an injunction to stop
the infringer from making and selling the songs.

Other materials that could be copyright protected are:

(i) Lists of Customers
(ii) Engineering drawings
(iii) Tables of figures
(iv) Business/Personal letters (British Oxygen Co. v Liquid Air Ltd [1925]1 Ch 383
(v) Football Coupons
(vi) Case notes and summaries, etc

The © symbol is a requirement of the Universal Copyright Convention 1962 and maximises
the protection which is available under the 1962 Convention.

QUALIFICATION FOR COPYRIGHT PROTECTION

ORIGINALITY

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The requirement of originality is not expressly provided for in the Berne Convention. This
"originality" requirement means only that the work was independently created by the author
and not copied from other works and that it possesses at least some minimal degree of
creativity.

Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964]1 WLR 273

Held
That ‘originality’ requires only that the work should not be copied but should originate from
the author.

The Copyright and Performance Rights Act 1994 section 2 (e) provides that adaptation
includes “in relation to an artistic work in two dimensions, the reproduction of that work in an
object in three dimension”.

Interlego AG v Tyco Industries Inc[1989]1 AC 217, HL

The original Lego toy bricks for children had been patented and were registered as a design
but these had expired. Some changes had been made to the design drawings of the bricks
which were being copied by Tyco. Lego claimed copyright infringement.

Held
There must be an original work for copyright to exist. Such small modifications even though
technically significant do not give rise to new works independently protected by copyright. To
hold otherwise would result in the possibility that copyright in what is basically the same work
could be extended indefinitely.The court went on to hold that “.........producing a good copy of
a painting or an enlarged photograph from a negative would not create an original artistic
work even though the copy painting or positive print would required great skill, judgment and
labour” per Lord Oliver.

Therefore, originality is equated with the degree of skill, labour and judgement that went into
the creation of the work.

LB (Plastics) Ltd v Swish Products Ltd [1979] RPC 551

The plaintiff designed and produced a drawer system. The key feature was that the drawers
could be supplied to the customers (furniture manufactures) in “knock-down” form. This
offered considerable benefits at transportation and storage. The design facilitated swift and
easy assembly by the final producer.
The concept proved commercially successful and sometime later, the defendant introduced a
similar range of products. It was alleged that this was achieved by copying one of the
plaintiff’s drawers.

Held
That when talking in terms of artistic copyright, the question of originality depended on the
amount of labour, skill and judgment expended on the creation of the work.

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British Leyland Motor Corporation v Armstrong Patents [1986] RPC 279
The plaintiff manufactured motor vehicles with motor parts produced in accordance with
detailed designs. The defendant specialised in the manufacture of spare parts which would
be sold to motor vehicle owners. In order for the replacement spare parts to fit, the
defendant’s design needed to be virtually identical to that of the original component. This was
achieved by taking an example of the plaintiff’s exhaust system and noting its shape and
dimensions.

Held
The defendant’s conduct amounted to indirect copying of the designs under the Copyright Act
1956 s48 (1), which provided that the conversion of a two-dimensional work into one of three
dimensions will constitute a reproduction.

However, an artist making a faithful representation of a still life object (e.g. a sofa ) uses more
of his skill in lighting and applying paint to canvas which then earns him the copyright.

TANGIBILITY
The Berne Convention on copyright is directed to the expression of ideas rather than the
ideas themselves. Whilst the Berne Convention Article 5 (2) does not make it mandatory to
have formalities for the protection of copyright, the Copyright and Performance Rights Acts
1994 section 8 (3) provides that copyright shall only subsist in a literary or musical work or
computer program when recorded in writing or in some other form.
Therefore Copyright protection requires that the work should have some tangible form in
writing or otherwise. Whilst artistic works will usually be in tangible form, literally, dramatic or
musical work must be recorded in a permanent form. Such fixation or recording can be made
by anyone even without the permission of the author (Walter v Lane [1900] AC 539, HL)
However, a secretary taking dictation notes will not obtain copyright in the written work.

Apart from the work being original and in tangible form, the work will then have to qualify for
copyright protection under section 9 of the Copyright and Performance Rights Act 1994.

A work will qualify for copyright protection if at the time of completion of the work;
(a) (i) The author was a Zambian citizen, domiciled or resident in Zambia or a
Conventional country.
(ii) An incorporated body in Zambia or a Conventional country
(b) Literary, musical or artistic work, a compilation, a computer program, an audiovisual or
typographical arrangement first made or published in Zambia or a Conventional country.
(c) A sound recording first published in Zambia or a Conventional country.
(d) A broadcast first transmitted in Zambia or a Conventional country.
(e) A cable program service first transmitted from a place in Zambia or conventional
country.

DURATION OF COPYRIGHT PROTECTION

The Copyright and Performance Rights Act 1994 section 12 provides the duration of
copyright as follows:
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(i) Literary, musical or artistic work or compilation shall expire in 50 years from the end of
the calendar year in which the author dies.
(ii) Works produced by a public officer or government employee in course of employment
shall expire 50 years from the end of the calendar year in which the work is made.
(iii) Works of unknown authorship shall expire 50 years from the end of calendar year in
which the work is first published unless the identity of the author is established before
that date.
(iv) Where there is joint-ownership, it shall expire 50 years from the end of the calendar
year in which the last of the authors dies.
(v) For audiovisual works and sound recordings, copyright shall subsist for a period of 50
years from the end of the calendar year in which it is made or in which it is first
published.
(vi) Copyright in broadcasts and cable programmes shall subsist for 50 years from the end
of the calendar year in which the broadcast or cable program was first transmitted.
(vii) Copyright in computer programs shall subsist for 50 years from the end of the calendar
year in which first published.
(viii) Copyright in typographic arrangements shall subsist for 25 years from the end of the
calendar year in which the edition was first published.

Copyright subsists in three categories of original works:

(i) Literary, dramatic, musical or artistic works and computer programs
(ii) Sound recordings, films, broadcasts or cable programmes
(iii) The typographical arrangement of a published work.

LITERARY WORKS
This is any work which is written, spoken or sung and includes a ‘table or compilation’, ‘a
computer program’ or a database (providing the database constitutes the author’s own
intellectual creation) and may apply to some works created by architects in the course of their
work.
The Copyright and Performance Rights Act (Cap 406) 1994 defines a “literary work” as
including a dramatic work or an arrangement of information in tabular form. The inclusion of
tables, compilations and computer programs means that a literary work does not need to be
a work of literature.

University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601
The issue was whether Mathematical examination papers were “original literary works” within
the meaning of the Copyright Act 1911 section 1(i).

Held
That the papers set by examiners are “literary works”.

However,copyright excludes the protection of short texts, names, single words and short
phrases that should be available for all to use without fear of copyright infringement due to
the public interest.

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Exxon v Exxon Insurance [1982] Ch 119
A multinational oil company decided to choose a new corporate name. They came up with
Exxon, an invented word, developed as a result of considerable research and expenditure
and used as the corporate name of several of the claimant companies. The defendant used
Exxon in its corporate name which led to the plaintiffs seeking an injunction. The plaintiff
alleged copyright infringement and passing off.
Held
A “literary work” intends to offer information, instruction or pleasure in form of literary
enjoyment. Exxon has no meaning as it is an invented word but although original, suggests
nothing in itself. It is in fact a typical subject of trademark registration which is distinctive of
the plaintiffs and their goods.Therefore, the word alone and by itself cannot properly be
considered as a “literary work” the subject of copyright. Claim dismissed.

This means that Copyright protection does not extend to titles, names, slogans or short
phrases and hence one cannot copyright their name, the title of their post or any short phrase
that they use to identify a work.

This is because copyright is designed to protect works of creative authorship, it is not

designed to protect how that work is identified in the marketplace, the same goes for people
and places. Furthermore, such short phrases rarely meet the requisite level of creativity to be
considered for copyright protection.

However, as seen in the case of Exxon above, titles, names, slogans or short phrases may
be used to identify a business, good or service in the marketplace and are registerable as
trademark.

ARTISTIC WORK
The Copyright and Performance Rights Act 1994 section 2 provides that “copyright subsists
in an “artistic work” including works of artistic craftsmanship such as fabrics, carpets and
tapestry (textile art).
These also include:
(a) A graphic work irrespective of artistic quality which includes any drawing, diagram or
plan such as an architect’s design plans or drawings are graphic works.
(b) A work of architecture being a building as a three dimensional structure or a model for
a building. The building includes any fixed structure and a part of a building or fixed
structure. The courts have held bridges, steelwork for a sports stadium, a garden with
a pond, steps and a wall all to be structures.

Copyright also subsists in artistic works irrespective of artistic quality such as in:
(a) Paintings, drawings, etchings, lithographs, wood cuts, engravings and prints.
(b) Maps, plans, charts, diagrams, illustrations and sketches
(c) Works of sculpture
(d) Works of architecture in the form of either buildings or models
(e) Photographs.
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Some fairly simple things have been accorded copyright protection such as:

1) A bare design of a hand

Hildesheimer and Faulkner v Dunn and Co (1891) 64 LT 452

Protection was claimed for a Christmas card cut out and painted in the form of a lady's hand.
It opened out book-wise, and inside were delineated the lines of life according to the rules of
palmistry, and on one side there was an original verse. This work was registered both as a
book and as a painting.

Held
Injunction granted against piracy

2) A label of a whiskey bottle

Glenfiddich Single Malt Whisky McDowell's Single Malt Whisky

William Grant & Sons Ltd v Mc Dowell & Co. Ltd [1994] FSR 690

The plaintiff operated Glenfiddich Distillery in Scotland. Glenfiddich Distillery was established
by Mr William Grant in 1887. Scotch Whiskey is governed by the Scotch Whiskey Act 1988
and the Scotch Whiskey Order 1990. There are two types of Scotch Whiskey (1) Malt
Whiskey and (2) Grain Whiskey.
The plaintiff claimed to be the producer of pure single malt Scotch Whiskey under the
trademark name Glenfiddich which is packed in black cylindrical containers. The shape and
design of the tube is unique and memorable and the plaintiff is the copyright owner.
Glenfiddich whiskey is bottled in deep green triangular bottles. The claimant did not claim
exclusive right to the use of the triangular green bottle but to the name.
The Glenfiddich label on the bottle and the container are similar. The label was designed in-
house in the 1960s and redesigned in 1983 by a design agency who duly assigned it in
favour of the plaintiff.

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The defendant was a major manufacturer and marketer of whiskey in India. They launched
what they claimed was a “single malt” whiskey under the name Mc Dowell’s Single Malt
Whiskey with an almost similar label and packaging.
The plaintiffs claimed the defendant’s label was an imitation and substantial reproduction of
the plaintiffs Glenfiddich label without permission, consent or licence. Also, they contended
that the use of the black tube by the defendant was a misrepresentation made in the course
of trade to prospective customers likely to lead to deception and confusion.

Held
That great skill had gone in the work, and the label is pleasing to the eye within the meaning
of the Copyright Act. Injunction granted.

3) COVER OF A RECORD

Creation Records Ltd v News Group Newspapers Ltd [1997] EMLR 444

Noel Gallagher arranged an ensemble of objects for the purposes of a photo-short to be used
for the front sleeve of the Oasis Album, “Be Here Now”. The defendant engaged a freelance
photographer to take an unauthorised photograph of the scene, which it then subsequently
published and offered for sale. Lloyd J, considered whether copyright subsisted in the “photo-
shoot” scene as a dramatic or artistic work.
This was a swimming pool in the foreground with the Rolls Royce seemingly emerging from
the water towards the camera. The hotel is behind and to the right in the far distance is a
wooded area with partly clouded sky above. The five members of the group are posed round
the pool, one on a scooter, one climbing out of the pool and others with or near other objects
seemingly unrelated to each other. None of the objects were made for the purpose.

Held
Action failed with regards to copyright protection of the scene but succeeded in obtaining an
injunction on the basis of breach of confidence.

DRAMATIC WORKS
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The Copyright and Performances Rights Act 1994 (Cap 406) section 2 defines a dramatic
work as including “a work of dance and mime whether recorded, in writing or other notation or
in an audiovisual work”. Hence, the dialogue of a dramatic work is protected by literary
copyright whilst a work of mime without words is protected as a dramatic work.

Green v Broadcasting Corp. of New Zealand [1989] RPC 700

The appellant, Green, was a well-known TV personality who was both an author and
presenter of “Opportunity Knocks”, a highly successful TV show in England. The show was
essentially a talent contest and featured several characteristic catch phrases, the use of
sponsors to introduce competitors and the use of a ‘clapometer’ (applause meter) to measure
audience reaction to the performances of competitors. The respondent broadcast a similar
TV show under the same title in New Zealand.
Green claimed damages for infringement of copyright and for passing off. The claimant
argued that copyright subsisted in the scripts and dramatic format of the show.

Held
What little evidence of scripts that existed pointed to no more than a general idea or concept
for a talent show and as such could not attract copyright. A dramatic work must have
sufficient unity to be capable of performance and that the features claimed as constituting the
‘format’ of a TV show, being unrelated to each other except as accessories to be used in the
presentation of some other dramatic or musical performance, lack that essential
characteristic. Appeal dismissed.

Dramatic works include works of dance and mime and therefore cover operas, ballets and
plays. However, a dramatic work must also be recorded for copyright to subsist.

Norowzian v Arks Ltd [2000] FSR 303, CA

Mr Norowzian had created and produced the film “JOY”. It depicted a man casually dressed
dancing to music in a quarky manner against a plain backdrop. This was as a result of the
editing process which used the flash framing and ‘jump cutting’ technique hence made the
dancing look surreal. The dancing man was doing things that could not be done in real life.
The defendants produced an advertisement for Guinness, called “Anticipation”. This was also
done using the “jump cutting” technique showing a dancing man waiting for his pint of
Guinness to settle.

Held
A dramatic work is a work of action, with or without words or music, which is capable of being
performed before an audience. Therefore, a film can be a dramatic work for the purpose of
the Act. “JOY”, unlike other films, is not a recording of dramatic work as a result of the drastic
editing process. It is not a recording of anything that was or could be performed or danced by
anyone.

MUSICAL WORKS
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There is no requirement for high quality in musical works and even a few notes may attract
copyright. However, for copyright purposes, music and lyrics are separate in musical works
as lyrics are protected as literary works whilst the music or melody is protected as a sound
recording. Having two copyrights is convenient as it is common in the music industry for
different people to write the music and the lyrics.
However, it is important to note that certain aspects of a song are not protected under
copyright, such as:
(i) Chord progressions.
(ii) The overall idea or concept of your song.
(iii) A title or short phrase.

Making an arrangement of an existing piece of music is a derivative work and may attract its
own copyright in addition to the copyright already subsisting in the prior work.

E.g. JK’s use of lyrics from PK Chishala’s song- “Ubushiku Bulalepa” or Pilato’s use of the
music from Nachel Pitchen Kazembe’s hit “A Phiri ana bwera”.

Therefore, the adapting musician could be guilty of copyright infringement in the earlier music
should copyright still subsist in it and if made without the permission of the copyright owner.

Williamson Music Ltd v The Pearson Partnership Ltd (1987) F.S.R. 210

The plaintiff owned the copyright in the famous song “There is Nothin’ Like a Dame”,
originating from the play ‘South Pacific’. The defendants advertised a service of express
coaches between London and other places in the United Kingdom. In their advertising they
made use of a song which resembled “There is Nothin’ Like a Dame”.

Held
There was copyright infringement as the advertising agency wanted to free ride on the fame
of ‘There is Nothin’ Like a Dame’, and they did not have any other intentions than to use it for
commercial purposes. The court did not want to allow this kind of parody.

PHOTOGRAPHS
A photograph is a recording of light or other radiation on any medium on which an image is
produced or from which an image may by any means be produced and which is not part of a
film.

Antiquesportfolio.com Plc v Rodney Fitch & Co. Ltd [2001] FSR 345

The plaintiff decided to launch a business, advertising and selling antiques over the internet.
The claimant instructed the defendant, a design consultancy company, to work on the
proposed website, produce business cards, advertising literature and logos. The defendant
supplied a number of icons featuring images on a banner on the website, navigation buttons
with logos traced and simplified from photographs and a large drawing of the cover of the
claimant’s brochure based on a photograph.
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The claimant commenced proceedings seeking a refund on the grounds that the material
used infringed third-party copyright as the supplied materials were based on photographs of
antiques (furniture, works of art, glass ware, etc) in a well-known “Millers Antiques
Encyclopaedia. The claimant argued that the use of images supplied by the defendant would
infringe the copyright of the third-party in the photographs contained in the Encyclopaedia.

Held
Some skill and effort had gone into the photographs and there had not been the copying of
the “whole or a substantial part”. The defendants were entitled to their fees.

Copyright may subsist in a photograph of a painting as long as there is use of skill and
judgment which creates a new work of copyright. Similarly, photographs of sculptures (three-
dimensional objects) carved from wood or stone may create their own copyright due to the
skill and judgement in positioning the article, lighting, selecting angle of photograph, lens
aperture and shutter speed.

ARCHITECTURAL DRAWINGS
Architecture works mean the designs of architecture which means that architectural plans,
drawings, models and building are the material objects of architecture works.
An architectural work is the design of a building as embodied in any tangible medium of
expression, including a building, architectural plans or drawings. However, copyright
protection does not encompass general concepts or standard features. The essence of this is
to filter out the unoriginal, unprotectable elements that were not independently created by the
inventor and that possess no minimal degree of creativity.
The protected elements of an architectural work includes the overall form as well as the
arrangement and composition of spaces and elements in the design, but does not include
individual standard features such as “common windows, doors, and other staple building
components,” which are instead “ideas” exempt from copyright protection.

OBTAINING COPYRIGHT PROTECTION IN ARCHITECTURAL WORKS

To obtain copyright protection, a work must be original i.e. the author must have used his
own skill & effort to create the work. Artistic quality is not needed. However, works of
architecture or models must have some artistic quality to qualify. The threshold is low i.e. a
building or structure must demonstrate at least ‘something apart from the common stock of
ideas’ to demonstrate artistic quality.

Catnic Components Ltd & Robert Stevensonv Hill & Smith Ltd (1982)

Held
That what is protected is the artistic work and not any ideas or information which it may be
designed to convey…What is protected is the skill and labour devoted to making the artistic
work itself, not the skill and labour devoted to developing some idea or invention
communicated or depicted by the artistic work”. Per Lord Justice Buckley

ARCHITECTURAL INFRINGEMENT
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The more similar various aspects of a work are, the more likely a work will be considered to
have the same "overall look and feel" and therefore be infringing.

Johnson v Jones (1998)

The plaintiff, Douglas Johnson, an architect, brought this suit against the defendants Theresa
Jones, Daniel Tosch and John C. Uznis alleging that his architectural drawings were altered
and used without his permission in violation of the Copyright Act.
Daniel Tosch has been an architect since 1971 and is the owner of Progressive Associates,
Inc., John C. Uznis is a licensed builder and owner of Defendant Uznis Denewith Co. and
Theresa Jones is, in addition to being an ex-nun and a Ph.D. holder, an experienced
business woman who owns and operates a large automobile dealership.
On July 15, 1993, Johnson presented Jones with the first contract which specifically provided
that the architect shall be deemed author of the documents and other drawings prepared with
respect to the project and shall retain all rights to said documents including copyrights. It
further provided that the copyrighted drawings "shall not be used by the owner or others on
other projects, for additions to this Project or for completion of this Project by others, unless
the architect is adjudged to be in default under this agreement, except by agreement in
writing with appropriate compensation to the Architect."
Johnson begun working on a design for the house and delivered it to Jones. Then, Jones
asked Johnson to recommend a surveyor. She also asked Johnson to serve as the
contractor in charge of the renovation. Thereafter, Johnson delivered to Jones the second
contract to that effect.
Thereafter, Jones told Johnson that she was bringing in Tosch to work as Jones'
"construction agent" to ensure that the house was being built properly.
The contracts were rewritten with a provision that the "Architect shall retain ownership of
drawings and specifications but Owner-Jones-shall be entitled to retain a set of drawings and
specifications and may utilize same for any purpose she desires." The parties failed to agree
on the contract terms and as a result Johnson was terminated from the project retaining
Tosch as architect.
Tosch expressed concerns that Johnson's drawings had copyright notices affixed to them but
was informed that there was not a problem with authorship, because Jones was co-owner of
the drawings. Tosch then began to work on the project using Johnson's drawings. He
removed Johnson's name and seal and replaced them with his own name and seal and
submitted them to the city inspector who approved them.
Johnson did not discover that Tosch was using his drawings until he happened to visit the
Orchard Ridge job site when he observed a construction table covered with plans for the
project. Johnson found the plans that he had originally created spread out across the table.

Held
That Johnson created the drawings with the understanding that he would be the architect in
charge of the project and would not have allowed Tosch to finish the project using his
drawings without a written agreement. Further, Tosch distributed Johnson's drawings under
his own name and this act of deception was intended for people to assume that the plans
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were his and not Johnson's. For these reasons, the defendants were jointly and severally
liable in the amount for willful infringement of Johnson's copyrighted architectural drawings.

SUBSTANTIAL SIMILARITY
Characteristics that courts have included in their analysis include frame footprint and
dimensions, layout of floor plan, number of rooms, wall height, roof pitch and dimensions,
overall square footage, number and placement of windows, façade style, and silhouette of
the building.

Home Design Servs., Inc. v. David Weekley Homes (2008)

The plaintiff, Home Design, a Florida based architecture/design firm is engaged in the
business of designing homes. The plaintiff alleged that it was the creator and original owner
of an original architectural work of a single family residence number 2041 which it created in
or about 1989 registered it as an "architectural design" and as a "technical drawing." The
plaintiff alleged that the defendant copied, advertised and constructed homes which infringed
on the 2041 copyrights.

Held
In order to prevail in a copyright infringement action, a plaintiff must show "ownership of a
valid copyright", and "copying of constituent elements of the work that are original."
Architectural plans can be protected as "pictorial, graphic, and sculptural works" and a little
originality is all it takes to benefit from the protection of the copyright laws.

Likewise, the court in Bonner v. Dawson 2003 held two buildings to be substantially similar,
noting that although there are certain differences between the two buildings such as the
building's size, interior layout, exterior stripe color, and some window variations, the overall
architectural concept and designs of each of the two buildings is overwhelmingly similar.

UNIT 3 THE IDEA / EXPRESSION DICHOTOMY

The boundary between the idea and expression, i.e. the idea / expression dichotomy, is
difficult to draw. It can then be said that the reasons why copyright law does not protect ideas
is that if the first person to produce a work based on an idea has a monopoly over it, then the

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spread of knowledge, invention and innovation would be greatly impeded. This reason is
shared by Fishman (2011, p.116) who states that, “if authors are allowed to obtain a
monopoly over the ideas, the copyright law could end up discouraging new authorship and
the progress knowledge……”. The Copyright doctrine assures the authors the right to their
original expression, but encourages others to build freely upon the ideas and information
conveyed by a work. According to Barrett (2008, p.101), “the law must ensure that the basic
building blocks of expression (ideas, facts & elements that are standard or routine in
connection with a given kind of work) remain in the public domain free from copyright owners
control, in order to ensure a continuing flow of new authorship in future”.

On the other hand, an expression constitutes that part of the work which is protectable under
copyright under copyright law. The Berne Convention, Article 2, provides that “copyright
protection extends to expressions and not to ideas, procedures, methods of operation or
mathematical concepts”. Therefore, the subject matter of copyright protection is ‘original
works of authorship fixed in any tangible medium of expression’ (Dratler, 2006 p.15).

University of London Press Ltd v University Tutorial Press Ltd

Held
That the word “original” does not mean that the work must be an expression of original or
inventive thought. Copyright is not concerned with the originality of ideas but with the
expression of thought, and in the case of “literary works” with the expression of thought in
print or writing. Therefore, the originality required relates to the expression of the thought.

It is from the foregoing that the distinction between idea and expression can be illustrated
using a Bible scripture quoting from Genesis 1 v 26 &27that ‘then God said, “Let us make
man in our image, in our likeness...” and at 27, ‘So God created man in his own image....’.
Hence, verse 26 highlights the conception of an idea as God at this point had the initial
thought of creating manand in verse 27, the thought or idea converted into an expression by
the creation of man. Therefore, the thought of creation was an idea and the physical
manifestation of creation was an expression.
However, it has been held in other instances that ideas dictate the form of expression
(Landsburg v Scrabble Crossword Game Player) resulting in the idea and its expression
being considered to be one. According to Fishman (2011, p.117), it is in such cases that the
“idea and its particular expression are deemed to merge and the expression-the author’s
words- is either treated as if it were in the public dormain or given very little copyright
protection”. This is what led to the conclusion in the case of Nichols v Universal Pictures
Corporation (1930)that “nobody has ever been able to fix that boundary, and nobody ever
can”.
Therefore, it is in the public interest that the copyright doctrine does contain limits on
copyright holders’ rights designed largely to mitigate copyright’s burden on creative
appropriation. According to Barrett (2008, p.101), “Copyright gives rights only in the author’s
particular means of expressing ideas and facts, never in ideas and facts themselves”. Thus
copyright does not protect the ideas but the manner in which they are expressed. Although
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this statement can be made seemingly without effort and with great ease, its application is
not an easy undertaking and thus requires much effort. This is so because copyright law
does not provide a clear distinction between the unprotected idea and the protected
expression. For many years, the courts have laboured to establish and therefore draw a clear
distinction between an idea and an expression but to no avail. This dilemma was expressed
in the case of Sheldon v Metrogoldwyn Pictures where the court said that a line “wherever it
is drawn, will seem arbitrary”.

UNIT 4 AUTHORSHIP AND OWNERSHIP OF COPYRIGHT

The Copyright and Performances Rights Act Section 2 provides that an author is the
individual who created the work.

IMPORTANCE OF IDENTIFICATION OF THE AUTHOR

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(i) It determines first ownership of copyright.
(ii) It determines the start of protection which is calculated post mortem auctoris, which is
50 years after the death of the author.
(iii) A qualifying person is linked to authorship in case of literary, musical and artistic
works.

Walter v Lane (1900) AC 539

Reporters from The Times Newspaper took down shorthand notes of a series of speeches
given by the Earl of Roseberry, a prominent politician, and later transcribed them, adding
punctuation, corrections and revisions to reproduce verbatim the speeches. These were then
published in The Times.
The Respondent published a book including these speeches, taken substantially from the
reports of those speeches in The Times. The question for the court was whether the
reporters of the speech could be considered "authors" under the terms of the Copyright Act.

Held
The author is an individual who prepares the work with considerable intellectual skill and
brain labour beyond mere mechanical operation of writing. The reporters were the authors as
they had used their skill and judgement in recording the speech; adding structure and
punctuation.

Therefore, the author is an individual who uses his effort, skill and labour into the creation or
expression of the work.

AUTHOR OF A DERIVATIVE WORK

The author of a derivative work is the person who makes the necessary arrangements for the
making of the work such as the producer of a sound recording or Director of a film.

JOINT AUTHORSHIP
A work is considered a joint work if it is a work prepared by two or more authors with the
intention that their contributions be merged into an inseparable or interdependent parts of a
unitary whole.

Cala Homes (South) Ltd & Ors v Alfred McAlpine Homes east Ltd (1995)

Held
That where two or more people collaborate in the creation of a work and each contributes a
significant part of the skill and labour protected by copyright, then they are joint authors.

The Copyright and Performance Rights Act 1994 section 3(2) provides that “a work is of joint
authorship if it is produced by the collaboration of two or more authors and the contribution of
each author is not distinct from that of the other author or authors”.
Therefore, to be considered a joint work, each author must contribute original expression and
the authors must have intended that the work be considered a joint work.

Gordon v. Lee 2007

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Two architects and another formed a partnership to design and develop properties. The firm
later split up and one of the former partners registered copyrights in various plans and
brought an action against a partner who left so that he could not use the designs.
Held
The partner who was the president had no background in architecture and contributed no
original expression. On the other hand, two architects in the same design firm who worked
together to produce the designs were joint authors both because neither person was
exclusively responsible for any of the designs and the details were used from one design to
another" and because the architects stated that the design was a "collaborative effort.

In certain instances, the authors need not have intended to create a work of joint ownership
and their contributions need not be equal, but must have intended to create a work. However,
the authors do not need to prove intention as long as they are all engaged in a joint labouring
in the furtherance of a common design.

Hodgens v Beckingham (2003) EMLR 376, CA

Mr Hodgens wrote a song “Young at Heart” for the Bananarama. While recording the song Mr
Hodgens asked Mr Valentino, a hired professional fiddle player and session musician, to add
some “jiggy” violin solo parts which featured in the introduction and several times throughout
the song.
Mr Valentino claimed to have composed the violin part and hence was a joint author as his
contribution was significant and original.

Held
That there was no requirement of the existence of a common intention as to joint- authorship
and the only requirement was that the authors should have collaborated and that their
contributions should not be separate.

Therefore, it is noticeable that collaboration does not mean an intention to create a work of
joint authorship but what is significant is that the authors had a common design including the
right sort of creative skill and judgment.

Robin Ray v Classic FM Plc (1998) FSR 622 Ch D

Mr Robin Ray was an expert in classical music and entered into a consultancy agreement
with Classic FM. He was to provide advice on their classical music repertoire and catalogue
its recorded music library. Nothing was mentioned about IP rights in any work during the
contract. He created a play list of music for the use of the radio station. He supplied various
documents and a catalogue which formed a cardinal part of Classic FM programming
database. The radio station became highly successful and wanted to grant licences to foreign
radio stations to use the database to which Mr Ray objected.
The Classic FM radio went ahead granting licences and Mr Ray claimed copyright
infringement. Classic FM claimed joint-authorship of the database having been granted an
implied assignment of copyright or an implied licence having commissioned the work.

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Held
That Classic FM failed in their claim as joint-authors as they only provided the ideas in which
copyright does not exist. Mr Ray had expressed the ideas and was solely responsible for the
ideas found in the play list.

Therefore, to be a joint-author, there has to be a significant creative contribution incorporated

in the finished work.

COPYING BY JOINT OWNERS

Joint owners can only lawfully copy with permission of all of the owners.

SIGNIFICANCE OF JOINT AUTHORSHIP

The finding of joint authorship is important to copyright protection as joint authors have their
own copyright in the work. This means that the calculation of 50 years will be after the death
of the last remaining joint author.

JOINT AUTHOR / CO-AUTHORSHIP

- In a joint authorship, the contribution of each author cannot be separated.
- In co-authorship, the contribution of each author is distinct, discrete and separately
distinguishable.

OWNERSHIP OF COPYRIGHT
The Copyright and Performances Act 1994, section 10(1) provides the basic rule that the first
owner of copyright in a work will be the author with the exception of an employee in the
course of employment where ownership rests with the employer (CPRA section 10(3a)) or
with the person who commissioned the work (section 10 (3b)).

EMPLOYEE-CREATED WORKS
This is an exception to the basic rule that the author is the first owner of copyright in work
created during the course of the author’s employment in which case copyright vests in the
employer unless there is an agreement to the contrary.

Beloff v Pressdam [1973] 1 All ER 241

The claimant, an employee of the Observer Newspaper, authored a memorandum for the
editor for publication. The memorandum referred to a conversation between the author and a
prominent member of government. It claimed the government official had said that if the
Prime Minister were to run under a bus, he was certain a Mr M would take over as P.M.
The owners of Private Eye published the memorandum and Ms Beloff sued for copyright
infringement.

Held
That the Observer provides the claimant with office space, equipment and resources, a
secretary, made deductions etc and hence she was an employee. The employer owned the
copyright in the literary work and hence the author had no standing to bring a claim.

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However, it is not enough that the author is an employee but should also have created the
work in the course of employment.

Noah v Shuba (1991) ESR 14

Dr Noah was employed as a consultant epidemiologist at the Public Health Laboratory

Service (PHLS). He created “A Guide to Hygienic skin piercing” at home in the evenings.
However, he had used the PHLS library and secretarial assistance. The PHLS then
published the guide. The defendant wrote and published an article which reproduced
substantial extracts from Dr Noah’s guide.
Dr Noah brought an action of copyright infringement. The defendant argued that copyright
was held by PHLS.

Held
That, whilst Dr Noah was an employee, he had not created the work in course of his
employment and not at the instigation of or the direction of PHLS. The defendant infringed Dr
Noah’s copyright.

NOTE: It should be preferred that employees wishing to retain copyright in the work would
rely on the express terms of the contract. Therefore, merely using the facility of the
employer does not entitle them to copyright in an employee’s creation if not made in the
course of employment.

Stephenson Jordan & Harrison Ltd v MacDonald [1952] RPC 10CA

An accountant was employed to advise clients. In his spare time, he started to give lectures
from which he then published a book. The giving of lectures was not part of his job
description and he had not been instructed by his employers to give lectures or produce a
book. He reproduced a report written for a client as part of the book. The employer however
had provided secretarial services when he was writing the book.

Held
That the employee owned the copyright and the employee’s creation was not made in the
course of his duties. However, the reproduced report written for a client and incorporated into
the book belonged to the employer.

As under normal circumstances, an architect’s practice will own all the copyright created by
its employees in the course of their employment, this might not apply to freelancers or those
engaged through an agency. Therefore, it is very important to ensure these workers (and
their agencies) are subject to written agreements that place all ownership of copyright in the
hands of the practice.

BENEFICIAL OWNERSHIP AND IMPLIED LICENCES IN COMMISSIONED WORKS

A consultant or an expert in a particular field who is commissioned to create a work is not an
employee and hence owns the copyright in the work. For transfer of ownership, the
assignment has to be in writing and signed by the parties.
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However, if no licence has been agreed, a licence will be implied to the extent necessary to
achieve the intentions of the parties at the time the work was commissioned.
(i) Where an architect charges a nominal fee, the court will only imply a licence to use the
copyright works for the precise purpose for which the work was created.

(ii) Where client pays a full scale fee or equivalent substantive fee for the architect to
prepare drawings for planning permission, it is likely that the court will imply a licence
to use the drawings for the construction of the building, as well as to obtain planning
permission.

Blair v Osborne & Tomkins [1971]1 All ER 468, CA

An architect had been employed under RIBA Conditions of Engagement 1962 to prepare
drawings for planning permission and permission had been granted. His client sold the land
and handed over the architect’s plans as part of the sale. The purchaser used its own
surveyors to obtain building regulation approval. The architect claimed that this was a breach
of copyright in his drawings.

Held
That “…when the owner of a building plot employs an architect to prepare plans for a house
on that site, the architect impliedly promises that, in return for his fee, he will give a licence to
the owner to use the plans for the building on that site. The copyright remains in the architect,
so that he can stop anyone else copying his plans, or making a house from them; but he
cannot stop the owner, who employed him, from doing work on that very site in accordance
with the plans. If the owner employs a builder or another architect, the implied licence
extends so as to enable them to make copies of the plans and to use them for that very
building on that site: but for no other purpose. If the owner should sell the site, the implied
licence extends so as to avail the purchaser also. Therefore, the payment of £70 to Mr. Blair
covered the use of the drawings, not only by Mr. Underwood and Mr. Norris themselves, but
also by the people to whom they sold the plot, and by the surveyors and workmen of the
purchasers, so that they might make copies of them and otherwise use them in the
accustomed way for building a house on this site. The claim for infringement of copyright
fails.” Per Lord Denning MR

ARCHITECTURAL WORKS
The ownership of the physical documents and the ownership of the copyright in the works
may not always be the same.
(i) Generally, the ownership of plans and drawings prepared for, and used in a project,
will pass to the client upon payment of the architect for his services unless there is any
express agreement to the contrary. An unpaid architect is entitled to exercise a lien
over the documents until payment of the sum due has been received.
(ii) Property in documents prepared as the client’s agent (e.g. communications between
the architect and a contractor generated during the architect’s role as contract

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 administrator) belong to the client as principal subject to the architect’s lien for non-
payment.
(iii) Documents prepared by the architect for his own benefit in carrying out his work (e.g.
draft plans, calculations, internal housekeeping records, memoranda, etc) are not
prepared by the architect as the agent of the client, but as a professional person and
these belong to the architect unless the client has been charged for their preparation
or with agreement to the contrary.

The client has a licence to copy, use and allow other persons providing services to the
project to copy and use drawings, documents, bespoke software and all other such work
produced by or on behalf of the architect in performing the services. Similarly, an Architect is
not liable for any use of such material for the purposes for which it was prepared. Where the
material relates to a design prepared by or on behalf of the Architect, such purposes include
operation, maintenance, repair, reinstatement, alteration, promotion, leasing and/or sale of
the Project. However, the use of the material excludes the reproduction of the design for any
part of the extension of the Project, and/or for any other project except with the consent of the
original architect or payment of a fee.

PRACTICAL STEPS TO PROTECT AN ARCHITECT’S COPYRIGHT

(i) On completion of a copyright work, put your name on it and date it. Use the © symbol
to maximise the protection.
(ii) While an employer becomes the owner of the copyright in a copyright work produced
by an employee in the course of the employment the employer should ensure that
there is a written contract which includes an assignment of the copyright and waives
moral rights with the worker before the work commences.
(iii) Ensure that appointments contain an appropriate provision which confirms the
architect’s ownership of the copyright in any works which are to be created and which
grants an appropriate licence to the client to use the copyright works for a particular
project or the purpose for which they have been created.
(iv) Expressly confirm that the architect is not liable for the use of the copyright works for
any purpose other than the purpose for which they were created.
(v) Limit the licence to copyright works such as design plans.

UNIT 5 SECONDARY OR DERIVATIVE WORKS

Derivative or secondary works are works that are derived from already existing works based
on original works and which may have their own separate copyright protection. Whilst these
works may not be original, there is a requirement that they be recorded.

The derivative works are protected under the Berne Convention Article 2.

Examples include:
(i) Translations of works into a different language.
(ii) Adaptations of works, such as making a film scenario based on a novel.
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(iii) Arrangements of music, such as remixes.
(iv) Compilations of literary and artistic works, such as encyclopedias and
anthologies. In such a case, the originality resides in the choice and arrangement
of the materials.
However, it should be emphasised that permission should be obtained from the original
owner of the works before embarking in a derivative work. For example, an author intending
to translate a novel into another language should seek proper authorization from the author
of the novel that will be translated.

THE DE MINIMIS PRINCIPLE

As was seen earlier in the case of Interlego AG v Tyco Industries Inc, it was made clear that
copyright protection could not be afforded to works that are trivial or so small as to be entirely
insignificant. The courts often use the principle de minimis non curat lex, meaning that the
law does not concern itself with trifles, e.g. EXXON could not be an “original literary work
“without recourse to the de minimis principle”. Similarly, a name or single word cannot be
subject of copyright nor will a quote of a part of a sentence or titles or advertising slogans.

Sinanide v La Maison Kosmeo (1928) 139 LT 365

The claimant used an advertising slogan “Beauty is a social necessity, not a luxury”. The
defendant later used the phrase “A youthful appearance is a social necessity”. The claimant
alleged copyright infringement.
Held
That to quote a bit of a sentence of a literary work was too small a matter on which to base a
copyright infringement action.

SUBSTANTIAL EDITING OF A WORK

Whether a new copyright is created by substantial editing of a work which is already in the
public domain depends on the amount of work and skill that has been put into an already
existing work. In determining that a work is substantially similar the courts have used the
"ordinary observer" or "overall look and feel" test under which two works will be substantially
similar if a "reasonable, ordinary observer, upon examination of the two works, would
conclude that the defendant unlawfully appropriated the plaintiff's protectable expression'.
(Newton v. Diamond (2004))

Hyperion Records Ltd v Sawkins [2005] RPC 808, CA

Dr Sawkins wrote new performing editions of some musical compositions that had gone out
of copyright. He added some new aspects and also corrected notes that he considered
wrong or unsatisfactory to make it possible to play. Hyperion re-recorded that music without
Dr Sawkins authority claiming there was no copyright subsisting in the original works.
Dr Sawkins alleged copyright infringement.

Held

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It was clear that the music could not have been played at all without Dr Sawkins’ work in
creating the performing editions. Hyperion’s argument that Dr Sawkins had not written any
new music so this was not a musical work is rejected. Hyperion infringement copyright.

However, even where copying has been conceded, no legal consequences will follow from
that fact unless the copying is substantial.

SOUND RECORDINGS

The Copyright and Performance Rights Act 1994, Section 2 defines sound recordings as
being:
(a) A recording of sounds from which sounds may be reproduced.
(b) A recording of the whole or any part of a literary or musical work, from which sounds
reproducing the work may be produced, regardless of the medium on which the
recording is made or the method by which the sounds are produced or reproduced.

There is no requirement for the quality of sound recordings.

It should be noted that the Act talks of ‘sound’ and not ‘music’ so as to encompass the
recordings of sounds not of a musical nature, e.g. The sound of a train engine or a bird song
will be a sound recording even though they are not ‘works’.

BROADCAST
The Copyright and Performance Rights Act 1994, Section 2 defines a broadcast as:
(a) A noun, means the aggregate of sounds or of sounds and visual images or other
information, embodied in a program as transmitted by broadcasting.

(b) A verb, means to transmit by the emission of electromagnetic energy...........for

reception by members of the public, visual images or sounds, or both......
This definition includes conventional radio and TV broadcasts, and do not have to be fixed in
hard copy.

UNIT 6 WORKS EXCLUDED FROM COPYRIGHT PROTECTION

(i) PUBLIC POLICY EXCLUSION OF COPYRIGHT

Whilst copyright subsists in works which are against public interest, the courts retain the
ability to deny copyright protection on the grounds of public policy. The public policy grounds
include:
(i) Immorality or scandalous
(ii) Fraudulent and deceptive works
(iii) Breach of Confidence.
(iv) Blasphemous
(v) Injurious to public life, public health and safety
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(vi) Injurious to the administration of the law.

(ii) IMMORALITY OR SCANDALOUS

Glyn v Weston Feature Film Co. [1916]1Ch 261

The plaintiff was the authoress of the novel entitled “Three Weeks” which was first published
in 1907. The book was about an episode in a young Englishman’s life, who visits the Swiss
Lucerne Hotel and meets a beautiful lady. This meeting developed into a sexual relationship
which lasted for three weeks. The lady returned to her shadowy realm where she was a
queen. She then gave birth to a son to whom the young Englishman was the father. The lady
was then murdered by the husband who was the king of the country but was in turn
assassinated by the Queen’s faithful attendant. The child remained to succeed to the throne.
The defendant’s film was entitled “Pimples Three Weeks (without an option)”. The film was
farcical and vulgar to an almost inconceivable degree. It would seem the film was based on
the book.

Held
The episode described in the plaintiff’s novel is grossly immoral in its essence, in its
treatment, and in its tendency....... It is clear law that copyright cannot exist in a work of a
tendency so grossly immoral which advocates free love and justifies adultery..........

(iii) FRAUDULENT AND DECEPTIVE WORKS

Sligsby v Bradford Patent Truck and Trolley Co (1905) WN 122

The claimant produced a trade catalogue which claimed falsely that certain patents belonged
to the owner. Some of the material was copied by the defendant.

Held
That copyright did not subsist in the work which contained false statements calculated to
deceive the public.

(iv) WORKS THAT ARE IN BREACH OF CONFIDENCE

A-G v Guardian Newspapers Ltd No 2 [1990]1 AC 109 (Spy Catcher)

An ex-member of the security service had written a book in breach of his obligation of
confidence, disclosing information prejudicial to the public interest.

Held
That the author may own the copyright but the court was not prepared to enforce it.

Lord Jauncey of Tullichettle said;

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“His action reeked of turpitude. It is in these circumstances inconceivable that a UK Court
would afford to him or his publishers any protection in relation to any copyright which either of
them may possess in the book. That being do, anyone can copy Spycatcher in whole or part
without fear.........”

UNIT 7 AUTHOR’S RIGHTS

The author’s rights are moral rights and economic rights.

(1) MORAL RIGHTS

The moral rights allow the author to take certain actions to preserve the personal link
between himself and the work.
The Berne Convention Article 6bis on the author’s moral rights provides that the author has
the following rights:
(i) To claim authorship even after the transfer of such rights.

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(ii) To object to certain modifications,distortion, mutilation or other derogatory actions
which may be prejudicial to the author’s honour or reputation.
(iii) To maintain these rights even after the death of the author until the expiry of the
economic rights although this is not mandatory and the rights may cease to be
maintained unless provided for in the legislation in a member state.

RIGHT TO BE IDENTIFIED
Further provision is to be found in the CPRA section 24 (2a) which provides for the right to be
identified or acknowledged as the author or director of the works and this right is also referred
to as the “paternity right” or “right of attribution”. This right is only available to the copyright
owner.

ARCHITECT’S RIGHT TO BE IDENTIFIED

The Architect owns the copyright in the original work produced in the performance of the
services and generally asserts the Architect’s moral rights to be identified as the author of
such work. This is the right to be identified as the author of a work.
(i) The author of a work of architecture in the form of a building has the right to be
identified on the building, as constructed, or where more than one building is
constructed to the design, on the first to be constructed by appropriate means visible
to persons entering or approaching the building.
(ii) The author of an artistic work has the right to be identified, in the case of a work of
architecture in the form of a building or a model for a building, a sculpture or a work of
artistic craftsmanship, when copies of a graphic work representing it, or a photograph
of it, are issued to the public.

(iii) The author of an artistic work (e.g. a design plan) has the right to be identified (in or on
each copy) whenever the work is published commercially or exhibited in public, or a
visual image of it is broadcast.

RIGHT TO OBJECT TO DEROGATORY TREATMENT

The CPRA section 24 (2b) provides for the right to object to derogatory treatment of a work
which is a “right of integrity”.
(i) This means that the author has a right to object to any distortion, mutilation or other
modification or derogatory action in relation to the work that would be prejudicial to his
honour and reputation. Treatment means the addition to, deletion from, alteration to or
adaptation of a work but does not include translation, arrangement or transcription.
(ii) Right to object to false attribution of authorship.

(iii) Not to have an artistic or literary work falsely attributed to him as the author.

This right only applies were the author is identified and no disclaimer has been included. It
should be noted that the right only applies to the commercial publication or when issued to
the public.

Confetti Records v Warner Music UK Ltd [2003] EWHC 1724 Ch D

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Mr Alcee composed a piece of music called “Burning” which he sold to Confetti. The
Heartless Crew made a rap version of the song and this version contained words and
references to violence and drugs.
The Original Composer, Mr Alcee claimed derogatory treatment of his work.

Held
That the addition of rap lyrics was not a derogatory treatment of his work as there was no
evidence of some damage to the author’s honour or reputation.

NOTE: It is not up to the author, but in the eyes of right thinking members of the public to
decide if the reputation of the author has been prejudiced by the derogatory treatment.

Furthermore, it is an infringement to subject a building (rather than a model of it) to

derogatory treatment. In that event, the author has the right to have any identification of him
on the building removed.

Therefore, the moral rights to be identified as the author should be asserted in the architect’s
contract of appointment, so that a separate assertion is not required later.

EXCEPTIONS TO THE RIGHT OF ATTRIBUTION AND INTEGRITY

(i) Computer programs or any computer-generated works.
(ii) Works made for the purposes of reporting current events.
(iii) Fair dealing for the purposes of reporting current events by means of a sound
recording, film or broadcast
(iv) Employee created works

(2) ECONOMIC RIGHTS

The economic rights allow the owner of rights to derive financial reward from the use of his
works by others.
The CPRA section 17 provides that the owner of the copyright in a work shall have the
exclusive right to:
(i) Publication
(ii) Reproduction in any material form
(iii) Broadcasting or inclusion in a cable program service
(iv) Communicate the work to the public
(v) Importation of copies into Zambia.
(vi) Adaptation of the work

PUBLICATION
The CPRA sec 17(2a) provides that the publication of a work is the owner’s right to issue
copies to the public. This could also include the exclusive right to perform a literary, dramatic
or musical work in public and the right to play or show a sound recording, film or broadcast in
public.

REPRODUCTION

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The CPRA sec 17 (2b) provides that the owner’s right to copy literary, dramatic, musical and
artistic work in any material form, including the storing in any medium by electronic means.
This includes the changes in dimension from two-dimension to three-dimension and vice-
versa.

E.g. An architectural drawing ---------------------- House

A sculpture ---------------------------------------- Photogragh

British Leyland Motor Corp Ltd v Armstrong Patents Co. Ltd (1986) AC 577

The claimant manufactured motor vehicles whilst the defendant manufactured spare parts
compatible with the claimants’ vehicles.

Held
That the defendant had infringed copyright in the claimant’s design documents but that the
benefits of having a competitive market in the provision of spares outweighed the claimant’s
right to copyright protection.

Hence, the owner of the copyright in an architectural drawing will be able to prevent an
unauthorised third party from making a house of the same drawing. Similarly, the copyright
owner in a sculpture will be able to prevent unauthorised photographs being taken.

COMMUNICATE THE WORK TO THE PUBLIC

The CPRA sec 17(2d) confers an exclusive right on the copyright owner to communicate their
work to the public. This covers both broadcasts and internet transmissions.

ADAPTATION
The CPRA sec 17(f) provides that the adaptation of a work is restricted to literary, dramatic
and musical works. It also includes the translation of a literary or dramatic work or converting
a dramatic work into a non-dramatic form and an arrangement or transcription of a musical
work.

Such an adaptation may also qualify for copyright protection as long as the originality
requirement has been satisfied.

E.g. Sarafina the song, and the adapted Sarafina the movie.

UNIT 8 EXPRESS ASSIGNMENTS AND LICENCES

The copyright owner can deal his works in any way that he feels like by exploiting it
individually or he may choose to sell it, assign it or even licence it. Therefore, whilst economic
rights can be transferred or assigned to other owners usually for a sum of money or royalties
depending on the proposed usage of the work, the moral rights can never be transferred and
always remain with the original author of the work.
The CPRA section 7 provides that “copyright is a property right” which subsists in the
products of creativity and can be exploited in two main ways:
(i) Assignment
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 (ii) Licence

ASSIGNMENT
The CPRA section 11 defines an assignment as a transfer of ownership. The assignment can
only be effective under section 11(4) if it is “in writing, signed by or on behalf of the assignor”.

Savoury (EW) Ltd v The World of Golf Ltd [1914]2 Ch 566.

Held
That, a written receipt for card designs inclusive of all copyright was sufficient to assign the
copyright to the purchaser.

The assignment of copyright may involve the transfer of the whole copyright in a work
(absolute assignment) or may be limited (partial assignment) depending on the wishes of the
copyright owner or by the agreement of the parties.

The CPRA section 11 (2) provides that an assignment of copyright may be limited by:
(a) One or more particular acts which the copyright owner has the exclusive right to
authorise under this Act, e.g. an adaptation.
(b) A part of the period for which the copyright subsists under this Act.
(c) A specified country or geographic area. E.g. there are books on which it is specified
that they are “Only for sale outside the United Kingdom”.

LICENCE
A licence does not involve the transfer of ownership but is permission granted by the
copyright owner to the licencee to use a work within the exclusive rights of the owner. This
allows the licencee to exploit the work within the agreed terms without infringing copyright. In
most instances, the licencee pays the licensor a lump sum or royalties for the period of the
licence.

IMPLIED LICENSE
Original architectural works are normally subject to copyright protection and may therefore
form the basis for a copyright infringement suit. However, the copyright owner can sell or
license his rights to someone else but the transfer of ownership has to be in writing.

The CPRA section 22 (3) provides that the copyright owner may authorise a collecting
society to negotiate and administer collective copyright licence agreements on behalf of the
owner or other copyright owners.

Zambia Music Copyright Protection Society v Mobi T.V. International (2012/HP/0954) [2015]
ZMHC 83 (29 June 2015)

COLLECTING SOCIETIES
The CPRA section 22 (1) defines a collecting society as “an association, partnership or body
corporate whose principal purpose, or one of whose principal purposes, is the representation
of copyright owners in the negotiation and administration of collective copyright agreements”.

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Examples:

- Zambia Music Copyright Protection Society (Zamcorps)

- Zambia Association of Musicians
- Zambia Union of Musicians

- Book Publishers Association of Zambia is the mother body for all publications made in
Zambia.

The CPRA section 22 (3) provides that the copyright owner may authorise a collecting
society to negotiate and administer collective copyright licence agreements on behalf of the
owner or other copyright owners.
This means that the rights owners, who are members of these societies, assign their rights to
be exploited and in return the societies licence the rights to those wishing to exploit them by
payment of royalties. The royalties so collected are then distributed to the rights owners who
are members of the society.

COLLECTIVE COPYRIGHT AGREEMENT

A collective copyright agreement is an agreement between a group of copyright owners and
another person or association, licencing that institution to use the material subject to any of
the copyrights.

UNIT 9 COPYRIGHT INFRINGEMENT

The CPRA section 17 (1) provides that the owner of copyright in a work shall have the
exclusive right to do or to authorise others to do the controlled acts.

Copyright infringement is the unauthorized use of copyrighted material in a manner that

violates one of the copyright owner's exclusive rights, such as the right to reproduce or
perform the copyrighted work or to make derivative works that build upon it without putting
forward any defence. Copyright infringement and piracy are not victimless crimes as many
people think as the true victims are the creators, designers, authors, composers, songwriters,

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film makers and investors. Without these individuals there would never be anything new. It is
also an infringement for a person to order another person to do a restricted act.

PIRACY
Piracy is the illegal copying of music products that have been released without permission
from the copyright owner. This may be done by way of copying music onto or from a
cassette, CD, a hard drive or even the Internet.

ACTS RESTRICTED BY COPYRIGHT

The CPRA section 17 (2) provides for controlled acts in relation to literary, musical works or
to a compilation or computer program as:
(a) The Compilation
(b) The reproduction in any material form
(Autospin (Oil Seals) Ltd v Beehive Spinning [1945] RPC 683)
(c) The broadcasting or inclusion in a cable program service
(d) The Communication to the public by any other means
(Harms Ltd & Chappell v Martans Club Ltd [1927]1 Ch526)
(e) The importation into Zambia of copies
(f) The adaptation of the work.
Redwood Music v Chappell [1982] RPC 109
ZYX v King [1995] FSR 566

AUTHORISATION
It is an infringement to perform a controlled act and even to authorise another to do so
without the authority of the author or his successors.
However, the making of copying equipment does not amount to authorisation unless there is
some encouragement or the turning of a blind eye to infringement.

CBS Songs Ltd v Amstrad Consumer Electronics Plc [1988]1 AC 1013, HL

The defendant, Amstrad, manufactured and sold dual-tape cassette deck machines which
enabled high speed recording from pre-recorded cassette tapes to blank cassette tapes.
CBS alleged that the defendant by making, advertising and selling its machine had
authorised members of the public to infringe their copyright.

Held
That supplying machines which would be likely to be used unlawfully to infringe copyright
protection was insufficient to make the manufacturer or supplier a primary infringer. Even
though Amstrad knew that the machine would be used to infringe copyright in many cases
they did not actively encourage users to infringe copyright.

NOTE: Amstrad had no control over the use of the twin cassette tape machines nor was
there a common design between Amstrad and the purchasers of its machines.

DISCUSS:
What do you think about peer-to-peer file sharing? Are the share providers liable for
authorisation? What of internet service providers?
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E.g - Lime Wire, Kickass.com, KAZAA, etc.

SUBSTATIAL PART INDIRECT INFRINGEMENT

The Copyright and Performance Rights Act 1994 section 2 provides that “substantial part”
includes any part of a work which on its own can be identified as a part of the work of
someone who is familiar with the work.

Not only copying the whole work but also copying a substantial amount will amount to
infringement of copyright. (LB Plastics Ltd v Swish Products Ltd- Drawer case)

It is difficult to determine what a substantial part is as there is no standard measure. The

courts determine substantial by reference to the quality of what was taken and not the
quantity. Even a very small part of work can be substantial if it is the most valuable or
memorable piece in the work.

E.g. JK’s use of words from PK Chishala’s hit single “Ubushiku bulalepa”

Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273

William Hill sent out betting coupons to its customers each week. Ladbroke began to send
out coupons which closely resembled William Hill's coupons. The respondents had 16 lists:
the appellants' coupon contains 15 of these lists, all of which appear in the same order as in
the respondents' coupon. Moreover, the varieties of bets offered by the appellants in each of
these 15 lists are almost identical with the offers by the respondents in their corresponding
list. One exception was that each of these lists was to be found in one or more of the other
bookmakers' coupons and some are to be found in almost all of them. But the appellants did
not suggest that the close resemblance between their coupon and the respondents' coupon
is fortuitous. They admit that a good deal was simply copied from the respondents but that
they were entitled to do that. That by no means was everything copied.

Held
What is substantial must be decided by its quality rather than its quantity. The significance of
the part taken is a matter of fact and degree. There was copyright in the compilation and that
the appellants had reproduced a substantial part of that work

Therefore, it could be concluded that where sufficient skill, effort and judgment has been
expended into making a compilation, the copying of a small portion of the work can infringe
copyright if that part is important in relation to the whole work.

Designers Guild v Russell Williams Ltd [2001] FSR 113, HL

The claimant owned copyright in an impressionistic fabric design comprising vertical stripes
with scattered flowers around the design. Using a Similar idea, the defendant created a
similar design but with many detailed differences.

Held

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That the test was to establish whether the infringer had copied a substantial part of the
claimant’s work by assessing whether the second work has been copied from the first. The
court has to decide whether the defendant’s work incorporates a substantial part of the skill
and labour involved in the creation of the claimants work. That “substantiality depends upon
quality rather than quantity…”. There was infringement.

However, the principle of substantial taking displaces the earlier notion that ‘any’ copying of a
protected work will automatically translate to infringement.

Newspaper Licensing Agency v Marks & Spencer Ltd [2003] 1 AC 551

The defendant, (M&S), obtain press cuttings from an agency licensed by the claimant. It then
made further copies of the press cuttings for internal circulation. The claimant alleged
copyright infringement in the typographical arrangement of published editions of certain
newspapers.

Held
That typographical arrangement copyright subsisted in the newspaper as a whole and none
of the individual cuttings constituted a significant part of the newspaper. None of the press
cuttings sufficiently reproduces the layout of any page to amount to a substantial part of its
typographical arrangement. M & S had not reproduced anything that could be regarded as
either resembling the newspaper or having newspaper-like qualities. Substantiality is more a
question of quality rather than quantity. Appeal Dismissed.

RENTAL AND LENDING COPIES OF A WORK TO THE PUBLIC

The Copyright and Performances Rights Act 1994 section 4(3) provides that any distribution
or circulation of a work by way of sale or rental constitutes making copies of the work
available to the public and hence is a publication.
This right is held by the copyright owner under the CPRA section 17(2a) and only the rights
owner can issue copies to the public. Also, section 19(c) provides that copyright in a work is
infringed by a person who without consent of the copyright owner sells, lets for hire, offers or
exposes for sale or hire articles which are infringing copies of the work.

RENTAL
Rental is not defined under Zambian intellectual property legislation but is said to be the
making of a “copy of the work available for use, on terms that it will or may be returned, for
direct or indirect economic or commercial advantage”. (CPRA section 18A (2))

LENDING
Lending is defined as “making a copy of the work available for use on terms that it will or may
be returned, otherwise than for direct or indirect economic or commercial advantage, through
an establishment which is accessible to the public”.

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However, neither rental nor lending covers the making available of copies between
establishments accessible to the public by way of the loan system by public libraries.

SECONDARY INFRINGEMENT
The CPRA section 18 provides that secondary infringement occurs where an individual
facilitates primary infringement activities or deals in infringing copies for commercial gain.
Secondary infringement includes:
(i) Permitting a place of public entertainment to be used for an infringing
performance (Harms Ltd and Chappell v Martians Club Ltd [1927]1 CN 526)
(ii) Providing apparatus for making or transmitting an infringing article ( CPRA s20)
(iii) Importing, other than for private use, an infringing copy with the knowledge or
belief that it infringes copyright.(CPRA section 19(a) )
(iv) Possessing, hiring, selling or prejudicially distributing an infringing copy of a work
(CPRA section 19 (b-e)).
(v) Making, letting for hire, importing or possessing an article designed or adapted for
making illegal copies and having “reasonable belief” the article will be used to infringe
copyright.

LA Gear Inc v Hi-Tec Sports Plc [1992] FSR 121, CA

An LA Gear employee had made drawings for sports shoes (Fire shoe for men and Flame
shoe for women) which the plaintiff manufactured. It was later discovered that Hi-Tech Sports
had made a prototype shoe (Flair shoe). The LA Gear alleged the defendant was infringing
copyright of their drawings.
The LA Gear lawyer sent the defendants a letter with drawings claiming they held the
copyright in them,

Held
That the defendant had “reason to believe” that its flair shoe was an infringing copy of the fire
shoe or flame shoe based on the concept of knowledge of facts from which a reasonable
man would arrive at.

INFRINGEMENT OF ARCHITECTURAL DRAWINGS

Whilst a court can find designs to be visually similar with the same general layout it may
nonetheless find the dissimilarities significant enough to preclude a finding of infringement.
Common elements across the two floor plans may include the number of bedrooms, a two-
car garage, living room, dining room, family room, foyer, kitchen, two bathrooms, a nook, and
a porch which although “substantially similar,” no reasonable jury could find the two floor
plans at issue to be a copyright infringement.
For architectural copyright infringement, a plaintiff must prove:
(i) Ownership of a valid copyright.
(ii) Copying of protectable elements.

Miller’s Ale House, Inc. v. Boyton Carolina Ale House (2012)

Held
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In order to establish ownership of a valid copyright, the plaintiff must prove, among other
things, that the work is original which means only that the work was independently created by
the author and that it possesses at least some minimal degree of creativity
To establish copying, the plaintiff must show as a factual matter that the defendant copied the
protected work and that the protected expression itself was copied.

Dream Custom Homes, Inc. v. Modern Day Const., Inc. (2012)

Held
In the absence of direct proof of copying, a plaintiff may prove copying “by demonstrating that
the defendants had access to the copyrighted work and that the works are ‘substantially
similar.

The test for substantial similarity for architectural works is “whether a reasonable jury could
find the competing designs substantially similar at the level of protected expression.

Home Design Services Inc. v Turner Heritage Homes, Inc. (2015)

Home Design is a residential design firm that sells pre-drawn house plans through magazine
publications and websites. It filed this suit against Defendants for copyright infringement of an
architectural home design titled “HDS- 2089,” claiming that Defendants built 165 infringing
homes as part of their “Laurent” and “Dakota” designs based on slightly modified copies of
the HDS-2089.
The court compared the HDS-2089 floor plan with one of the first few Laurent homes that
Defendants built and noted “extraordinarily similar,” to the point that they felt the HDS-2089
may have been copied as “the overall shape, the massing, the individual layout of the rooms
is the same. They all have the same shape, width, and length. . . They have the same
organization of rooms, the foyer, the dining room and living room on other side.”

Held
The inclusion of standard architectural features, such as large living spaces in the middle of
the home or secondary bedrooms located on a particular side of the house, are merely
“ideas” that are generally unprotected. The Court finds that the overall similarity in look and
feel will not outweigh significant differences in the designs that existed at the level of
protected expression.

One of the most high-profile victims of copycat architects is Zaha Hadid. The Veuve Clicquot
businesswoman of the year is currently taking legal action against a Chinese construction
firm that is building a design in Chongqing remarkably similar to Hadid’s Wangjing Soho
complex in Beijing.

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Hadid’s Wangjing Soho complex for Beijing

The Meiquan 22nd Century building in Chongqing could be finished before Hadid’s Wangjing
Soho.

UNIT 10 DEFENCES TO COPYRIGHT INFRINGEMENT AND PERMITTED ACTS

The Berne Convention Article 10(1) provides that “it shall be permissible to make quotations
from a work which has already been lawfully made available to the public, provided their

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making is compatible with fair practice” as long as mention is made of the source and the
name of the author.

The CPRA section 21 provides that the following acts shall not constitute copyright
infringement:
(a) Fair dealing for personal purposes of private study or research and not for profit.
(b) Fair dealing for purposes of criticism or review provided there is sufficient
acknowledgement.
(c) Fair dealing for purposes of reporting current events in newspapers, magazines,
periodicals, audiovisual, broadcasting.
(d) Reproduction of a work for purposes of judicial proceedings.
(e) Reading or recitation in public of a reasonable extract with sufficient
acknowledgement.
(f) Reproduction for purposes of the education system in Zambia:
(i) By a teacher or pupil in course of instruction.
(ii) As part of examination questions
(iii) In answer to examination questions.
(g) Performance of a dramatic work by the staff and students of a school or other
educational institution for the purposes of the education system of Zambia, if the
audience is composed of:
(i) Staff and students of the school
(ii) Parents and guardians of the students
(iii) Other persons directly connected with the activities of the school.
(h) The incidental inclusion of a work in an artistic work, audiovisual work, sound
recording, broadcast or cable program which must be non-deliberate inclusion.
(i) The reproduction of a work by a library or archive designated by the minister for
purposes of a permanent collection provided that it is not reasonably practicable to
purchase a copy.
(j) The reproduction of a computer program made from an original copy for purposes of
storage in case of loss, destruction or corruption of the original.
(k) The recording of a broadcast or cable program for purposes of listening or viewing at
an appropriate time.

Football Association Premier League Ltd v Panini UK Ltd [2004] FSR1

Panini distributed for sale collective stickers of famous football players together with a sticker
album. The stickers and album were called “Panini’s Football 2003 sticker collection” with a
total of 396 football players. Each sticker had a portrait of a player in their club Jersey and
some in their international strip. Panini marked the album as “unofficial”. The official collection
was marketed by Topps Europe Ltd under licence by the Football Association Premier
League Ltd. Topps were licensed to use and reproduce official team crests and logos in the
production of stickers and albums.

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A case was brought against Panini by Topps and fourteen clubs in the premier League for
copyright infringement in the club badges and emblems (as artistic works).Panini argued that
its reproduction was an incidental inclusion.

Held
“What is incidental will depend on all the circumstances of each case and it would be
impossible to provide a satisfactory definition for all circumstances. The inclusion of the
badge and emblem is essential to the objective for which the image of the player was created
and hence it is impossible to say that the inclusion was ‘incidental’.
There was copyright infringement.

FAIR DEALING: Criticism or Review

Pro Sieben Media AG v Carlton UK Television Ltd [1999]1 WLR605

Pro Sieben had broadcast a programme (TAFF) with an exclusive interview with a woman
who had an octuplets pregnancy. The defendant produced a current affairs programme, “The
big story: Selling Babies” which featured a 30 second extract from TAFF.
The defendants argued fair dealing in their use of the extract that it was for purposes of
criticism, review or for reporting current affairs.

Held
That there was no copyright infringement as the programme was made for the purpose of
criticism of works of cheque book journalism in general.

Two things have to be established in order to rely on this exception:

(i) Identifying or acknowledging the author of the story by name or logo in writing or
spoken
(ii) The work has been made available to the public.

FAIR DEALING: Non-commercial Research or Private study

What have to be considered are the number, extent and proportions of extracts from a
copyrighted work. However, there is a requirement for a sufficient acknowledgement
including the name of the author and the title of the work.

Commercial Purpose

This means the direct or indirect profit making.

Private study
Private study suggests an activity carried out by an individual in pursuant of a formal
qualification. With the cost of university education at a record high, textbooks and other
written materials have become increasingly difficult for students to afford let alone to find in
university libraries and bookshop.
Whilst a lecturer is not permitted under the fair dealing exception to supply copies of an
article to all his students in his or her class recent case law is tending to move away from that

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notion as long as the lecturer is not disguising their true purpose based on the fair dealing
exception such as attempting to copy the materials for a commercial purpose.

Alberta (Education) v Canadian Copyright Licensing Agency (Access Copyright), 2012

Access Copyright is an organization which represents authors and publishers of literary and
artistic works. The organization oversees the reproduction of such works by issuing licenses
which ensure that individuals who reproduce works covered by the organization’s repertoire
pay a royalty charge which is then distributed to the various authors involved. With respect to
the case of Alberta, Access Copyright filed a tariff with the Copyright Board regarding
materials which were being reproduced within elementary and secondary schools in all
provinces apart from Quebec.
This case effectively turned upon the notion of “fair dealing” and its application to the relevant
facts involved. Upon reviewing Access Copyright’s application, the Copyright Board
determined that any copies made at the teacher’s initiative on the student’s behalf, with
instructions that they read the materials, were made for the allowable purpose of “research or
private study” within s. 29 ofthe CMA. However, the provision of these materials was not
found to constitute “fair dealing” and was therefore subject to a royalty. The Alberta
Education started an action for judicial review but the finding of the Board was upheld. They
then appealed to the Supreme Court of Canada for a final review.

Held
That so long as the teacher was not disguising their true purpose based on the fair dealing
exception – for example, attempting to copy the materials for a commercial purpose – their
actions should be deemed to fall under the purpose of “research or private study”. In this
case the teachers were not making multiple copies for themselves but rather were creating
the copies for their students.
There was not infringement.

Sillitoe v McGraw-Hill Book Co. (UK) Ltd [1983] FSR 545

The defendant had published “study notes” intended as study guides for GCE ‘O’Level
examinations. He reproduced a substantial part of the claimants’ works in the study notes.
The defendant contended that the study notes fell within the provision of fair dealing for
purposes of research or private study.
Held
The defendant was not engaged in research or private study but was merely facilitating this
for the students who purchased the copies of the study notes.

FAIR DEALING: Reporting Current Events

The whole purpose of fair dealing is to permit the taking of a substantial part of a copyrighted
work.

BBC v British Satellite Broadcasting Ltd [1991] 3 WLR 174.

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This case involved the taking of excerpts from broadcasts of world cup football matches
made by the BBC. BSB intended to use the excepts in its broadcasts.

Held
That fair dealing for the purpose of reporting current events is not confined to reporting of
current events in general news programmes but extends to material from sports news
programmes.

Hyde Park Residence v Yelland [2001] Ch 143

The defendants had published in The Sun newspaper, stills from a security video camera
which showed Princess Diana and Dodi Al Fayed arriving and departing from a Paris Villa.
The claimant, responsible for security, claimed copyright infringement.
The defendant argued the publication was for purposes of reporting current events because it
refuted allegations by Mohammed Al Fayed that the couple’s visit was to make wedding
plans.

Held
Use of the security video stills was for the purpose of reporting current events as it related to
recent media coverage of Mr Al Fayed’s claims about his son and Princess Diana. However,
whilst the story was in the public interest, the publication of stills was not.

PUBLIC INTEREST DEFENCE

It has been generally accepted that the public interest overrides copyright. In this regard,
there are instances when the Freedom of Expression under the Human Rights protects the
right to publish information and to receive it.

Public interest will cover situations such as:

(a) - Disclosure of criminal conduct
(b) - Immoral, scandalous or contrary to family life
(c) – Injurious to public life, public health and safety or the administration of justice
(d) – Incites or encourage others to act in a way referred to in (b) above.

Lion Laboratories Ltd v Evans [1984] 2 All ER 417

The defendant wished to publish information on doubts about the reliability of the
breathalyzer, Lion Intoximeter 3000. The devices had been used to breathalyse about 700
motorists suspected of drink-driving.
The claimant alleged breach of confidential information and that publication would infringe
copyright.

Held
The public interest applied to both the confidence and copyright issues and that it was in the
public interest to publish the information.
UNIT 11 REMEDIES FOR COPYRIGHT INFRINGEMENT

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The CPRA Part 3 section 25 (1) provides that “an infringement of copyright shall be
actionable in the court at the suit of the owner of the copyright”.

Available remedies include:

INJUNCTIONS - s25 (2)

An injunction is an equitable remedy which is an order to stop a person from making
infringing copies or to destroy the devices used from making infringing copies. However, an
injunction will not be granted where damages would be an adequate remedy.

DAMAGES - s25 (2)

Are meant to compensate the copyright owner for any actual loss incurred which may be
based on royalties or lost sales.

ACCOUNT OF PROFITS - s25 (2)

An account of profits is the gain made by the infringer which should be accounted for to the
copyright owner so as to prevent unjust enrichment. This may be the only available remedy
where damages cannot be claimed if the defendant did not have reasonable belief of the
subsistence of copyright in a work.

The Performing Rights Society Ltd v. Francis A. Hickey, T/A Bar-B-Que Drive-in Restaurant
(1979) Z.R. 66 (HC)

The plaintiff claim for an injunction to restrain the defendant whether by himself or by his
servants or agents from infringing the plaintiff's copyright by communicating to the public or
authorising or procuring communication to the public of the musical worlds "Kung Fu
Fighting", "House of Exile", and "Money won't save you" or any other musical works the
copyright of which vests in the plaintiff. The objective of the plaintiff was to protect copyright
of music writers, artists and composers. The plaintiff also claimed for damages.
The defendant accepted the charges but said it was not his intention to carry on breaking the
copyright. He contended that he was not aware at any time and had no reasonable grounds
for suspecting that the plaintiffs were the owners of the copyright in the said sound recording.

Held
That the injunction is granted and the defendant to account for profits in respect of the
infringement and not damages.

DELIVERY UP - s26) and s28 (4)

This is an order by the court that infringing copies or articles designed or adapted for
infringing copyright be delivered to the court for disposal.

DESTRUCTION ORDERS - s28 (4)

OFFENCES
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The CPRA section 28 provides for offences against copyright as follows:
(a) Makes for sale or hire any infringing copy
(b) Sells, lets for hire or by way of trade, exposes or offers for sale or hire any infringing
copy.
(c) Distributes infringing copies
(d) Possesses, otherwise than for his private and domestic use, any infringing copy.
(e) Exhibits in public any infringing copy by way of trade.
(f) Imports into Zambia than for:
(i) His private and domestic use
(ii) Items accompanying him on his entry into Zambian infringing copy.
(g) Makes or has in his possession any article used or intended for the purpose of making
infringing copies.
(h) Installs an infringing computer program in a computer;
(i) Compiles musical tracks or visual images otherwise than is permissible under this Act;
(j) Offers for sale infringing musical compilations or visual images or audiovisual
compilations;
(k) Uses a record company or publisher's registered label or trademark on an infringing
compilation;
(I) Unlawfully re-transmits or re-broadcasts a broadcast;
(m) Unlawfully uses a single unit dwelling device for multiple dwelling;
(n) Unlawfully accesses a television signal;
(o) Unlawfully records for sale or hire a broadcast; or
(p) Synchronises music and visual works without the consent of the copyright owner;

Further, the Copyright and Performances Rights Act No. 25, 2010, provides that it is an
offence to use music or pictures in company advertisements without the consent of the
copyright owner/s.

POLICE ACTION TO COPYRIGHT OFFENCES

Section 33(1) provides that where police have reasonable cause for suspecting that there is
in any house or premises any infringing copy or any article used or intended to be used for
making infringing copies, or any other ankle, book or document, the Magistrate may issue a
warrant under his hand by virtue of which any police officer, of or above the rank of Inspector
may enter the house or premises at any reasonable time by day or night and search for and
seize any such copy, contrivance, article, book or document. Thereafter, the CPRA sec 34
provides that a police officer of the minimum rank of inspector may with reasonable cause of
suspecting any house or premises being used for infringing copyright:
(a) Break open the door of a dwelling house or any other premises
(b) Forcibly enter any part of the premises.
(c) Forcibly remove any obstruction to entry, search, seize or remove
(d) Detain every person found on the premises.

UNIT 12 COPYRIGHT ADMINISTRATION IN ZAMBIA

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THE REGISTRAR OF COPYRIGHTS
The Registrar of Copyrights is appointed under section 54(1) as a public officer under the
Service Commissioners Act.
The CPRA section 39(2) provides that the Registrar shall keep a register of copyrights in
works other than broadcasts or cable programs.

DUTIES AND FUNCTIONS

Section 54(2) provides the duties and functions of the Registrar as follows:
(i) To register collecting societies.
(ii) Resolve disputes (s23) involving copyright owners and collecting societies.
(iii) Register copyrights, assign identifying numbers and issue certificates.
(iv) Monitor activities of collecting societies.
(v) Provide information and advice on copyright matters to the minister.
Section 55 grants the Registrar with statutory authority to grant licences for persons to
translate or reproduce certain works.

COLLECTING SOCIETY
A collecting society is an association, partnership or body corporate representing copyright
owners in the negotiation and administration of collective copyright agreements.
Examples:
- Zambia Music Copyright Protection Society (Zamcorps)
- Zambia Association of Musicians
- Zambia Union of Musicians

COLLECTIVE COPYRIGHT AGREEMENT

A collective copyright agreement is an agreement between a group of copyright owners and
another person or association, licencing that institution to use the material subject to any of
the copyrights.

UNIT 13 TRADE MARKS

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Competition between companies has led to the increasing importance of trademarks in
commerce and trade. The function and purpose of a trademark is to designate the origin of
certain goods or services so that consumers are able to distinguish between similar products
and services supplied from different sources. Therefore, one of the primary aims
of trademark law is to prevent consumer confusion between goods or services of one trader
to that of another.
Simply put, the goodwill associated with a mark enables consumers to identify trusted
sources of goods and services. Signs may include personal names, letters, numerals,
figurative elements and combination of colours and a combination of signs.
However, the general rule is that a trademark does not infringe another if the underlying
products or services of the two companies do not compete and are not distributed in the
same trade channels or locations.
The major international instruments for the protection of trademarks are the Paris Convention
for the Protection of Industrial Property and The TRIPs Agreement.

DEFINITION
Trademarks are a badge of origin used on goods and services for ease of identification,
hence protecting the consumers from being deceived into buying wrong or counterfeit goods
or services.
The TRIPs Agreement Article 15 defines a trade mark as “any sign, or any combination of
signs, capable of distinguishing the goods or services of one undertaking from those of other
undertakings……..”
The Trade Marks Act 1958 (TMA) section 2(1) defines a trademark as “a mark used or
proposed to be used in relation to goods for the purpose of indicating or so as to indicate a
connection in the course of trade between goods and some person having the right either as
proprietor or as registered user to use the mark……”

UNREGISTERED MARKS
The TMA section 7 provides that any infringement of an unregistered trade mark shall not be
actionable.

REGISTRATION
The Trade Marks Act 1958 (cap 401) section 6 provides for the registration of all trademarks
with the registrar of Trade Marks (s5) who shall maintain a register of trade marks.

REGISTRABILITY OF TRADE MARKS

The TMA section 14(1) provides that a mark will only be registered as a trade mark if it
contains or consists of at least one of the following:
(a) The name of a company, individual or firm, represented in a special or particular
manner.
(b) The signature of the applicant for registration or some predecessor in his business
(c) An invented word or invented words
(d) A word or words having no direct reference to the character or quality of the goods
and not a geographical name or a surname.
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(e) Any other distinctive mark.

(f) The details of goods and/or services for w hich the trademark will be registered or the
classes in case they are known.

Trade Marks may be the most valuable commercial assets in some companies, such as:
Coca Cola ®
Pepsi cola ®

Tanya Aplin and Jennifer Davis (Intellectual Property Law: Text, Cases and Materials)
observes that the value of the Coca Cola brand far exceeds the company’s tangible assets or
of the Coca Cola recipe (trade secret).

TRADE MARKS AS A BADGE OF ORIGIN

A trade mark is a source identifier of goods and services of commercial enterprises.
However, in order to function as a source identifier, a trademark must be capable of
distinguishing the trademark owner’s goods and services from those of others. Therefore, the
basis for a trade mark is to show the connection between undertakings and their goods and
services.

Arsenal Football Club v Reed [2003] CMLR 481

Held
The essential function of a trade mark is to guarantee the identity of origin of the marked
goods or services to the consumer or end user by enabling him, without any possibility of
confusion, to distinguish the goods or services from others which have another origin.

It should be noted that a trade mark is a sign designed to protect the interests of both the
trade mark owner and the consumer. Normally, trademarks are synonymous with quality and
consumer expectations in a product or service. This protects the consumer from buying
inferior or counterfeit goods or services in the mistaken belief that they originate from a
specific trader.
This has a benefit of maintaining quality and goodwill with the consumers. Hence, a trade
mark denotes the origin of the goods and services and not the type of goods.

Canon Kabushiki Kaisha v Metro Goldwyn Mayer Inc [1998] ECR I-5507

Held
That the essential function of a trade mark is to guarantee the identity of origin of the marked
product to the consumer or end-user by enabling him, without any possibility of confusion, to
distinguish the product or service from others that have another origin.”

DURATION OF TRADE MARK

The TMA section 25(1) provides that the registration of a trade mark shall be for a renewable
period of seven (7) years. This means that a trade mark can be protected indefinitely as long

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as it is renewed every seven years. The trademark renewal may be done within the 6 months
before expiry. However, a registered mark may be cancelled if it has not been continuously
used for 5 years.

GRAPHICAL REPRESENTATION
There are problems with the graphical representation of marks which cannot be perceived
visually, such as taste smells and sounds. However, section 14 (1) (e) provides for “any other
distinctive mark”.

TYPES OF MARKS
(i) Holograms - e.g. VISA
(ii) Sound Marks - advertising jingles
(iii) Smell Marks - odours, scents

This list is not exhaustive as long as a mark fulfils the following conditions:
(1) Should be distinctive (section 14 (1e))
(2) Must not be deceptive, cause confusion, and be contrary to law or morality or
scandalous (section 16).

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UNIT 14 REGISTRABLE AND UNREGISTRABLE TRADE MARKS

However, a mark must not be wholly descriptive by describing the quality or characteristics of
the goods but have some aspect that makes it distinctive.

REGISTRABLE TRADE MARKS

The TMA section 5 provides that for a trade mark to be registered, it must be capable of
distinguishing goods with which the proprietor of the trade mark is or may be connected in
the course of trade from goods in the case which no such connection subsists.

DISTINCTIVE MARK
A distinctive mark is one that is capable of distinguishing the goods or services of one trader
from those of another. However, some marks which may be lacking in distinctive character
may still be registered if they have acquired distinction through constant and prolonged use.
To determine whether a trademark is distinctive, the courts generally classify marks in one of
five categories of increasing distinctiveness: (1) generic; (2) descriptive; (3) suggestive; (4)
arbitrary; or (5) fanciful. Suggestive, arbitrary, and fanciful trademarks are protectable
because they are inherently distinctive.

(1) SUGGESTIVE MARKS

IGLOO for use in connection with ice chests is suggestive of the “cold” characteristic of ice
chests.

(2) ARBITRARY MARKS

"An 'arbitrary' mark has a significance recognized in everyday life, but the thing it normally
signifies is unrelated to the product or service to which the mark is attached.

Examples

CAMEL for cigarettes

APPLE for use in connection with computers and other electronics. The fruit shares no
characteristics with computers, and has been arbitrarily applied to identify a source of
electronics.

(3) FANCIFUL MARKS

"A 'fanciful' mark is a combination of letters or other symbols signifying nothing other than the
product or service to which the mark has been assigned," such as EXXON or KODAK.

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EXXON for use in connection with oil, gas and energy services. The mark was fabricated
solely for the purpose of identifying the source of the company’s goods and services and
does not otherwise exist in language.

SOUND MARKS
Sound marks may be registered as long as they can be represented graphically and be clear,
precise, self-contained, easily accessible, intelligible, durable and objective.
E.g. - Advertising jingles.

UNREGISTRABLE TRADE MARKS

The Trade Marks Act section 16 provides that it shall be unlawful to register a trade mark or
part of a trade mark which is deceptive, may cause confusion or would be contrary to law,
morality or scandalous. A deceptive mark may be said to be that which is in bad faith and as
such being behavior falling short of acceptable standards of commercial behavior.
e.g. - A mark indicating a product is made of pure leather when in fact it is synthetic.
- Advertising a garment as made of wool when in fact it is made of polyester.

However, some trademarks which would normally be rejected (e.g. a geographical name)
may still be registrable if they become distinctive through usage, e.g. Yorkshire tea or
Kawambwa Tea.

There are two sets of grounds for refusal to register a trade mark:
(i) Absolute grounds for refusal
(ii) Relative grounds for refusal

ABSOLUTE GROUNDS FOR REFUSAL

The TMA provides that the following marks shall not be registered:
(i) Marks which are deceptive or likely to cause confusion (section 16).
(ii) A similar Trade mark in respect of goods that is identical with a trade mark of a
different proprietor or already register (section 17).
A trade mark would be deceptive if it claims a quality for the goods or services that they do
not have. E.g. Genuine Leather on belts or shoes which are actually synthetic, etc.

NON-DISTINCTIVE MARKS
(1) GENERIC
A generic mark is unprotectable as it merely “refer to the genus of which the particular
product is a species” and, as such, is incapable of providing distinctions between competing
providers. This is the weakest type of mark which commonly describe the relevant type of
goods or services and cannot become a trademark under any circumstances.
Examples of unprotectable generic names are include a restaurant called, simply,
RESTAURANT, "aspirin", "escalator," and "light beer”.

Office of Harmonization in the Internal Market v Wm Wringley Jr Company (2003)

Wringley applied to register the word “Doublemint” for its chewing gum. The OHIM rejected
the application as the word was descriptive, a combination of two English words without
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additional fanciful or imaginative element. Doublemint described the characteristics of the
goods in question.

Held
By prohibiting the registration of such signs and indications, legislation pursues an aim which
is in the public interest that descriptive signs relating to characteristics of goods or services
be kept free for all to use.

(2) DESCRIPTIVE
This is a mark which describes the foods or services and hence cannot distinguish the goods
or services of one trader to another as it is applicable to all such goods or services.
Descriptive marks are not inherently distinctive as they do not identify a particular source but,
instead, merely describe the goods or services offered under the mark. For example, the
mark KITWE FRIED CHICKEN, without more, fails to distinguish between multiple
businesses providing fried chicken in the Kitwe.

However, descriptive marks may acquire distinctiveness through a “secondary meaning” if

the nature and extent of the mark’s use creates a perception of the mark as a source
identifier in the minds of the relevant consuming public.

To acquire a secondary meaning in the minds of the buying public, an article of merchandise
when shown to a prospective customer must prompt the affirmation, "That is the article I want
because I know its source," and not the negative inquiry as to "Who makes that article?" In
other words, the article must proclaim its identification with its source, and not simply
stimulate inquiry about it.

GEOGRAPHICAL LOCATION AS A TRADE MARK

Wind Surfing Chiemsee Productions v Huber [2000] Ch 523, ECJ

Windsurfing concerned a geographical sign, the “Chiemsee” which is a large Bavarian lake
and tourist attraction. The sportswear company was situated near Lake Chiemsee and had
used the name Chiemsee on its sports goods that it manufactured over a long period (since
1990). The defendants also sold sporting goods bearing a Chiemsee mark since 1995 in a
town also near the shores of Chiemsee.
However, the two graphical designs were different even though they bore the same name.

Held
That, geographical names are, on the face of it, unregistrable as they are descriptive. On
public policy grounds, such signs should be kept free for all to use both now and in the future.

COLOURS
A single colour will lack precision to be registered as a trade mark. It will normally be very
difficult to register a colour or combination of colours without reference to the international
coding system.
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Libertel Groep BV v Benelux- Merkenbureau (2003)

A Dutch mobile phone company, Libertel, sought to register a trade mark for the single colour
orange for its goods and services, and a representation was submitted in the form of an
orange rectangle without reference to a colour coding system.

Held
That a single colour may be accepted if an internationally recognised colour coding system is
used but simply reproducing the colour on paper does not satisfy the requirement of being
capable of graphical representation.

Grounds for refusal would include:

(1) On the basis of the absolute grounds of refusal
(2) Public interest in not unduly restricting the availability of colours for other undertakings
which market goods or services of the same type.

SHAPE MARKS
It is easy to provide a graphical representation of a shape mark by means of a drawing
accompanied by a description relating to dimensions. However, a shape mark must not result
from the nature of the goods, e.g. the shape of a tyre. This is to avoid creating a monopoly in
those shapes and in the goods themselves.

Koninklijke Philips Electronics v Remington Consumer Products Ltd (2003) ECJ

In 1966, Philips developed a three headed rotary electric shaver and in 1985 registered a
trade mark consisting of a graphic representation of the shape and configuration of the head
of the shaver in the shape of an equilateral triangle.
In 1995, Remington manufactured the DT55 shaver with three rotating heads shaped similar
to Philips shavers.
Philips sued for infringement of its pictorial trade mark. In response, Remington
counterclaimed for revocation of the trade mark on grounds that it lacked distinctiveness.

Held
That, the purpose of the provision is to prevent people from obtaining exclusive rights over
technical developments. The mark could not be registered even if there was another way of
obtaining the end result.

NOTE: An unlimited monopoly would have been created over that way of doing something.

RELATIVE GROUNDS FOR REFUSAL OF REGISTRATION

The TMA section 17 prohibits the registration of identical and resembling trademarks in
respect of identical goods or services which may deceive or cause confusion to the
consumer. An identical trade mark is one which reproduces all the elements of an earlier
trade mark or where, if viewed as a whole, contains very insignificant differences which may
go unnoticed by an average consumer.
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AVERAGE CONSUMER TEST
The courts have taken an average consumer of products or services as a consumer of the
goods or services in question who is “reasonably well informed, reasonably observant and
circumspect (careful and sensible)”.
See: Procter & Gamble v OHIM [2004] ECRI-5141 at 33

SIMILAR GOODS OR SERVICES

Similar goods or services are not defined under the TMA but are said to be those goods or
services which are in competition and an average consumer would buy one instead of the
other.
Examples of Trade Marks
Words: “Apple” for computers
Names: Ford, Hilton or Edinburgh (hotels), Intimately Beckham (perfume)
Letters: GM, VW, KLM, CK (Calvin Klein Perfume)
Logos: Mitsubishi, Mercedes Benz (Star) etc.

British Sugar Plc v James Roberson and Sons (1996) RPC 281

Held
That factors to be taken into account in assessing confusing similarity are the users, physical
nature of the respective goods, the trade channels through which they are marketed, the
respective locations where the goods are sold in the supermarket and whether the products
are rivals in the same market.

TRADE MARK PROTECTION AND THE PUBLIC DOMAIN

The courts have taken a balancing stance between public interest in keeping certain signs
free for others to use and the legal protection of signs.

Yorkshire Copper Works Ltd v Registrar of Trade Marks [1954] 1 WLR 504

The plaintiff company manufactured copper fittings in Yorkshire. No one else manufactured
similar goods in Yorkshire. Evidence was produced that the mark “Yorkshire” had become
100% distinctive through use. The Company applied to register “Yorkshire” as a trade mark.

Held
That, certain geographical words could never be distinctive in law of a trader’s goods and
were too important to other traders to be reserved for a single proprietor.

TRADEMARKS CONTRARY TO PUBLIC POLICY OR MORALITY

It should however be noted that public policy or morality changes over periods of time.

Ghazilians Trade Mark Application [2002] ETMR 56

The applicant appealed against the denial to register the trade mark “Tiny Penis” for clothing.

Held
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That, the mere offence of a section of the public who see the mark as distasteful is
insufficient. Whether the sign offends against “accepted principles of morality” should be
judged against whether a right-thanking member of the public may not be outraged.
Appeal dismissed and registration refused.

CDW Graphic Design Ltd v Manchester United Merchandising Ltd

CDW applied to register a trade mark “www.standupifyouhatemanu.com” in respect of car

stickers, posters, paper door hangers, mugs, T-shirts, caps, scarves and underwear.
Manchester United Merchandising Ltd opposed the registration that:
(i) It is tantamount to incitement of violence as it promoted hatred against players and
supporters
(ii) It is contrary to public policy.
Held
The invitation to “stand up” may be viewed as an encouragement to others to actively
express their hatred of Manchester United when worn. The application to register the trade
mark is contrary to public policy.

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UNIT 15 TRADE MARK INFRINGEMENT AND DEFENCES

Use in the course of trade of identical/

Infringement similar Mark - TMA sec 9 (1)

TRADE MARK
INFRINGEMENT

Use of own name (S13(a)

Defenses Descriptive use (s13(b)

Intended Purpose

INFRINGEMENT
The registration of a trade mark confers or gives a monopoly upon its proprietor the right to
prevent third parties from infringing his mark. Therefore, the TMA section 9 (1) provides that it
is an infringement for any person who is not the proprietor or registered user to use “a mark
identical with or so nearly resembling it as to be likely to deceive or cause confusion in the
course of trades in relation to any goods…”
However, infringing use must be in the “course of trade” which is that use which “takes place
in the context of commercial activity with a view to economic advantage and not as a private
matter” for there to be an infringement.

Arsenal Football Club plc v Reed (2002)

Arsenal Football Club had registered the names Arsenal and Gunners along with the club
emblems for goods such as scarves and sports clothing. Mathew Reed sold Merchandise
outside the Arsenal Football ground.
The goods carried a number of Arsenal’s trademarks, which had been registered for the
same goods. Reed had placed a notice on his stall stating that his goods were not “official”
Arsenal merchandise. Arsenal alleged passing off and trade mark infringement.

Held

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The use of the Arsenal sign was use in “course of trade” and it was prima facie the use of an
identical sign on identical goods.

IDENTICAL / SIMILAR MARK

Infringement will occur when a sign is identical or similar to a registered mark and the goods
or services for which it is being used are identical.

LTJ Diffusion SA v Sadas Vertbandet SA [2003] FSR 608 ECJ

The claimant was a manufacturer and distributor of clothing and footwear with a trade mark
“Arthur” in a distinctive handwritten form. Sadas was a mail-order business and sold
children’s clothing and accessories. Sadas applied for a trade mark, “ARTHUR ET FELICIE”
in the form of upright printed capital letters.
The claimant objected to the defendant’s use of the mark and the application.

Held
“………A sign is identical with a trade mark where it reproduces without any modification or
addition, all the elements constituting the trade mark or where, viewed as a whole it contains
differences so insignificant that they may go unnoticed by an average consumer.”

LIKELIHOOD OF CONFUSION
There is an infringement of a trade mark where there defendant’s use of a similar mark is
likely to cause confusion, mistake or to deceive the consumers as to the source of origin of
such goods or services. The general concept underlying likelihood of confusion is that the
public believe that the mark's owner sponsored or otherwise approved of the use of the
trademark by the defendant. Therefore, a proper analysis of similarity includes examining the
pronunciation, appearance, and verbal translation of conflicting marks.
The court held in the case of Champions Golf Club Inc. v The Champions Golf Club, 78
F.3d 111 that whether there is a likelihood of confusion depends on consideration of the
following eight factors:
(1) The strength of plaintiff's mark (i.e., how well-known and distinctive it is).
(2) The relatedness of the services or goods offered by plaintiff and defendant.
(3) The similarity between the marks.
(4) Evidence of actual confusion.
(5) Marketing channels used by plaintiff and defendant (for example, do they advertise
their products in the same way?).
(6) Likely degree of purchaser care and sophistication.
(7) Intent of defendant in selecting the mark.
(8) Likelihood of expansion of the product lines using the marks.

However, the above eight factors are simply a guide to help determine whether confusion is
likely to result from simultaneous use of the two contested marks, they are not an end in
themselves and are not all of equal significance. Also, "they imply no mathematical precision,
and a plaintiff need not show that all, or even most, of the factors listed are present in any
particular case to be successful."
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DEFENCES
Defending an infringement could be costly and may be unsuccessful hence it would be more
sensible to give an undertaking not to continue using the sign.

THE “OWN NAME” DEFENCE

The defence of the use of a natural person’s own name will apply.
The TMA section 13 provides that “no registration of a trade mark shall interfere with (a) any
bona fide use of a person of his own name or of the name of his place of business………”.

Asprey and Garrard Ltd v WRA (Guns) Ltd [2002] FSR 487, CA

A family business was sold along with the registered trade mark “ASPREY”. The defendant, a
member of the Asprey family and ex-employee of the company, whose name was William R.
Asprey formed a company carrying his name “William R Asprey, Esquire” across the top of
the shop-front. The company also started to trade in similar goods.

Held
That this amounted to trade mark infringement and the “own name” defense does not apply
to the names of new companies or new trade names as otherwise the route to piracy would
be obvious.

Discussion
What would happen if a person legally changed their name to that of a successful
competitor and then pleading this defence? What of the relationship of honest practice?

‘DESCRIPTIVE USE’ DEFENCE

The TMA section 13 provides that “no registration of a trade mark shall interfere with (b) the
use by any person of any bona fide description of the character or quality of his goods……”

This defence may be needed to protect an honest trader who wishes to use such a word in
his own business.
Example: Yorkshire Tea is a registered trade mark. This will not prevent another trader based
in Yorkshire who also sells tea from advertising his wares from using the phrase such as
“Best quality tea from our premises in Yorkshire”.

Bravado Merchandising Services Ltd v Manstream Publishing Edinburgh Ltd (1996)

The name of the pop group ‘Wet Wet Wet” had been registered as a trade mark. The
defendant published a book entitled ‘A sweet Little Mystery- Wet Wet Wet - The Inside story’.
The plaintiff sued for trade mark infringement.

Held

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That the use of the mark was descriptive of the content of the book as it conveyed the
features or characteristics of the product concern.

‘INTENDED PURPOSED’ DEFENCE

The TMA section 3 provides that “the right to the use of a trade mark given by registration
shall not be deemed to be infringed by the use of any such mark……..(b) in relation to goods
adapted to form part of, or to be accessible to other goods in relation to which the trade mark
has been used ……..if the use of the trade mark is reasonably necessary in order to indicate
that the goods are so adapted …..”.

This defence to an infringement action encourages free competition between companies as

long as there is a necessary and honest use of the trade mark.
Example
- Accessories and spare parts: A third party can use the trade marks where necessary
to indicate the intended purpose of their own products or services.
- A garage which repairs Mitsubishi cars will use the Mitsubishi logo to advertise that it
offers that service, etc.

Gillette Company v LA – Laboratories Ltd Oy [2005] FSR 808

Gillette Company had a registration for the trade marks ‘Gillette’ and ‘Sensor’ for razors
comprising handles with replaceable blades. LA-Laboratories made razors and blades sold
under the Parason Flexor trade mark. Blades were sold with a sticker applied to the
packaging stating “All Parason Flexor and Gillette Sensor handles are compatible with this
blade’.

Held
Use of the trade mark was necessary if it was the only way in practice to allow the public to
understand the intended purpose for that product, as long as it did not give the impression
that there was a commercial connection or reduce the trade mark’s value.

PRIOR USE DEFENCE

Where the defendant had adopted the mark without knowledge of the plaintiff, the prior and
continuous use by such party or those in privity with him from a prior date to publication of the
registered mark may be relied upon as an affirmative defence.

CRIMINAL OFFENCES
(i) The TMA section 68 makes it an offence for any person to make or cause to be
made a false entry in the register of trade marks.
(ii) TMA section 69 makes it an offence any person to make a false representation of an
unregistered trade make as being registered.
(iii) TMA section 70 makes it an offence for any person who deceives or influences the
registrar or any other officer of the Trade Marks Office.
(iv) TMA section 71 prohibits any person who is a witness from wilfully giving false
evidence.

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CERTIFICATION TRADE MARKS
Certification trade marks (certification marks) denote independent certification by the owner
that the goods or services in respect of which they are used possess certain defined
characteristics. The Trade Marks Act section 42 defines a certification mark as a mark
adapted in relation to any goods to distinguish in the course of trade goods certified by
any person in respect of origin, material, mode of manufacture, quality, accuracy or
other characteristic from goods not so certified.
This differs from a standard trade mark registration whose function is to distinguish the goods
or services that originate from a single party.
A certification mark denotes independent certification by its owner that the goods and
services in relation to which it is used possess certain defined characteristics.
The owner of a registered certification mark has the same rights as those attached to a
standard trade mark registration, including the exclusive right to use, and allow other persons
to use, the certification trade mark. A certification mark indicates that the goods on which it is
used have been “certified’ as meeting a particular standard of quality or accuracy, or as
having a particular composition, mode of manufacture, geographical origin or some other
characteristic. The presence of a certification mark on a product or service will give the
consumer guidance and resulting confidence in deciding whether to make a particular
purchase or not. Certification trademarks are commonly applied to goods or services in
conjunction with standard trademarks. They provide a guarantee that the goods or services
bearing the mark meet a certain defined standard or possess a particular characteristic.

Collective marks
A collective mark is a specific type of trade mark which indicates that the goods or services
bearing the mark originate from members of a trade association, rather than just one trader.

INTERNATIONAL REGISTRATION OF A TRADEMARK

THE MADRID SYSTEM

The Madrid System was created over in 1891 and its purpose is to encourage and facilitate
the international registration of trademarks. To obtain an international registration of
trademarks, an individual must first register it in his country of origin. If he wishes to extend
that protection into other countries, one available route is provided by the Member States of
the Madrid Agreement and / or Protocol. There is a dependency for the first five years,
wherein if the trademark is refused in the country of origin, but had been accepted in the
other designated countries, the international protection will be cancelled. However, after the
five-year period elapses, the international registrations would survive a home country
cancellation. International trademark protection is indefinite although there is a requirement
that it must be renewed every ten years.

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INTERNATIONAL REGISTRATION OF TRADEMARKS
The trademark owner has to file an international application with the International Bureau of
WIPO in Geneva indicating the countries that are party to the treaties in which they want the
mark to be protected. The trade mark is then registered and information is passed on to the
countries that have been designated which then have the possibility of refusing protection
after examining the application and applying their normal national criteria. If they refuse it, the
refusal is notified to us and entered against the mark for that country in the International
Register. So in other words a person does secure international registration, but whether or
not it is protected in a given country is determined by that country.

Applicant files for International registration

with the International Bureau of WIPO in
Geneva. Designates the countries in which
they seek to protect it.

Decision communicated
The International Bureau registers the
to International Bureau.
trademark and transmits to the designated
countries.

Individual designated countries may

refuse protection if the mark is not
acceptable under their law. That is, they
may carry out an examination for such
things as distinctiveness, deceptiveness
and / or conflicts with existing trademarks.

The national offices will then investigate whether the mark is capable of distinguishing goods
and services of one trader to that of another and whether it conflicts with a mark already
protected in the member nation.
The International Bureau examines first of all whether the application complies with the
formal requirements set forth in the treaties and regulations, mainly to make sure that the
necessary elements of a trademark application are there. It also carries out an examination of
the lists of protected goods and services that has to accompany any trademark application.
Those goods and services should be classified according to an international classification,
known as the Nice Classification, and the International Bureau has general responsibility for
the consistent application of the Classification.

DURATION OF AN INTERNATIONAL TRADEMARK

You can actually protect it indefinitely, but in the international system and indeed in national
systems too you have to renew it from time to time. An international registration is renewed
by paying the fees again every ten years.
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ADVANTAGES FOR TRADEMARK OWNERS
(i) A trademark owner has only to file one application, in one language, to one office
instead of filing separate applications in trademark offices in various countries, in
different languages.
(ii) A trademark owner has only to only has to pay a single fee instead of paying
separate fee various countries.

REMEDIES
The remedies for infringement of a registered trade mark are:
(i) Damages
(ii) Injunctions
(iii) Account for profits
(iv) Orders for delivery up of infringing goods, materials or articles from a person having
them in his possession, custody or control in the course of business

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UNIT 16 PASSING OFF

Elements of Passing off Good will

Misrepresentation

Damage

Common field of activity

Character Merchandising

Dilution

PASSING OFF

Post – sale confusion

Inverse passing off

Internet Domain Names

DEFINITION
Passing off is an attempt by one trader taking advantage of the goodwill developed by
another to the detriment of that trader.

The Trade Mark Act 1958 section 7 makes it clear that the law of passing off is unaffected by
the Act. The Act states that “no person shall be entitled to institute any proceedings to
prevent or to recover damages for the infringement of an unregistered trade mark, but
nothing in this Act shall be deemed to affect rights of action against any person for passing
off goods as the goods of another person…”

The tort of passing off was created to encourage fairness and honesty amongst traders. The
tort of passing off can be described as the common law form of trade mark developed out of
deceit. Passing off is a common law tort whereby a claimant is able to assert unregistered
rights in a product or service.

It is a type of unfair competition claim made by holders of unregistered trademarks to stop or

prevent others from copying the mark, packaging or ‘get-up’ (brand name, trade description,
individual features of labelling or packaging) and presenting the copied goods and services
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as theirs. In order for a passing off action to be successful there are essentially three
elements that are required:
(i) The goods or services have acquired goodwill or reputation in the marketplace that
distinguishes such goods or services from competitors;
(ii) The defendant misrepresents his goods or services, either intentionally or
unintentionally, so that the public may have the impression that the offered goods or
services are those of the claimant;
(iii) The claimant may suffer damage or there may be potential damage to his goodwill.

The misrepresentation can exist in different aspects, for example a product name or product
packaging. In the classic ‘Jif Lemon’ case of Reckitt & Colman Products Ltd. v Borden Inc.
[1990] 1 WLR 491, the distinctive lemon-shaped packaging of the claimant’s lemon juice was
held to have been misrepresented by a similar lemon shaped packaging.

Perry v Truefitt (1842) 49 ER 749

Held
No man has a right to pass off his goods as those of somebody else.

THE ELEMENTS OF PASSING OFF (The Classic Trinity)

The Classic Trinity, as identified in the “Jif Lemon case”, consists of three basic requirements
necessary to bring an action in passing off:
(i) There must be a goodwill or reputation attached to the goods or services of the
claimant.
(ii) There must be a misrepresentation to the public as to the goods or services offered by
the defendant.
(iii) The claimant’s goodwill must suffer damage or be likely to suffer damage as a result of
the defendant’s misrepresentation.

(1) GOODWILL
Goodwill is the ability to pull customers by being attached to the name or logo and hence
promoting future business.

Reckitt & Coleman Products Ltd v Borden Inc (No3) [1990] 1 WLR 491,499

The claimants sold “Jif Lemon Juice” in plastic lemon coloured containers which were similar
in size and shape to a lemon. The containers had a yellow cap and a green label and the
product had been sold for over 30 years. However, the Jif lemon had not been registered as
a trademark.
The defendants began selling lemon juice (ReaLemon) also in lemon shaped containers but
with a green cap. Infringement could be established if it could be shown that Borden’s
ReaLemon container is identical or similar to the Jif lemon and that allowing the ReaLemon
container in the market is likely to cause public confusion. The claimants brought an action in
passing off so as to obtain an injunction.

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Held
The existence of the claimant’s extensive and exclusive goodwill built over many years, a
misrepresentation as to the goods or services offered by the defendant and damage to the
claimant’s goodwill as a result of the defendant’s misrepresentation amounted to passing off.
A permanent injunction granted barring Borden from marketing lemon juice in lemon-shaped
containers in the UK.

However, the question to be asked is why had the Jif lemon not been registered as a
trademark having been on the market since 1956?
The answer is that, had they applied to register the Jif lemon as a trademark, the application
would have been rejected as a mark that is a symbol of the goods or services it promotes
does not qualify for registration. Therefore, the Jif lemon being a symbol of a lemon and
lemon juice cannot be registered as its registered would prevent others from using a symbol
of a lemon to sell lemon or lemon juice.

Also, the other source of the basic requirements for a successful passing off litigation is to be
found in the “Advocaat case” below.

Erven Warnink BV v J Townsend & Sons Ltd [1979] AC 731, HL

The Dutch claimants had for many years manufactured in Netherlands a liquor called
“Advocaat” which they also exported to the United Kingdom. It acquired substantial reputation
as a distinct and recognisable beverage.
The defendants manufactured and marketed in England a drink called “Keeling’s Old English
Advocaat” which was similar to the real Advocaat but cheaper and of inferior quality. The
claimants brought an action in passing off.

Held
That not only damage due to lost sales but damage to reputation by being associated with an
inferior product amounted to passing off.

(2) MISREPRESENTATION BY THE DEFENDANT

A misrepresentation is a false description made consciously or unconsciously through the
use of a mark, trade name or get-up with which the goods of the claimant are associated and
which is likely to mislead the sensible members of the public.
The deception as a result of a misrepresentation is an essential ingredient for a claim in
passing off. For instance, a trader may deceive a consumer through a misrepresentation that
his products originate from the claimant and as a result the consumer will be led to purchase
those products.

Arsenal Football Club Plc v Reed [2001] RPC 46

Arsenal Football Club had two logos which were registered as trademarks, i.e. a canon
device and a crest device. Also registered as trademarks were the words ‘Arsenal’ and the

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‘Gunners’. Arsenal earned a great deal of money through merchandising. Arsenal products
carried tags which indicated their origin as official.
For 31 years Mr. Reed had been selling memorabilia bearing the Arsenal trademarks outside
the Arsenal FC grounds. He had a large sign (disclaimer) over his stall which read that the
use of the Arsenal logos on his merchandise was “solely to adorn the product and does not
imply or indicate any affiliation or relationship with official Arsenal Products”. Arsenal brought
an action in Passing off and Trade mark infringement.
Reed argued his customers realized the goods were not official and only bought his products
as badges of allegiance to the football club.

Held
The disclaimer was sufficient to prevent misrepresentation which is a necessary ingredient
for passing off. The customers had not been deceived into buying and there was no real
likelihood of confusion. The action fails.

As similar view was held in the case below:

BP Amoco Plc v John Kelly Ltd [2002] FSR 5

BP Amoco operated service stations in the UK under the name BP and all were decorated in
a particular shade of green which was also a registered trade mark. The Uniform colour was
to help approaching motorists identify the stations even if they could not read the BP logo
when afar.
John Kelly operated service stations in Ireland and Northern Ireland under the name ‘TOP’
and adopted green as the main colour of its service stations. BP sued for passing off and
trade mark infringement.

Held
Deception or its likelihood lies at the heart of the tort of passing off. If the customer can see
sufficiently clearly when he gets close to the station that the product sold is not that of BP, he
does not buy the petrol under the mistaken impression that he is getting BP petrol. The action
in passing off fails.

TYPES OF MISREPRESENTATIONS TO ESTABLISH PASSING OFF

1. That the defendant’s goods or services are those of the claimant or originate from him
or if they are the claimants’ goods that they are of a different quality.
2. That there is a business connection between the claimant and the defendant.
3. That the defendant’s goods are of the same origin or nature as the claimant’s
goods.
4. The defendant claims that the goods or services of the claimant are his own which is
also called as reverse passing off (ie where a third party without authorisation takes
your goods and presents them as theirs.)
5. That there is a licensing connection between the claimant and the defendant
6. That the claimant has endorsed the defendant’s goods.

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DAMAGE TO GOODWILL
Damage to goodwill would be the loss of reputation or control over reputation, exposure to
litigation or erosion of the mark.

The claimant has to demonstrate that he suffers or is likely to suffer damage due to the
defendant’s misrepresentation which is likely to deceive hence causing damage to the
claimant.
The general principles are:
1. The damage must be as a consequence of the defendant’s misrepresentation.
2. There is no need for actual damage as long as the claimant can show the likelihood of
damage.
3. Damage must be to the claimant’s goodwill.

Annabel’s (Berkley Square) Ltd v G Schock (t/a Annabel’s Escort Agency) [1972] FSR 261

The claimants owned a well-known London club named Annabel’s. The defendants started
an escort agency business which they called Annabel’s Escort Agency. The claimant sought
an injunction.

Held
That there was a sufficient association between what the public would consider the “field of
activity” in which both business conducted their affairs. Both are concerned with ‘night life’ or
‘night entertainment’. The claimants will lose money because of the damage to their goodwill.

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UNIT 17 PATENTS
Novelty

Requirements of Inventive step

Patentability
Industrial Application
Exclusions

Patentability

Entitlement Owner / Inventor.

Patents are governed by the Patents Act 1958 Cap 400 of the laws of Zambia.
A Patent is a monopoly right over the commercial exploitation of a new industrially applicable
invention. Such inventions must be non-obvious product or process inventions and it is
important that they have an industrial application. Therefore, the aim of the patent system is
to encourage technological advancement. The patent effectively gives the inventor a
monopoly for a period of 16 years as provided for by the Patents Act section 29(a). The rights
owner may then work the invention with the exclusion of others but may equally assign or
licence to other people.
The major requirement which is a pre-requisite for the grant of a patent is the full disclosure
of the use of the invention so as to allow a skilled person to use the invention after the expiry
of the patent.

Young v Rosenthal (1884) 1 RPC 29

Held
The applicant is bound so to describe it in his specification as that any workman acquainted
with the subject…….would know how to make it, so that people would be able to use the
invention after the expiry of the patent.

The Patent falls into the public domain once the patent period expires and everyone including
competitors are free to make use of it. This helps to spread and widen technological
knowledge thereby improving on development which is in the public interest. It is important to
register a patent immediately the invention is made so as to obtain legal protection, but
registration is not necessary where confidentiality is assured.

AIM OF THE PATENT SYSTEM

A patent grants the owner, the patentee or patent proprietor, a monopoly which is an
exclusive right to make and sell the invention. The aim is to encourage economic and
technological development by rewarding intellectual creativity.

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DEVELOPING COUNTRIES CONTROVERSY
The patent system is controversial in developing countries as it is felt it hinders development
and the arguments advanced to the introduction of patents do not apply to these countries.
Vandana Shiva argues that developing countries are being forced to introduce patent
systems at the behest of developed countries by way of international agreements such as the
TRIPs Agreement. (V.Shiva, Protect or Plunder?: Understanding Intellectual Property Rights
(London) Zed books, 2001 pp 21-326).

THE MYTH OF STIMULATING CREATIVITY

Vandana Shiva argues that it is a myth to say that patents contribute to the stimulation of
creativity and inventiveness as this is based on an artificial construction of knowledge and
innovation. He further argues that the linking of creativity to IPR protection is a total negation
of creativity in nature and the denial of the role of innovation in traditional cultures. Shiva then
concludes that it is a fallacy that people are only creative if they can make profits.

THE MYTH OF TECHNOLOGICAL TRANSFER, INNOVATION AND R & D

Shiva argues that the uniform worldwide IPR system does not aid in the transfer of
knowledge and technology to the developing countries as the company with the monopoly
granted by patents does not see the need to set up local manufacture or set up a Research
and Development programme.

SOURCES OF PATENT LAW

There is a collection of International Conventions, treaties and local legislation to regulate the
application of the patent system.
These are:

1. Paris Convention for the Protection of Industrial Property 1883 (Paris Convention)
covering industrial property and administered by WIPO. Industrial property includes
patents, industrial designs, trademarks, services marks, trade names, indications of
source or appellations of origin and unfair competition.
The fundamental principle of this convention is that of national treatment which means that a
Paris Union country cannot discriminate between its nationals and the nationals of other
Paris Union countries when it comes to the protection of industrial Property. (Paris
Convention Article 2)

The other important principles are:

(i)The Principle of Independence of Patents:

Means that patents applied for in various Paris Union countries are independent of each
other. (Paris convention Article 4bis (1)

(ii)The Principle of Priority:

Means that a person who files a patent application in a Union country shall enjoy a 12
months period of priority for the purposes of filing in other Union countries.

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(2)Patent Cooperation Treaty (PCT) 1970
The PCT provides a mechanism for making an international patent application.
NB: It does not establish an international patent. (It is administered by WIPO)

(3)Patent Law Treaty (PLT) 2000

Aims to harmonize and streamline formal procedures in respect of national and
regional patent applications and patents.
(4)Substantive Patent Law Treaty (SPLT) 2000
Aims at the harmonization of the substantive law of patents.
(5) Agreement on Trade related aspects of Intellectual Property Rights 1994 (TRIPS)
(6)Convention on Biological Diversity (CBD)
Aims at the conservation of biological diversity and the fair and equitable sharing of
the benefits arising out of the utilisation of genetic resources.

REGIONAL
ARIPO - African Regional Industrial Property Organization formerly known as ESARIPO
(Industrial Property Organ for English-Speaking Africa).

NATIONAL
The Patents Act 1958 Cap 400

JUSTIFICATION FOR PATENT RIGHTS

The inventor owns an intangible property right in his invention and is free to exploit it during
the term of protection. This tends to reward the inventors and investors for their time, work
and risk of capital. It is argued that this benefits society by stimulating investment and
employment.

Major arguments to the retention of patents extracted from Machlup Penrose, “The Patent
Controversy in the nineteenth century”(1950) 10 Journal of Economic History are:
1. A man has a natural property right in his own ideas. The product of one’s labour must
be recognised as one’s property.
2. Justice requires that a man receive and therefore that society secure to him as reward
for his services in proportion as these services are useful to society. Inventors render
useful services. This is the just reward for the inventor.
3. Industrial progress is desirable to society hence there has to be a special incentive to
induce creativity.
4. The inventors disclose secrets which would have been kept secret and hence an
incentive to society.
This means that the public will benefit after the period of protection, as the invention will be in
the public domain to be exploited freely by anyone.
Dutton, H.I (1984) The Patent system and Inventive Activity during the Industrial Revolution,
1750-1852, Manchester University Press, suggests that the arguments are still valid today
and include:

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1. The Contract theory – Provides that temporary protection is reward for knowledge of
new inventions.
2. The Reward Theory – Investors should be rewarded for making new inventions.
3. The Incentive Theory - The reward for inventions will act as an incentive to make new
inventions and to invest the necessary time and capital.
4. The Natural law / moral rights Theory - Individuals have a right of property in their own
ideas which should be protected.

As the patent system protects inventions by conferring a monopoly on the rights owner, it
also works on the principle of “first come first served” basis.

STORY OF THE INVENTION OF THE TELEPHONE

Alexander Graham Bell and Elisha Grey worked independently to come up with the idea of
inventing a telephone. They both then invented the telephone but Alexander G. Bell reached
the US Patent Office earlier and obtained a patent ahead of Grey. Grey was unable to exploit
his own work as this would have infringed with Bell’s Patent.

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UNIT 18 PATENT REGISTRATION

The registration process has three possible application routes:

(i) National
(ii) ARIPO
(iii) PCT

NATIONAL
The Patents Act Cap 400 section 11 provides that an application for a patent may be made
by anyone and should be made to the Registrar of Patents. On the other hand, an African
patent should be lodged with ARIPO indicating the contracting states in which protection is
sought.
The filling of a local application is important as it establishes the priority date of the
application on which a patent is assessed.

FILING AN APPLICATION
The requirements for filing a non-PCT application in Zambia is prescribed under the Patent
Act section 12 that every patent application should be made in the prescribed form including
the following (s13):
(i) A complete or provisional specification containing a description of the invention.
(ii) Disclosure of the best method of performing the invention.
(iii) Claim or claims defining the subject matter.
(iv) Any drawing referred to in the description.
(v) Priority document with verified English translation where a patent has already been
registered in another Union country. (not mentioned in the Act.)
Where a provisional specification has been lodged by the applicant, it is provided that a
complete specification shall be lodged within twelve months after the date of lodging the
application (s13 (2)).

EXAMINATION
The Patents Act section 16 provides that the Registrar shall examine the patent application
and every accompanying specification determining whether it has complied with the formal
requirements. The Registrar will ascertain:
(a) The application contains the relevant documents.
(b) The fees have been paid.
(c) The inventor/inventors have been identified.

PUBLICATION OF PATENT APPLICATION

The Patents Act section 21(2) provides for the Registrar to give the applicant notice to
advertise the acceptance of the patent application so that it is open for public inspection.
This publication has three significant consequences:
(i) It prevents the applicant from relying on the law of confidentially.
(ii) It establishes the date from which the patentee is able to claim damages for
infringement.

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(iii) It gives time to third parties to submit observations as to whether the invention is
patentable.

OPPOSITION TO GRANTING A PATENT

The Patents Act section 22 provides that any person may oppose the grant of a patent on the
following grounds:
(a) The applicant is not a person entitled to make the application.
(b) The application is fraudulent of the rights of the person in opposition.
(c) The invention does not relate to an art, process, machine manufacture or composition
of matter capable of being applied in trade or industry.
(d) That the invention is obvious as it does not involve an inventive step.
(e) That the invention is not useful.
(f) That the complete specification does not fully describe and ascertain the invention.
(g) That the complete specification does not sufficiently and clearly define the subject-
matter.
(h) That the complete specification does not disclose the best method of performing the
invention.
(i) That the application contains a misrepresentation.
(j) That the invention was not new on priority date.

REFUSAL OF APPLICATION
The Patents Act section 18 empowers the Registrar to refuse an application if it appears that:
(a) The invention is contrary to well-established natural laws.
(b) The use of the invention is contrary to law or morality.
(c) The invention is a substance capable of being used as food or medicine which is a
mixture of known ingredients possessing only the aggregate of the known properties of
the ingredients unless with leave of the High Court (s38).

GROUNDS FOR REFUSAL TO GRANT A PATENT

Section 18 of the Patent Act 1958 requires that certain applications will be refused for the
following reasons:
(a) The invention is contrary to well-established natural laws
(b) The invention is contrary to law or morality

The TRIPs Agreement Article 27 further provides that members may exclude from
patentability inventions:
(a) To protect human, animal or plant life or health or damage to the environment.
(b) Diagnostic, therapeutic and surgical methods for the treatment of humans or animals.
(c) Plants and animals other than micro-organism and essentially biological processes for
the production of plants or animals

RIGHTS GRANTED
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The Patents Act 1958 section 28(4) grants the patentee full power, sole privilege and
authority make, use, exercise vend the invention within Zambia and to enjoy the whole profit
and advantage during the patent period.

EXTENSION OF PATENT
Whilst the patent protection period under section 29 of the Patent Act is 16 years, a patentee
or licensee may apply for an extension on the following grounds:
(a) That he has not derived adequate remuneration
(b) Has suffered loss due to hostilities between Zambia and any other country.

REQUIREMENTS OF PATENTABILITY
The TRIPs Agreement Article 27 provides that patents shall be available for any inventions,
whether products or processes, in all fields of technology provided that they are:
(i) New - A new invention means that it is new to the public
(ii) Involves an inventive step - Has to be non-obvious to someone skilled in the art
(iii) Are capable of industrial application – Has to be useful

NOVELTY
The Patents Act 1958 section 2 defines an invention as any new and useful art, process,
machine, manufacture or composition of matter which is not obvious, or any new and useful
improvement which is not obvious but is capable of being used or applied in trade or industry.
Therefore, being “new” is a crucial requirement for patentability. A new invention is one which
does not already form part of the ‘state of the art’. The phrase ‘state of the Art’ is defined as
all matter (product, process, information, etc) available to the public before the priority date of
the invention. The priority date being the date on which the application was filed with the
national office.
However, there will be no novelty in something if it has already been made available to the
public in any other country or a very long time ago, as it shall not be regarded as new. Even
revealing the invention such as by way of telling people, writing an article in a journal or a
press conference before filing for registration will destroy the novelty and a patent could be
declined.

Lux Traffic Controls Ltd v Pike Signals Ltd [1993] RPC 107 Ch D

It was claimed that a temporary traffic signal was not “new” because it had been made
available to the public in a paper, by oral disclosure and by the use of a prototype which had
been tested elsewhere.

Held
A prior publication must contain clear and unmistakable directions to do what the patentee
claims to have invented. Where prior use is concerned, there is no need for a skilled person
to actually examine the invention and a skilled person who saw it would have been able to
understand what the inventive concept was.

INVENTIVE STEP
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For effective patentability, there must be an inventive step in the new invention. An inventive
step is not defined in the Patents Act but it can be inferred from section 22 which provides
one of the grounds for opposition to the grant of a patent as:
(d) That the invention is obvious in that it involves no inventive step having regard to what
was common knowledge in the art……..

Therefore, to obtain a patent in an invention, that invention (product or process) must not only
be new but should also involve an inventive step. This prevents the granting of a monopoly
over things that are common general knowledge and should be available for the public to
use.

Windsurfing International Inc v Tabur Marine [1985] RPC 59

The patent related to the basic equipment employed in windsurfing. The claimant had a
patent for a windsurfing board. The inventive concept was the “free sail concept” which was
free to move under the control of the user. The claimant brought an action in patent
infringement.
The defendants counter-claimed that the patent should be revoked on the ground of novelty
and obviousness. The defendants also alleged the invention was anticipated as in 1958, a 12
year old boy had made a similar sail board (Chilvars) and hence prior use had occurred.

Held
There was no novelty based on the prior publication concept even though it was only to a
limited audience for a short period of time. Also, it was obvious that a skilled person on
seeing the Chilvars sailboard would have at once considered replacing the straight boom with
an arcuate boom.

INDUSTRIAL APPLICATION
An invention will only be patented if it is capable of industrial application. That is to say, an
invention will be capable or susceptible of industrial application if it can be made or used in
any kind of industry, including agriculture.

Max- Planck / BDP1 Phosphates T870/04 [2006] EPO 14

An application was made and disclosed the means and method of making Brain Derived
Phosphates 1 (BDP1) polypeptide, which is one of a class of enzymes called protein tyrosine
phosphatases (PTPases). The application suggested that the BDP1 polypeptides were
possible anti-cancer proteins. The application was rejected and the applicant appealed.

Held
The case law indicates that the notion of ‘industry’ must be interpreted broadly to include all
manufacturing, extracting and processing activities of enterprises that are carried out
continuously, independent and for financial gain. Further, although there were suggestions
that BDP1 polypeptide might be used to target cancer, these were rather speculative and
would require further research. As such, the invention lacked industrial application.
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SUFFICIENCY OF DISCLOSURE
Apart from the general requirements of being new, inventive and capable of industrial
application, the applicant must satisfy the disclosure requirement in a manner which is clear
and complete to be performed by a skilled person in the art. This requirement is called the
sufficiency of disclosure.

Mentor v Hollister [1993] RPC 7

Mentor had patented a new type of a male incontinence device which they marketed as the
Freedom Catheter. The invention incorporated a layer of adhesive in a rolled up sheath of
latex rubber. When the sheath was unrolled, the adhesive is released onto the inside of the
sheath and come into contact with the skin, creating a leak-proof seal. At the end of the
sheath was a collecting tube lending to a urine collection bag. This device achieved
substantial commercial success. Hollister copied the device and where sued by the claimant.
Hollister counter-claimed that the patent was invalid as it lacked sufficiency as the
specification did not disclose the invention clearly and complete by not disclosing the suitable
adhesive for it to be performed by a person skilled in the art. Hollister also claimed the
claimant had not disclosed how to select a suitable latex rubber.

Held
Disclosure of an invention does not have to be complete in every detail as it is addressed to a
skilled man who can understand the invention as described and can then perform it. Although
several tests had been performed to produce a workable prototype of the invention, this
amounted to routine trial and error not involving prolonged experimentation.

REVOCATION OF A PATENT
The Patents Act section 50 provides that any person can make an application for revocation
of a patent to the High Court upon any of the grounds on which the grant of a patent might
have been opposed.

The Patents Act 1958 section 11 provides for persons who can apply for a patent for an
inventionas:
(a) A person claiming to be the inventor
(b) An assignee
(c) Any person who qualifies under Article 2 or 3 of the Paris convention and who has
applied for protection of an invention in a convention country (sec 8(1))
(d) The legal representative of any person who immediately before his death or disability
was entitled to make such an application.
Section 12 (1b) provides that such an application shall be lodged with the Registrar of
Patents at the Patents Office.

UNIT 19 PATENT OWNER / INVENTOR

Normally, more than one person will be involved in a creation but it is essential to determine
the inventor for the purpose of registering a patent. An inventor is the person who took the
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inventive step and there may be joint inventors. The importance of identifying an inventor is
that he / she must be identified in a patent application.
The Patents Act section 11 provides that any person can apply for a patent but the only
persons to be granted a patent under the Act are:
(a) The Inventor or joint inventors who own the invention in respect of Zambia
(b) An assignee
(c) Any person who qualifies under Article 2 or 3 of the convention and who has applied
for protection in a convention country shall have priority for his invention under this Act
(d) A legal representative of a deceased or incapacitated person.

Before registering a patent, a company or person must take into account the relative
advantages and disadvantages of patent protection.

The owner or proprietor of a patent may assign, licence or mortgage the patent and has the
right to sue for infringement. However, a patent created in the course of employment will
normally be owned by the employer.

IDA Ltd v University of Southampton (2006) RPC 567, Ch D

A university Professor invented a cockroach trap which caused poisoned electronically

charged talcum powder to attach to the legs of the insects. Mr Metcalf (of IDA) read about the
invention and correctly suggested to the Professor that magnetic powder might be more
efficient than an electro-statically charged powder.
The professor applied for a new patent using the magnetic powder.

Held
That, the inventor was Mr Metcalf.

ADVANTAGES
(i) Patent law confers an enforceable property right which is an exclusive monopoly right
against third parties.
(ii) A patent protects those inventions that cannot be kept secret and can be easily
discovered by studying the product incorporating the invention.
(iii) Allows the patentee to value the patent as an asset for accounting purposes.

DISADVANTAGES
(i) The bureaucratic process of registration which is time consuming and costly.
(ii) The disclosure of the invention to the whole world including competitors which is
counter-productive.
(iii) Patent protection only lasts for 16 years where as protection is longer under contract
law or the law of confidence.

UNIT 20 EXCLUSIONS FROM PATENTABILITY

(i) Discoveries (are not inventions as the thing will already exist in nature)
(ii) Scientific theories - regarded as knowledge
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(iii) Mathematical Methods - regarded as knowledge
(iv) Aesthetic Creations - regarded as knowledge
(v) Schemes, rules or methods for performing a mental act
(vi) Playing a game
(vii) Doing business
(viii) Computer program
(ix) Contrary to public policy
(x) Methods of treatment by surgery, therapy or of diagnosis practiced on the human or
animal body. (Should be available for all doctors or vets to use to treat their patients)

BUSINESS METHODS AND COMPUTER PROGRAMS

Aerotel / Macrossan Patent Application [2006] EWHC 705 CA

Aerotel Ltd v Telco Holdings Ltd [2007] RPC7

The case concerned two appeals – Aerotel and Macrossan.

Aerotel appealed a decision for revocation of their patent. The invention related to a new
method of making telephone calls by way of a special exchange. The customer will have a
pre-payment account with the owner of the special exchange who issued a code that was
used as a prefix to get connected.
Macrossan appealled in relation to an automated method of acquiring the documents
necessary to incorporate a company. It involved the user using a computer program on a
computer to pose questions, and documents would be produced.

Held
Aerotel: That the invention was a new system, although it used conventional computers, the
key was that it was a new physical combination of hardware and as such was much more
than just a method of doing business. The system was technical in nature.
Macrossan: There was nothing technical about the contribution beyond the mere fact of the
running of a computer program and this was just a method of doing business or a computer
program. The computer program was doing the job that would otherwise be done by a
solicitor or a company agent.

UNIT 21 PATENT INFRINGEMENT, DEFENCES AND REMEDIES

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Infringement occurs when a patented product or process is exploited without the patentee’s
consent and with no defence available. A patentee or exclusive licencee has a right to
prevent all third parties from making or using the patented product or process without his
consent.
A person infringes a patent if he does any of the following acts without the consent of the
patent owner:
(i) Makes
(ii) Uses
(iii) Offers for sale
(iv) Sells
(v) Imports into Zambia
the patented product or process.
The Patents Act section 53(1) provides that, an action for a patent infringement may only be
instituted by the patentee or the exclusive licencee.

DEFENCES TO INFRINGEMENT
The Patents Act provides for defences to a patent infringement action as:

(a) Any ground on which a patent may be revoked under s53 (1a)
(b) Counter claim and ask for a revocation under s53 (1b)
(c) The infringement of the patent took place after the lapse of the patent under s34.
(d) The infringement took place whilst the patent had been surrendered and revoked
under s51(1)

REMEDIES
(1) Injunction or interdict and damages.
(2) Interdict
(3) Damages or Costs
(4) Account for profits
However, section 55 (1) provides that in court proceedings for the infringement of a patent,
damages shall not be awarded against a defendant who proves that at the date of the
infringement, he was not aware and had no reasonable grounds for supposing that the patent
existed.

INTERNATIONAL PATENT APPLICATION

The Patent Cooperation Treaty (PCT) is the leading treaty administered by WIPO, in terms of
generated revenue and which facilitates the application for patents in different countries.
The national patent system follows the principle of territoriality which requires the filing of
individual patent applications for each country for which patent protection is sought.
In order to overcome problems of filing in different countries, the Patent Cooperation
Treaty (PCT) was adopted in 1970 so as to provide a simplified, more effective and
economical procedure for an inventor or applicant to apply for and obtain patents in a large
number of countries.

THE PURPOSE AND OBJECTIVES OF THE PCT

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The Patent Cooperation Treaty provides for the filing of applications with a view to obtaining
patent protection in a large number of countries. It provides a simplified procedure for an
inventor or applicant to apply for and eventually to obtain a patent. The PCT also aims to
disseminate more effectively the technical knowledge contained in patent documentation in
different countries.
However, it should be noted that the PCT system does not provide for the grant of worldwide
patents as there is no such thing as a worldwide patent.

PATENT COOPERATION TREATY PROCEDURE

(i) File an application with a receiving office in home country.
(ii) The international search
(iii) The international publication by the International Bureau in Geneva.
(iv) The international preliminary examination.
(v) The national phase where the applicant has to approach each of the national
offices directly and provide the necessary documentation.

PROCESS INVOLVED WHEN AN APPLICANT USES THE PCT

Applicant files application,
designating the countries of
interest

International search

International publication

International preliminary
examination

Applicant selects amongst the

designated countries
those which are still of interest.

NATIONAL PHASE

COUNTRY A COUNTRY B COUNTRY C COUNTRY D

The International Bureau has some behind the scenes involvement in the overall procedure
as it is responsible for making certain documents available to offices, to the applicant and for
communicating certain documents at certain times under the provisions of the Treaty.

ADVANTAGES OF USING THE PATENT COOPERATION TREATY

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(i) Filing one application at the national patent office and obtaining an international filing
date for his application which has an effect in every country so designated.
(ii) Filing the local application gives the applicant priority time to file in other countries.

UNIT 22 INDUSTRIAL DESIGN LAW

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Industrial design law is governed by the Registered Designs Act 1958 Cap 402 of the laws of
Zambia. The Act defines a design as meaning the “features of shape, configuration, pattern
or ornament applied to an article by any industrial process or means, being features which in
the finished article appeal to and are judged solely by the eye....” It is what makes a product
attractive and appealing to an individual leading to the article’s commercial value and
marketability. To be protected, an industrial design must be new, original and / or have
individual character.

DURATIONS
The Registered Designs Act section 15 provides the period of copyright protection of a
registered design to subsist for 5 years from the date of registration. The period of renewals
of the period of copyright is by application to the Registrar. However, the copyright in an
industrial design expires at the same time as the copyright in the artistic work and shall not
be renewable after that time (section 15(c)).

Manal Investment Limited v Lamise Investment Limited (SCZ Judgment No. 1 of 2001)

The appellant was the owner of a cloth, registered as a protected design number 3/97 under
the Registered Design Act. The appellant used the said cloth, the registered design, in the
manufacture of mattresses for sale to the public. By registering the design, the appellant by
law, enjoyed copyright privilege (See Section 14 Cap 402).
Whilst the design registration was still in place the respondent started importing a similar
cloth as that of the appellant which was also being used by the respondent in the
manufacture of mattresses with a foam thinner than that used by the appellant and passed
off as a product of the appellant. The mattresses produced by the respondent were
manufactured with thin foam thereby making the cost of production cheap by passing it as
the appellant’s product. The respondent also admitted that the appellants’ products covered
in the design cloth are of superior quality compared to theirs.
The appellant commenced an action for an injunction to restrain the respondent whether by
itself, servants or agents whosoever from selling and, or trading in mattresses on the
Zambian market which are covered with a cloth or design registered as design number 3/97.
The appellant applied for an interlocutory injunction which was granted.

Held
That as long as there is a design registered under the Act, it ought to be protected until
successfully challenged. Indeed, the fact of registration increases the weight of the balance
of convenience in favour of the registered owner. We were satisfied that if an injunction was
not granted in these circumstances, irreparable damage would have been caused to the
appellant. Interim injunction granted.

RIGHTS GIVEN BY REGISTRATION

The Registered Design Act s14 (i) provides that, the proprietor of a registered industrial
design has the exclusive right in Zambian to:
(1) Make or import for sale any article in which the design is registered

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(2) Use for the purposes of any trade or business any article in which the design is
registered.
(3) To sell, hire or offer for sale or hire any article in which the design is registered.

VEHICLE SPARE-PARTS MARKET

The industrial design law was introduced to open up the UK market to makers of automobile
spare parts. The government felt that the automobile industry had a virtual monopoly on the
manufacture of motor vehicles and associated spares hence the need to open up to
competition. It was also of the view that copyright protection of 50 years was too long and
hence stifling development and competition.

British Leyland Motor Corp Ltd v Armstrong Patents Co. Ltd (1986) AC 577

The claimant manufactured motor vehicles whilst the defendant manufactured spare parts
compatible with the claimants’ vehicles.

Held
That the defendant had infringed copyright in the claimant’s design documents but that the
benefits of having a competitive market in the provision of spares outweighed the claimant’s
right to copyright protection.

INDUSTRIAL DESIGN
An industrial design is the ornamental or aesthetic aspect of an article and may consist of:
(i) Two-dimensional features such as patterns, lines or colour.
(ii) Three-dimensional features such as the shape or surface of an article.

The Registered Designs Act section 2 defines an “Article “ as any article of manufacture and
includes any part of an article if that part is made and sold separately. Industrial Designs are
applied to a variety of products of industry and handicraft such as technical and medical
instruments, watches, jewellery, household wares, electrical appliances, vehicles, textile,
architectural structures etc. E.g. Apple iPod

ADVANTAGES OF PROTECTING INDUSTRIAL DESIGNS

(i) Benefits consumers by protecting fair competition and honest trade practices.
(ii) Helps economic development by encouraging creativity in the industrial and
manufacturing sector.
(iii) Contributes to the expansion of commercial activities and the export of national
products.

NOVELTY
The Registered Designs Act section 7 (2) provides that a design shall only be registered if it
is new or original and is not part of the “state of the art”. An industrial design is new if no
identical design has previously been made available to the public.

Crown Confectionery Co Ltd’s design (No. ICD 000000388, 20/09/2005)

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Leng-d’OR SA v OHIM

Crown Confectionery Company applied to register a design to be applied to pretzel-shaped

biscuits. An application to invalidate the registration was lodged by Leng-d’Or on the grounds
that it was not new or of individual character, the two main requirements for validity. Leng-
d’Or submitted evidence of registered trademarks for “crackers and savoury foods”,
published in 1997.
EVIDENCE

Held
The design did not differ from existing designs except in immaterial details of having lines
drawn across the surface of the design of a familiar pretzel shaped biscuit.

Greenlane Products v PMS International Group, PMS International Far East Ltd, Poundland
Limited [2008] FSR 28

Greenlane made and sold spiky plastic balls for use in tumble driers under the trade mark
“Dryer balls” and the design was registered in 2004. The purpose of the balls was to soften
the fabrics and to separate the laundry in the drier.
PMS also marketed spiky plastic balls intended as massage balls from 2002. Later PMS sold
the balls as a hand exerciser, dog trainer and also as a laundry ball.
Greenlane alleged design infringement unless PMS sold the balls as massage balls only.
PMS counter-claimed that the Greenlane design registration was invalid because of the prior
sale of their massage balls.

Held
An Invention is new if it is not part of the “state of the art”. The state of the art shall be held to
comprise everything made available to the public by means of a written or oral description, by
use, or in any other way before the relevant date. There was no infringement.

INDIVIDUAL CHARACTER
A design has individual character if the overall impression it produces on an “informed user”
differs from the overall impression produced on such a user by any design which has been
made available to the public. An “informed user” is not the same as the “average consumer”
of trade mark law. The informed user is one with experience of similar products and will be
reasonably discriminatory and able to appreciate sufficient detail to decide whether or not the
design creates a different overall impression.

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Pepsico Inc’s design ( N0 ICD 000000172, 20 June 2005) OHIM
Pepsico filed an application for registration of a design for a disk having annular rings or
corrugations applied to a “promotional item for games”.
Grupo Promer filed an application for a declaration of invalidity due to a prior design
registered for “metal plates for games”. The grounds related to the lack of novelty and
individual character of the design.

Held
The design by Pepsico had no individual character and their action failed. Appeal Dismissed.

REGISTERING AN INDUSTRIAL DESIGN

The Registered Designs Act section 9 and section 10 provides for the procedure for
registration of an indusial design. The principles for registration are the same as for trade
mark registration. The RDA section 9 (5) provides that no action or proceedings shall be
instituted in respect of any infringement of copyright in the design before the design was
registered.

EXCLUSIONS FROM INDUSTRIAL DESIGN

(i) Design contrary to public policy or morality
(ii) The same design as one which appears on the register
(iii) Designs which are primarily literary or artistic in character.

INTERNATIONAL REGISTRATION OF AN INDUSTRIAL DESIGN

The general rule is that industrial design protection is limited to the country or countries in
which it is sought and granted.

THE HAGUE SYSTEM

The Hague Agreement created the system of international deposit of industrial designs. It
works in the same way as the Madrid system in that an international application is entered in
the International Register which is published by the International Bureau and then notified to
the designated countries concerned, who then have the right to grant or refuse protection.
The protection for an industrial design under the Hague Agreement does not need the
protection in the country of origin but the application can be deposited in any country.

INTERNATIONAL PROTECTION OF INDUSTRIAL DESIGNS

Where protection is desired in several countries, separate national applications (or ‘deposits’)
must be made and the procedures will normally be different in each country. This application
process is facilitated by the Hague

AIMS
(i) To enable protection to be obtained for one or more industrial designs in a
number of countries through a single deposit filed with the International Bureau of
WIPO.
(ii) There is only a single international deposit in one language (English or French) and
only a single payment.
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(iii) The international deposit gives an industrial design protection that would be obtained
in each of the countries listed as if the applicant had applied directly to that
country, provided that particular country does not explicitly refuse protection.

WORLDWIDE INDUSTRIAL DESIGN PROTECTION

It’s not exactly worldwide but the grant of international registration does give the applicant
protection in a number of countries.

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UNIT 23 DESIGN INFRINGEMENT, OFFENCES AND REMEDIES

Design rights are infringed by a person who without the permission or licence of the owner
does or authorises another to do anything which is the exclusive right of the owner.

Bodum USA Inc and PI Design AG v Trudeau Corporation (1889) Inc, 2012 FC 1128

PI Design AG and Bodum USA, Inc., were the respective owner and licensee in Canada of
Industrial Design Registrations Nos. 107,736 and 114,070 pertaining to the configuration of
double-wall drinking glasses and commercialized by Bodum in Canada since around 2003
and 2004.
The defendant, Trudeau, a family-owned Canadian company specializing in the design,
manufacture and distribution of kitchenware and glassware, had been selling in Canada two
versions of TRUDEAU branded double-wall drinking glasses since 2006. Those glasses were
alleged to infringe the plaintiffs’ industrial designs although the plaintiffs never made clear
which glass allegedly infringed which design. The defendant counterclaimed attacking the
validity of the plaintiff’s designs that the designs are not substantially different from the prior
art.

Held
That for a finding of infringement to arise in such cases the allegedly infringing articles must
be almost identical to the designs. Whether the allegedly infringing article “differed
substantially” from the registered design was to be assessed by the Court through the eyes
of the “informed consumer.” The Trudeau glasses differed substantially from the alleged
designs. Tthe designs were not sufficiently different from the relevant prior art that was in
evidence, some of which dated back to the 18th century, to be afforded industrial design
protection. The Court declared that both registrations were invalid.

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C & H Engineering v Klucznik & Sons Ltd [1992] FSR 421

The claimants manufactured agriculture equipment including “lamb creep fenders “and pig
fenders. A pig fender is a pen outside a pigpen low enough for a sow, but not her piglets to
step over. The pig fender had tubes around the top edge of the fender in order to prevent the
sow from injuring her teats when she stepped over the fender. The fender was also
stackable.
The defendants manufactured pig fenders with a bar along the top for the same purpose as
the claimant’s design but based on the customer’s recommendation. Both the claimants and
the defendants supplied the same customer. The claimants sued for design infringement and
the defendants counter-sued.

Held
The law requires that the owner of a design right has to establish that copying has taken
place before infringement can be proved.

An interested man would be struck by the design features which enable the plaintiff’s pig
fender to be staked. These features not only attract the eye but are also significant. They
contrast with the overall design features of the defendant’s pig fender. An interested man
would consider the two designs to be different but with a similar feature, the bar around the
top. The claimant’s claim fails.

EXEMPTION OF AN INNOCENT INFRINGER

The Registered Designs Act s16 (1) exempts an innocent infringer from liability for damages
if they can prove that they were unaware that the design was registered at the date of the
infringement.

REMEDIES
S16 (2) provides that the High Court shall however grant an injunction or interdict in any
proceedings for infringement of copyright in a registered design.
(i) Damages
(ii) Account of profits
(iii) Delivery up
(iv) Destruction of the articles
(v) Injunction

ASSIGNMENTS, CORRECTIONS AND CANCELLATION

ASSIGNMENTS
The RDA sec 22 (1) provides that any person entitled to assignment, transmission or
operation of law to a registered design or to a share in a registered design may apply for the
registration of his title as proprietor or co-proprietor.

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CORRECTIONS
The RDA sec 23 provides that the Registrar may authorise the correction of any clerical error,
omission or error in translation in any application or representation of a design. Such a
correction shall be made upon a request in writing by an interested person upon paying a fee.

CANCELLATION
The RDA sec 25 provides for the cancellation of a registered design by:
(i) The registered proprietor
(ii) Any interested person on the grounds that:
(a) The design was not new original at registration
(b) There was a corresponding design in relation to an artistic work at the time of
registration.
(iii) By reason of a previous use
(iv) The copyright in the work expired

OFFENCES
(i) Falsification of entries in the register or tendering a false document in evidence - S 47
(ii) Deceiving or influencing the Registrar or an officer in the execution of their duties -S49
(iii) A witness giving false information knowingly / consciously - S 50

PENALTIES

S 48 – (a) Falsely claiming a design on an article is registered to him

(b) Using an expired design on an article and having it marked as registered
The offender shall be liable to a fine of 1500 penalty points or up to six months imprisonment
or to both.

S51 – Any other offence under this Act carries a maximum fine of not more than 15,000
penalty units or to imprisonment of up to 3 years or to both.

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UNIT 24 TRADITIONAL KNOWLEDGE AND FOLKLORE

The developing countries have been in the forefront to the protection of Traditional
Knowledge and folklore as they have identified their rich cultures in their local communities.
This allows the local communities to protect Traditional Knowledge that could have been
passed down over long periods of time and hence stop those who did not have a hand in
producing it from exploiting it.
Traditional Knowledge includes a broad range of subjects such as traditional agricultural
methods, medicinal knowledge and folklore. It is the knowledge handed down from
generation to generation.
For instance, ‘Aloe Vera’ is an extract from a plant which has been a source of medicine for
many centuries in developing countries but has now been commercially exploited by
companies in developed countries without a benefit to the local populations.
The convention on Biological Diversity (CBD) Article 8(j) on Traditional Knowledge,
innovations and Practices states that each contracting party shall respect, protect and
maintain knowledge, innovations and practices of indigenous people.

THE HOODIA CACTUS CASE

The San, an indigenous people living in the Kalahari Desert have traditionally eaten the
Hoodia Cactus to stave off hunger and thirst on long hunting trips. This was noted in 1937 by
a Dutch Anthropologist who studied the San people. In 1995, the South African Council for
Scientific and Industrial Research (CSIR) patented Hoodia’s appetite-suppressing element
(P57) which they licenced to the UK Biotech Company, Phytopharm. In 1998, Pfizer, a
pharmaceutical company acquired rights from Phytopharm to develop and market P57 as a
slimming drug and cure for obesity. The San people heard of the exploitation of their
Traditional Knowledge and threatened legal action against CSIR on grounds of ‘Biopiracy’
claiming their Traditional Knowledge had been stolen. The CSIR claimed they had intended
to inform the San of the research and to share the benefits should the drug prove successful.
In 2002, the San and CSIR reached an agreement in which the San would receive a share of
any future royalties. (NB: The obesity industry is a market worth more than $12 Billion).

Therefore, apart from the financial benefits of Traditional Knowledge to the local indigenous
people, other reasons for protection include:
(i) Equity considerations- the custodians of Traditional Knowledge should receive fair
compensation.
(ii) Conservation Concerns- The protection of Traditional Knowledge contributes to
environmental conservation, biodiversity and sustainable agricultural practices.
(iii) Preservation of traditional practices and culture.
(iv) Prevention of appropriation by unauthorized parties or avoiding ‘biopiracy’.
(v) Promotion of the Traditional Knowledge and importance to development.

However, that Traditional Knowledge is normally transmitted by word of mouth and not
written, poses difficulty for parties intending to obtain Intellectual Property Rights due to lack
of any record. As a result, any party can obtain IPRs as novelty or inventiveness cannot be

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challenged due to lack of documentation leaving the only option of challenge to the patent
granting process or after a patent has been granted.

THE NEEM CASE

Neem or Azadirachta Indica is an Indian Tree species which has properties as a natural
medicine, pesticide and fertilizer. The oil extract is used to treat colds, flu, malaria, skin
diseases and meningitis. In 1994, the European Patent Office (EPO) granted a patent for
controlling fungi on plants by the aid of hydrophobic extracted ‘Neem Oil’.
In 1995, Indian farmers filed an opposition against the patent that the invention was not
novel.

Held
The patent was revoked as all features of the claim had been disclosed to the public prior to
the patent application.

THE BATTLE FOR BASMATI

Basmati is a rice variety from the Punjab province of India and Pakistan. It is a slender and
long grain variety and a major export crop for both countries. In 1997, a VS Rice Breeding
company Ricetec Inc patented plants and seeds including various rice lines with some
having characteristics of Basmati Rice. India requested for a re-examination of the patent and
in response, the patentee withdrew the claims.

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UNIT 25 GEOGRAPHICAL INDICATIONS

Geographical Indications (GIs) are a form of IP and are important to the indication of the
origins of goods and services. This is good for the consumer as it implies a certain quality for
the goods in question. Geographical Indications are place names which are used to identify
the origin, quality, reputation or other characteristics of goods or services.
The TRIPs Agreement Article 22 defines Geographical Indications as “indications which
identity goods as originating in a territory of a member, or a region or locality in that territory,
where a given quality, reputation or other characteristic of the good is attributable to its
geographical origin”. However, the Paris Convention does not use the term Geographical
Indications but rather under Article 1 (2) uses the terminologies, indications of source or
appellations of origins.
Geographical Indications are important to places of a rich history of local and specialist
agricultural production and many products linked to their places of origin.
E.g. Scotch Whiskey from Scotland.
 Champagne from the champagne region of France
 Parma Ham from the Parma region of Italy
 Kawambwa Tea from Kawambwa district in Zambia.

Whilst Geographical Indications are usually geographical names, they could equally be non-
geographical but linked to a particular place.

CONDITIONS NECESSARY FOR RECOGNITION

(i) It relates to goods or services
(ii) The goods originate from a defined area
(iii) The goods have a quality, reputation or other characteristics which are clearly linked to
the geographical origin of goods

IMPORTANCE OF GEOGRAPHICAL INDICATIONS

The protection of Geographical lndications promotes quality production and has been seen to
promote tourism in particular areas.
The “indication of source” merely refers to the origin of the goods and bears no requirements
regarding specific characteristics of the product. E.g. Made in Great Britain. The “Appellation
of Origin” on the other hand indicates a strong link between the origin of the goods and their
characteristics such as the quality and natural and human factors.

It should however be noted that GI protection is granted to particular communities and not
individuals.
Whilst the initial rationale of GIs was for the protection of wines, spirits, agricultural products
and food stuffs, protection has now been accorded to other goods.
E.g.
 Koniakow laces from Poland
 Solingen Knives and Bordado da Madeira

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LOCAL PROTECTION
There are various ways of protecting GIs:
 Sui generis legislaton or decrees
 Registration of collective marks or certification marks
 Law on unfair competition
 Passing off

INTERNATIONAL PROTECTION
 The Lisbon agreement for the protection of appellation of origin
 TRIPS article 22 (2) – (4)

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UNIT 26 UNFAIR COMPETITION

The idea of unfair competition has been around for some time and was mentioned as part of
intellectual property protection as early as 1900 in the Brussels revision of the Paris
Convention. It is long established that in practice, there is no real difference between passing
off and unfair competition. However, the major difference is mainly the fact that unfair
competition has more of a consumer protection element whereas passing off is more to do
with business-to-business and competitor-to-competitor situations.
The Paris Convention Article 10bis (2) defines unfair competition as “any act of competition
contrary to honest practices in industrial or commercial matters”.

PROHIBITED UNFAIR ACTS

The Paris Convention Article 10bis (3) prohibits the following:
(i) All acts that may or are likely to create confusion with a competitor’s
establishment, goods or its industrial or commercial activities.
(ii) All false allegations in the course of trade that may discredit a competitor’s
establishment, goods or its industrial or commercial activities.
(iii) All indications or allegations in the course of trade which may mislead the public as to
the nature, manufacturing process, characteristics, suitability for their purpose or
quantity of the goods.
Therefore unfair competition is simply dishonest practice in commercial activity. Research
has established that fairness cannot be achieved in industry if left to be determined solely by
market forces where it is presumed that consumers will play a role as referees of economic
play to deter dishonest entrepreneurs by disregarding their goods or services.
However, the complexity of the market makes it difficult for the consumers to detect acts of
unfair competition and hence the need for national legislation against unfair competition to
ensure fair play in the marketplace. Such laws are meant to ensure that there is fairness in
competition by forcing all entrepreneurs to compete according to the same rules.

ACTS OF UNFAIR COMPETITION

The acts of unfair competition are those acts which may be termed as unfair market behavior
which is an attempt by an entrepreneur to succeed in competition by taking undue advantage
of the work of another entrepreneur or by influencing consumer demand with false or
misleading statements.
Therefore, the unfair competition law is mainly designed to protect the honest businessman
or entrepreneur from dishonest traders. However, unfair competition law should not only
protect competitors but consumers as well by safeguarding of competition which is in the
public interest.

TYPES OF UNFAIR COMPETITION

(i) Causing confusion
(ii) Misleading
(iii) Discrediting Competitors
(iv) Disclosure of secret information

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(v) Taking advantage of another’s achievements (free riding)
(vi) Comparative advertising

CAUSING CONFUSION
All member states have an obligation under the Paris Convention, Article 10bis (3), to prohibit
all acts by a competing trader that may create confusion with a competitor’s establishment,
goods or industrial or commercial activities. These unfair acts may include any act in the
course of trade involving a mark, sign, label, slogan, packaging, shape or color of goods, or
any other distinctive indication used by a businessman or entrepreneur.
However, the two main areas in which confusion frequently occurs are the indications of
commercial origin and the appearance of goods in colour and packaging.

PACKAGING

Calgon v Peros (2012)

The court said:
"Although the trademarks are not similar, the packagings are confusingly similar and it
creates a likelihood of confusion. Therefore even though there is no specific trademark
infringement, there is still unfair competition in this case ..."

Nivea Soft v Rebel Soft (2006)

The court found that the Rebel Soft cream packaging was confusingly similar to the Nivea
Soft cream packaging and said that;
"The trademarks 'Nivea Soft' and 'Rebel Soft' are not similar, therefore there is no trademark
infringement in this case. Both cream jars are in white, dark blue (navy) and green colors.
"An average consumer might think that the products are manufactured by the same
company. There isn't any technical or functional necessity to select the same colors,
therefore it can be deemed that the defendant used the package to unfairly benefit from the
plaintiff's commercial success. Therefore there is no trademark infringement but there is
unfair competition in this case ..."

Danino v Büyümix (2012)

The Court established that the Büyümix yoghurt packaging was confusingly similar to the
Danino yoghurt packaging and said that;
"The packaging is similar enough to mislead the consumer, especially considering that the
subject products' consumers are mainly children and the method of placing the subject
products on to shelves, which reinforces the possibility of delusion."Despite a lack of
technical necessity, the defendant replaced its former packaging with a new packaging which
was confusingly similar to the complainant's style of packaging. It was decided that replacing
the packaging constituted unfair competition since it misled the consumer by being
confusingly similar."

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Therefore, the major role that unfair competition law plays is to prohibit the use of identical or
similar product appearances for identical or similar goods.

MISLEADING
Misleading can roughly be defined as creating a false impression of a competitor's own
products or services. This may be harmful to a consumer who may rely on incorrect
information and in the process may suffer financial loss or other more harm. Also, due to
misleading information, an honest competitor will lose customers a situation detrimental to its
business interests.
For example, where the law prohibits drinks containing caffeine, an advertising claim that “our
drink in caffeine-free” although literally correct is likely to have a misleading effect and hence
deceptive as it gives the misleading impression that the advertised fact is something out of
the ordinary in comparison to other drinks.

Similarly, as calls for buying Zambian products intensify, a false declaration by an

entrepreneur that his goods are domestic when in fact they are imported or the exaggeration
that they are of superior quality when in fact not is misleading and hence deceptive.

DISCUSSION
What of "sales talk" which may be exaggerated? Is it mere "hot air" or "puffing" or should it be
taken seriously? E.g. the best or Not only the first but the first, second, third, four and fifth,
etc.

DISCREDITING COMPETITORS
Discrediting or disparagement in the market place is defined as any false allegation
concerning a competitor that is likely to harm his commercial goodwill with the consumers.
Discrediting competitors by false or deceptive statements about one's own products or
services usually tends to mislead the consumers and hence entice them with incorrect
information. It always involves a direct attack on a particular entrepreneur or entrepreneurs
with incorrect information on a competitor or his products or with correct information but
where the "attack" is blown up out of proportion.

DISCLOSURE OF SECRET INFORMATION

A considerable amount of commercial competitiveness of an enterprise can be due to
information developed and accumulated by that enterprise such as customer and potential
customer lists, secret industrial process, etc which gives an enterprise competitive edge over
its’ competitors. The disclosure of such secret information is defined under the TRIPS
Agreement of 1994 Article 39 (2) as unfair competition.
For example, the owner of the information for an invention to be patented ought to be
protected against any wrongful disclosure of the information by others while a patent
application is pending.

TAKING UNDUE ADVANTAGE OF ANOTHER’S ACHIEVEMENTS

Also termed as “free riding” on another person's achievements is unfair practice. Such
practice includes the dilution of the distinctive value and quality of a competitor’s mark.
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COMPARATIVE ADVERTISING
Comparative advertising may take two forms:
(i) A positive reference to a competitor’s product by claiming that one's own product is as
good as the competitor’s which creates a possibility of misappropriation of another's goodwill.
(ii) A negative reference to a competitor’s product claiming that one's own product is
better than the competitor’s product which may be taken as disparagement of a
competitor’s goodwill.

Such comparison involving an unauthorized reference to a competitor whether mentioned by

name or implicitly identifiable as such by the public may be "misleading" and is not condoned
in some countries and allowed in others as long as it is not a deliberate "discrediting" and
"misappropriation" of a competitor’s goodwill. Therefore, in countries with a permissive
attitude towards comparative advertising the courts will not interfere as long as what is said is
true even if the reference to the competitor or his product is clearly disparaging or exploits his
goodwill.
However, some other countries put special emphasis on the protection of the "honest"
businessman and his reputation and hence comparative advertising is either forbidden or
restricted. This notion is now changing and many countries have changed their negative
attitude towards comparative advertising as it is felt it enlightens the consumers with
information and hence has a positive effect on the economy by improving market
transparency.

OTHER EXAMPLES OF UNFAIR COMPETITION

(i) Nuisance advertising such as advertising which unduly exploits fear to make a sale.
(ii) The use of sales promotion techniques such as, lotteries, gifts and bonuses
which may be termed as undue inducement to buy.
(iii) Impeding of market activities such as, the destruction of a competitor's returnable
soft drink bottles.

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UNIT 27 PROTECTION OF NEW VARIETIES OF PLANTS

The protection of new plant varieties seeks to acknowledge the achievements of breeders of
new plant varieties by giving them, for a limited period, an exclusive right.

The organization overseeing the protection of new plant varieties is the Union internationale
pour la protection des obtentions végétales (UPOV Convention 1991).
Protection is available to a new variety of plants to safeguard the interests of plant breeders
as an incentive to the development of improved plant varieties for agriculture, horticulture and
forestry. Improved varieties are a necessary and a very cost-effective element in the
improvement of the performance and quality of plants of all types.
Breeding new varieties of plants requires a substantial investment in terms of skill, labor,
material resources, money and time. The possibility to obtain certain exclusive rights in
respect of a new variety of plants provides a successful plant breeder with a reasonable
opportunity of recovering his costs and accumulating the funds necessary for further
investment. In the absence of plant breeders’ rights, these aims are more difficult to achieve,
since there is nothing to prevent others from multiplying the breeder’s seeds or other
propagating material and selling the variety on a commercial scale, without providing
recompense to the breeder.
The TRIPS agreement allows three types of protection:
1. Through the patent mechanism
2. Through a special (“sui generis”) system related to plants
3. Through a combination of both
There is a widely held view that most new plant varieties do not satisfy the non-obvious
requirement of a system of patent protection, since they result from activities undertaken with
known objectives, and using known technology. This means that using the patent laws
system could be difficult. Therefore, most countries tend to have a special (“sui generis ”)
system for the protection of plant varieties.

CHARACTERISTICS OF A NEW PLANT VARIETY NECESSARY FOR PROTECTION

1. New (or novel)
2. Distinct
3. Uniform
4. Stable
5. Have a satisfactory denomination

NOVELTY
The novelty requirement serves to ensure that the variety has not already been exploited
commercially.

DENOMINATION
The variety is required to be designated by a denomination, which will be its generic
designation. There are three technical assessments:
(i) Distinctness
(ii) Uniformity
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(iii) Stability

DISTINCTNESS
The variety shall be deemed to be distinct if it is clearly biologically distinguishable from any
other variety, whose existence is a matter of common knowledge, at the time of filing the
application.

UNIFORMITY
The variety shall be deemed to be uniform if, subject to the variation that may be expected
from the particular features of its propagation, it is sufficiently uniform in its relevant
characteristics. Briefly, this means that the plants of a variety should all be the same or very
similar, with the degree of similarity depending on the nature of the propagation method.

STABILITY
The variety shall be deemed to be stable if the characteristics remained unchanged after
repeated propagation or at the end of each such propagation cycle. What this means in short
is that the variety should remain the same over a period of repeated propagation from seeds
or other methods.

PLANT BREEDERS RIGHTS

The UPOV Convention provides for the following plant breeders rights:
(i) Producing or reproducing (multiplying)
(ii) Conditioning for the purpose of propagation
(iii) Offering for sale
(iv) Selling or other marketing
(v) Exporting
(vi) Importing
(vii) Stocking for any of the above purposes

However, the authorization of the rights holder is not required for the following acts:
(i) Acts done privately and for non-commercial purposes
(ii) Acts done for experimental purposes
(iii) Acts done for the purpose of breeding and exploiting other varieties.

Therefore, farmers who need to save seed from a crop from one planting season to the next
planting season should obtain the permission of the rights holder.

EXCEPTION TO SAVING FARM SEED

The UPOV Convention 1991 permits States to exclude farm saved seeds from the scope of
the plant breeder’s right and to adopt solutions on the question, which are specifically
adapted to their national agricultural circumstances. Virtually all countries which have
adhered to the 1991 Act have adopted such a “farmer’s privilege” in one form or another.

SUBSISTENCE OF PLANT BREEDERS RIGHTS

(i) 25 years for trees and vines
(ii) 20 years for other plants
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WORLDWIDE PLANT BREEDERS RIGHTS
As with every other intellectual property right, the rights holder has a duty to register in each
of the countries where protection is required.
However, UPOV encourages States to have bilateral or multi-lateral agreements to recognize
the technical testing on plant varieties done in other member States. This greatly reduces the
cost and effort needed to get protection in several countries.

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UNIT 28 LAW OF CONFIDENCE

A trade secret or confidential information can be almost any sort of information which one is
privileged to but which is not freely or easily available to other people. Such information may
vary from the detailed technical specification of a new product, a target company take-over, a
new advertising campaign strategy and even a list of your employer’s customers. This
information is valuable to an enterprise which must not be known to competitors.
The information may be given to the recipient for work purposes, an individual may come
across it by chance or even generated it but are then not allowed to disclose to a third party.
The TRIPs Agreement section 7 Article 39 on undisclosed information provides that for
ensuring effective protection against unfair competition undisclosed information must be
legally protectable in a country as long as such information:
(i) Is secret
(II) Has commercial value by reason of the secrecy
(iii) Reasonable steps have been taken to keep it secret.

Equally, equity directs itself to the behaviour of the person who has come into possession of
information that is in fact confidential and was accepted on that basis either expressly or by
implication. Equity will pursue the information into the hands of a third party who receives it
with the knowledge that it was communicated in breach of confidence.

28.1 BREACH OF CONFIDENCE

In everyday human interactions in both private and public life, people tend to disclose
information to others with the intention that such information be used only for particular
purposes. As such, equity will prevent the recipients of such information to use the received
information for a different purpose without the authority of the owner.

Saltman Engineering Co Ltd v Campbell Engineering Co Ltd (1948) 65 RPC 203

Held
That, “if a defendant is proved to have used confidential information, directly or indirectly
obtained from a plaintiff, without the consent, express or implied, of the plaintiff, he will be
guilty of an infringement of the plaintiff’s rights”.

The action for breach of confidence is intended to protect confidential information which may
be personal, commercial, industrial, artistic or governmental in nature and may have been
obtained in confidence. The action prevents persons privileged to confidential information
from using it to gain unfair benefit for themselves or even mere disclosure.
This branch of law is particularly important to protect inventions and designs which are in
their infancy and have not been formally registered to acquire protection. Also, where the
inventor opts not to patent a product or process and relies on the law of confidence, then any
person connected with the invention is under a duty of confidentiality not to divulge such
information to a third party or competitor, e.g Coca Cola formula.

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This means that secret information acquired in confidence may only be used for the
purposes for which it was given. However, information will only be regarded as confidential if
it has the necessary quality of confidence about it.

28.2 ELEMENTS FOR BREACH OF CONFIDENCE

The basic requirements to institute an action for breach of confidence were laid
down in the case of:

Coco v AN Clark (Engineers) LTD (1969)

The claimant had designed a “Coco” moped engine. He entered into negotiations with the
defendants with a view that they could manufacture it. The claimant showed the defendants a
prototype and supplied them with information and drawings. After several months of
discussions the defendants broke off negotiations and thereafter produced a similar moped
engine which was highly successful. The defendants admitted their moped had a similar
piston and carburetor as the claimants moped engine.
The claimant sought an injunction to prevent the manufacture and sale of any machines in
which the defendants made use, directly or indirectly, of any confidential information which
was property of the claimant.

Held
Three elements are normally required to succeed in a case of breach of confidence;
1. The information must have the necessary quality of confidence about it
2. The information must have been imparted in circumstances imposing on obligation of
confidence.
3. There must be an unauthorized use of that information to the detriment of the party
communicating it.

However, the claimant could not establish that the nature of the information was
confidential (limb 1) nor that there was clear misuse of that information (limb 3).
The injunction not granted.

This has come to be called the “Coco v Clark Test” necessary to establish an
equitable breach of confidence.
Protectable information includes literacy and artistic material such as:
(i) Ideas for a TV series (Fraser v Thames TV (1989))
(ii) Photograph images (Creations Records Ltd v News Group Newspapers (1997))
(iii) Costumes and design of a film set (Shelley Films v Rex (1994))
(iv) Lists of customers
(v) Government information such as cabinet discussions and advice (Attorney-
General v Cape (1976)).
(vi) Details of security services (Attorney-General v Observer Ltd (1990))
(vii) Trade secrets (Seager v Copydex (1967))
(viii) Personal information such as:
(a) Private telephone conversations
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 (b) Details of homosexual affair
(c) Marital secrets

7.2.1 NECESSARY QUALITY OF CONFIDENCE

Information will only be held as being confidential if it is not trivial or commonplace,
in the public domain or too vague. This means that the information must be secret.

Fraser v Thames TV (1984) 1QB 44

The claimants had developed a well-formed idea for a TV series concerning the
formation of a female rock group and their subsequent experiences and adventures. It
was partly fictional and partly based on truth being based on the group called “Rock
Bottom”. The idea was orally communicated in confidence to the 2 nd defendant, the
script writer, who then communicated it to the 3 rd defendant, the producer. The 1st
defendant TV company was made aware of the idea and decided to make a series,
Rock Follies. The defendants argued that whilst confidence can protect a literacy or
dramatic idea, it can only do so if fully developed in form of a synopsis or put in
material form. The claimant claimed damages for breach of confidence.

Held
That, the idea will only be capable of protection if sufficiently developed so that it
would be seen to be a concept capable of being realized as an actuality. The idea
must also have some significant element of originality and not already in the public
domain. To be protected, the claimant must established that,
(i) The occasion of communication was confidential
(ii) The content of the idea was clearly identifiable
(iii) The content of the idea was original
(iv) The content of the idea was of potential commercial attractiveness
(v) The idea was capable of being realized in actuality.

In this case, there was an obligation of confidence and this was breached.

INFORMATION MUST BE SECRET

That is to say that the information must not be in the public domain, i.e it must not
be public knowledge. However whilst materials could be in the public domain, their
development or processing as a result of human skill or creativity could create
confidentiality.

O Mustad & Son v Dosen and Allock (1963)3 ALL ER 916

The appellants, Mustad, purchased a company called Thoring & Co including all trade
secrets which included information relating to a machine for the manufacture of fish
hooks. Dosen was a former employee of Thoring & Co and had come under an
express contractual obligation of confidence. Mustad sought an injunction restraining
Dosen from communicating confidential information relating to the machine to his new
employers, Allcock & Co. The respondents contended that the appellant had a patent
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application filed in 1925 which was then published in 1926 hence the information was
no longer secret.

Held
That, the appellants had made the disclosure to the world and “the secret , as a
secret, had ceased to exist”. Appeal dismissed.

28.3 OBLIGATION OF CONFIDENCE

The obligation of confidence on the recipients may arise in the following circumstances:
(i) Private confidences
(ii) Confidences relating to government secrets
(iii) Commercial confidences.
An obligation of confidence can be maintained even if the alleged confidential
information could be obtained from the public domain. The information given must
have been imparted in circumstances importing an obligation of confidence.

Boardman v Phipps [1967] 2 AC 46

Held
That the true test is to determine in what circumstances the information has been acquired. If
the information has been acquired in such circumstances that it would be a breach of
confidence to disclose it to another, then courts of equity will restrain the recipient from
communicating it to another.

28.4 EXPRESS OBLIGATION

Schering Chemicals Ltd v Falkman Ltd (1982)

The claimant made and marketed a drug, Primodos, as a pregnancy test. It was suspected of
causing abnormalities in urborn children attracting large media coverage. The claimant
engaged the services of the defendant to provide training sessions for executive officers
on how to handle adverse publicity. For purposes of training, the plaintiff disclosed a
substantial amount of confidential information to the defendant who agreed to keep it
secret as it was confidential. One of the instructors came up with an idea of making a
documentary on Primodos which the claimant rejected. However, the instructor went ahead
to produce a documentary. The claimant obtained an interim injunction preventing its
broadcasting.

Held
That, eventhough the information had been subject to extensive media coverage did
not preclude it from being confidential and subject to an obligation of confidence. The
defendant had been privy to some information that was still secret and hence were in
breach of their obligation. The injunction is granted and appeal dismissed.

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28.5 IMPLIED OBLIGATION
The making of access of information more difficult by way of encryption when selling
goods implies an obligation of confidence.

Michael Douglas v Hello! Ltd (2006) QB 125, CA

A photographer, despite heavy security, surreptitiously took photographs of the high-

profile celebrity wedding of Michael Douglas and Catherine Zeta-Jones. The Douglases
had given exclusive rights to OK! Magazine to publish photograph of the event.
Hello! Magazine threatened publication ahead of OK! Magazine.
The action to obtain an interim injunction failed.

Held
Damages awarded to the Douglases for breach of confidence and loss of profits to
OK! Magazine. Appeal by Hello! Magazine dismissed.

28.6 EMPLOYEE AND FORMER EMPLOYEE OBLIGATIONS - Duty of fidelity

The employee is under an implied obligation not to divulge the employer’s confidential
information both during and after employment.

Floyd v Cheney (1970)

An architect engaged an assistant with a view to partnership. The assistant removed certain
documents and photographed others in the absence of the architect who then sued for the
return of the documents and negatives and sought an injunction restraining the use of
confidential information. There was a dispute as to whether this was a partnership or a
master/servant relationship. The Partnership Act section 28 provides that, “partners are
bound to render true accounts and full information of all things affecting the partnership to
any partner or his legal representatives.” Section 29 requires “a partner to account to the firm
for any benefit derived by him without the consent of the other partners from any transaction
concerning the partnership or involving the use of partnership property”.
Held
A partner must not put himself in a position of conflict of interest and duty toward his partners.
That “even if this was a partnership, there existed a duty of good faith which prevented the
assistant from acting as he did”.

Roger Bullivant Ltd & Others v Ellis & Others [1987] IRLR 491

Mr Ellis, Bullivant’s Managing Director, left to set up a competing business, taking confidential
information with him including a card index with the contact details of Bullivant’s contacts,
which he used to contact those clients in direct competition. The High Court granted an
injunction prohibiting Ellis from entering into or fulfilling any contract made with or through
any of the contacts in the card index until judgment or further order. Ellis appealed to the
Court of Appeal, arguing that the injunction should not apply to any customers that he was
able to make contact with without using the card index.

Held
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His appeal failed on this point, the court concluding that “having made deliberate and
unlawful use of Bullivant’s property, he cannot complain if he finds that the eye of the law is
unable to distinguish between those whom, had he so chosen, he could have contacted
lawfully and those whom he could not”.

However, there is need that an ex- employee should be able to work freely and use
the skills, knowledge and experience they have acquired during their employment.

Faccenda Chicken Ltd v Fowler (1986) 1 All ER 617 , CA

The claimant carried on business of rearing chickens and selling fresh chickens using a
mobile service of refrigerated trucks. Fowler, an ex- employee, who had worked as a
sales manager set up a similar business in competition with his ex-employers. The
claimant brought an action for damages and an injunction for breach of confidence
by using his knowledge of sales information and customer lists.

Held
Mr Fowler was simply making use of information acquired in the course of his
employment which had not been restricted to senior members of management for it
to be considered confidential.

28.7 UNAUTHORISED USE OF THAT INFORMATION

This is the third element in an action for breach of confidence. The unauthorized use
of confidential information must be detrimental of the party communicating it by way
of economic damage or harm to a person’s social standing. The confidential
information obliges the recipient of confidential information to use it only for its
intended purpose.

Seager v Copydex (no 1) (1967)2 All ER 415, CA

The plaintiff invented and patented a carpet-grip called Klent. In discussions with two of
the defendants managers on the possibility of marketing Klent, the plaintiff revealed in
confidence the crucial idea for another grip whose characteristics were a v-tang and
a strong point.
The managers stated that they were not interested in the idea and the negotiations
collapsed. Subsequently, the defendant developed their own carpet grip based on the
idea of the plaintiffs alternative and called it the “Invisigrip” as suggested by the
plaintiff.

Held
The defendants were liable for unconsciously copying the plaintiffs design idea and
used the information imparted to them during confidential negotiations. Damages
awarded.

28.9 TRADE SECRET

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The courts will generally give greater protection to trade secrets. It is information that
would cause real harm to an enterprise if it were disclosed to a competitor and the
owner had limited its dissemination. Information which is in the public domain is no
longer confidential and its use cannot be prevented.

Seager v Copydex

“A trade secret may consist of any formula, pattern, device or compilation of information
which is used in one's business, and which gives him an opportunity to obtain an advantage
over competitors who do not know or use it. It may be a formula for a chemical compound, a
process of manufacturing, treating or preserving materials, a pattern for a machine or other
device, or a list of customers.” Per Lord Denning

Trade secrets include any confidential business information which gives an enterprises
an edge over its competitors, such as:-
i. Manufacturers processes, techniques and know how
ii. Lists of customers
iii. Personal records
iv. Financial information
v. Business strategies and plans
vi. Marketing information
vii. Research and development information
The unauthorized use of such information is unfair practice and violates confidential
information.

Thomas Marshal (Export) Ltd v Guinle (1979) 1CH 227

The defendant had been the managing director of the plaintiff company for 10 years
whose business was importing clothes. His contract of employment contained a
restraint of trade clause that he was not to discuss any confidential information during
and after his employment. The defendant started to run his own companies in
competition with the employer and subsequently resigned.

Held
That the defendant be restrained from continuing further breaches and an injunction
granted.

Trade secrets are currently protected by common law and employees have an ethical
responsibility to regard as confidential such trade secrets.

28.10 REMEDIES
1. Injunction
2. Damages
3. Account of profits
4. Delivery up
5. Destruction of infringing materials
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28.11 DEFENCES
PUBLIC INTEREST DEFENCE
The defendant can avoid liability by establishing that the unauthorized use or
disclosure of confidential information was on the grounds of public interest.

Lion Laboratories v Evans (1985) QB 526 – Lion Intoximeter 3000 (breathalyzer)

Held
That the faulty intoximeters represented a serious threat to the fair administration of
justice and hence was in the public interest to reveal such confidential information.

UNIT 29 INTELLECTUAL PROPERTY AND DEVELOPMENT

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Development is a broad concept to define, but important to understand because it is among
the key objectives of the global and many domestic intellectual property systems.
Development used to be the same as modernization and economic growth. Indeed many
experts in the past considered these two features to be both a primary aim and indicator of
international development.
More recently, economic growth has been valued, not for its own sake, but for facilitating
human freedom. Experts like the Nobel prize-winning economist Amartya Sen, renowned
philosopher Martha Nussbaum and others have called this the “capabilities approach” to
development. Economic growth can provide people with more money and as a result more
freedom to make choices in their lives. However that freedom is meaningless without the
capabilities to enjoy good health, food security, a clean environment, quality education,
vibrant arts and culture and so on. Intellectual property is, in one way or another, linked to all
of these essential things.
A well balanced system of granting and exploiting intellectual property rights is a factor in
economic growth as it encourages investment and trade, but if designed and used
appropriately, it can also help cultural creativity to thrive, educate a population or workforce,
drive technological innovation to improve health and nutrition and yield other social benefits
as well. Intellectual property by itself neither helps nor hinders development necessarily. It is
how laws, policies and practices are designed and used in different countries that determine
whether IP is effective for development purposes. Flexibilities in the international treaties and
agreements that you learned about in earlier modules can facilitate development because
countries can use them in a manner that enables them to pursue their own public policies,
either in specific fields like access to pharmaceutical products (for instance, through
compulsory licensing in some circumstances) or protection of their biodiversity (with patents
or another unique system), or more generally, in establishing macro and microeconomic and
institutional conditions that support development.
For example, some countries may want cultural works to be widely available in the public
domain as early as possible, to allow others to freely use the material, so these countries
maintain the term of copyright protection at the Berne Convention and TRIPS Agreement
standard of 50 years after the author’s death. Other countries may want to provide their
cultural industries with more revenues for a longer time, so have extended the term of
protection to the author’s life plus 70 years.
Concerning patents, the TRIPS Agreement standardizes the subject matter of protection:
Patents must be available for any inventions in all fields of technology that meet the criteria of
novelty, inventiveness and usefulness. But there is also some flexibility: WTO members may
exclude some inventions from protection if that is necessary to, protect ordre public” or for
reasons of protection of morality; human, plant or animal life or the environment. So while
protecting ‘essentially biological’ inventions that resulted from only human intervention with
patents is possible, there is worldwide debate, not only in developing countries but also in
places like the United States, as to whether human or animal or plant genes, for instance,
should be patentable. The TRIPS Agreement is also flexible about protecting higher life forms
to the extent they satisfy the criteria of patentability, like plants and animals, but it also allows
other avenues such as a system like plant breeders’ rights. Which of these flexible options a
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country chooses will probably depend on a wide variety of social, cultural and economic
considerations.

Furthermore, to guarantee access to some important inventions that are protected, like
pharmaceuticals, countries are allowed to issue compulsory patent licenses in some
circumstances. This procedure has been used, for example, to provide access to medicines
in countries including Malaysia, Indonesia, Brazil, Thailand and Ghana.

Compulsory licensing is not normally the first choice for any country trying to provide access
to medicines. The TRIPS Agreement indicates that certain steps should be taken before
issuing a compulsory license, including an attempt at voluntary negotiations. That suggestion
does not apply in all cases, such as national emergencies, extreme urgency or public non-
commercial uses. For example, in 2006, Thailand issued a compulsory licence for one of its
government organizations to produce generic anti-AIDS drugs, without first consulting the
patent owner, Merck. In subsequent years, however, Thailand did try unsuccessfully to
negotiate with anti-cancer drug patent owners before issuing compulsory licences. Brief
voluntary negotiations also occurred in Canada before a compulsory licence was recently
issued for a Canadian company to export generic anti-AIDS drugs to Rwanda, which lacked
the capacity to produce the drugs itself.
Provisions dealing with compulsory licencing were a focus of the 2001 WTO’s Doha
Ministerial Declaration on TRIPS and Public Health. That Declaration later led to more
flexibility, especially for countries (like Rwanda) that typically cannot manufacturer
pharmaceuticals locally, so rely on exports from other countries. It also extended the deadline
for least developed countries to provide patent protection for pharmaceuticals until at least
2016. So, if the least developed country does have manufacturing capacity, and the medicine
is not patented in that country, a compulsory licence would not be needed.
It is not only countries that can take advantage of flexible approaches toward intellectual
property protection; private companies and public institutions like universities can flexibly
manage intellectual property as well. For instance, some companies or institutions might
want to protect their products indefinitely as trade secrets, rather than disclosing the details of
an invention to the public in exchange for 20 years of exclusive patent protection.
Those companies or institutions that choose patent protection might manufacture and sell a
product themselves, which brings economic value to the organization and new products and
services to the market. Or they could work with partners to cross-license their intellectual
property rights together in order to gain the benefits of collaboration, such as access to
complementary technologies or new markets. Collaborating through patent licensing could be
an especially attractive option for government, universities and private sector firms in
developing countries, which may not yet have the research and development capacity or
access to the scientific and technical resources to commercialize innovations alone.
Take the case of access to medicine again as a concrete illustration. The most effective
treatments for HIV/AIDS, for example, often involve a combination of many different products,
the patents for which are owned by many different companies around the world. To address
some of the competition and coordination issues involved with intellectual property licensing,
a group of partners formed a “Medicines Patent Pool” that provides a “one-stopshop” for
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patent licenses. This model of intellectual property management can help to create new
revenue sources for the companies involved, lower the costs of providing these drugs and,
most important, improve the health and lives of millions of people.
The examples given raise important issues for public policy makers to consider. The private
sector—including large companies, small or medium sized businesses and budding
entrepreneurs—can also benefit from a development oriented view of intellectual property
rights. Using intellectual property rights to create shared value between companies and
communities can grow markets and create new ones, especially globally.
Thinking about intellectual property and development is something that not only developing
or least developed countries need to do. All countries face the same basic questions about
striking the right balance among various related objectives. Similarly, all companies need to
think about the role of intellectual property in their business plans so as to seize new
commercial opportunities in the short and long terms.

WIPO’s Role
Development is at the core of WIPO’s mandate. When the organization was first established,
its role was to “promote the protection of intellectual property throughout the world.” Upon
becoming a specialized agency of the United Nations in the mid-1970s, this role was more
specifically connected to development. Thereafter, WIPO has been tasked to promote
creative intellectual activity and technology transfer to developing countries “in order to
accelerate economic, social and cultural development.”
Of course, as we have learned already, this can be done with flexible systems of intellectual
property protection. WIPO promotes development through intellectual property policy in
several ways. In addition to being a leading forum for negotiating new treaties and
agreements (including their flexibilities), WIPO
• administers some of the most important processes for protecting intellectual property rights
internationally,
• provides training and education,
• legislative and technical assistance
• serves as a reservoir of rich databases of intellectual property related information.
WIPO has, in the past, heard suggestions from its Member States, nongovernmental
organizations and others to improve work in the area of intellectual property and
development. Some of these suggestions date back several decades, since the issue of
intellectual property and development surfaced in the 1960s. None, however, have had as
much impact as a formal initiative, first advanced by Argentina and Brazil in 2004, for a new
and specific “Development Agenda.”

The Development Agenda

The WIPO Development Agenda, sometimes called the “DA” for short, is part of a change in
the ways that links between intellectual property and development are understood, and
consequently in the way that development issues are prioritized. For example, this could be
by emphasizing flexibilities in the intellectual property system that could help development.
You will recall from earlier in this module that development is no longer viewed as solely
about economic growth, and that it is increasingly appreciated how intellectual property alone
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can or cannot impact development. It must be emphasized again that nothing in the
Development Agenda rejects the benefits of intellectual property rights. To the contrary, the
Agenda confirms that intellectual property can and does facilitate development in many
circumstances.
It is because an understanding of these circumstances in local and global contexts will help
countries and organizations to better design, administer and use intellectual property systems
that the WIPO Development Agenda seeks to further deepen appreciation of this topic.
Recognizing both the benefits and costs of intellectual property in light of social, cultural and
economic issues actually makes intellectual property a more important subject than if the
focus were on protection alone.
For example, copyright protection is very important for many kinds of creators, including
authors and book publishers. Without copyright protection, it would be much more difficult to
set the price and conditions of access to books, which sustains the publishing industry. At the
same time, however, copyright protection may not provide the right market incentives to
guarantee that books are produced in a manner accessible to everyone, including speakers
of local languages or persons with perceptual disabilities. So the international copyright
system includes a mechanism – an appendix to the Berne Convention –to permit countries to
issue compulsory licenses authorizing the translation of books into certain local languages.
And negotiations are ongoing among WIPO, its Member States, non-governmental
organizations and others about a groundbreaking new agreement for a system to provide the
perceptually disabled with access to copyright-protected materials.
The WIPO Development Agenda is part of a broader movement reforming and updating the
entire international trade framework. You may also be aware of the so-called “Doha
Development Agenda,” named after the city in Qatar where the World Trade Organization’s
current round of negotiations began. Though these “agendas” are distinct from one another,
cooperation with other organizations including, but not limited to, the WTO on IP-related
issues is one of the specific recommendations adopted at the 2007 General Assembly of
WIPO Member States.
WIPO Member States adopted 45 such recommendations in total, grouped into 6 clusters.
These recommendations formally constitute the WIPO Development Agenda. They aim to
ensure that development considerations form an integral part of the work of all sectors of the
organization, in other words, to “mainstream” development. Mainstreaming would mean, for
example, that all WIPO activities take account of the different potential impacts of intellectual
property on economic, social and cultural development. It would be key to the design and
delivery of technical assistance and education; it would influence discussions about new
treaties and agreements; and it would be an important part of evaluating the successes or
failures of organizations working on intellectual property issues.
After the 45 recommendations arranged in 6 clusters were adopted at WIPO’s 2007 General
Assembly of Member States, much thought and discussion was put into implementing them
into practice.
It was agreed that this would happen through particular activities, programs and “projects,”
coordinated by a new division of WIPO: the Development Agenda Coordination Division
(DACD). In fact, the creation of this learning module introducing the Development Agenda to
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you is one of the concrete outcomes of an implementation project. The DACD serves as the
Secretariat for a new WIPO committee on development and intellectual property (CDIP),
coordinates the implementation and mainstreaming ( integration of the development agenda
into all the activities of WIPO)of the Development Agenda recommendations within WIPO, is
the interface with external stakeholders, and promotes better understanding of the
Development Agenda and its benefits.
This introductory lesson does not delve into the technical specifics of all of the Development
Agenda’s clusters, recommendations and implementation projects. But it will give you some
examples of the issues and outcomes of this initiative. The 6 “clusters” of recommendations
deal with the following general topics:
- Technical assistance and capacity building (Cluster A).
- Norm-setting, flexibilities, public policy and public domain (Cluster B).
- Technology transfer, information and communication technologies (ICT) and access to
knowledge (Cluster C).
- Assessment, evaluation and impact studies (Cluster D).
- Institutional matters including mandate and governance (Cluster E).
- Other issues (Cluster F).

Technical assistance and capacity building (Cluster A).

Recommendations in this cluster try to ensure, among other things, that WIPO’s help with IP
and development issues is transparent and responsive to local requests. Of the cluster’s 14
recommendations, some suggest more funding for development-oriented technical
assistance, some offer guidelines for hiring and reporting on the activities of staff and
consultants, and some address WIPO’s relationships with Member States and other
organizations.

There are specific recommendations about topics of special importance, such as the
interface between intellectual property and competition policy, or groups in particular need of
help with IP issues, such as small and medium sized enterprises.
Recommendation 1 provides a good example of the themes covered in this cluster:
1. WIPO technical assistance shall be, inter alia (among other things), development-oriented,
demand-driven and transparent, taking into account the priorities and the special needs of
developing countries, especially LDCs, as well as the different levels of development of
Member States …
This and other recommendations in Cluster A are being implemented, among other ways,
through projects such as increasing transparency by creating a searchable database of
WIPO’s technical assistance activities, http://www.wipo.int/tad/en/. WIPO is also creating new
nodes of the Global Academy in developing countries, and supporting the development of
national IP strategies. The pilot project to set up “Start-Up” National IP Academies, for
example, will help developing countries and LDCs to establish IP training institutions with
minimum resources to meet their increasing demand for IP specialists, professionals,
government officials and other stakeholders.
Another project is to create a framework to assist all countries in developing national IP
strategies for innovation. For example it will directly reference and support their development
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needs and priorities, and take into account their specific economic circumstances and
aspirations. The framework, which will provide a conceptual basis for the design of IP
strategies, has strong links with others projects that aim to develop a practical methodology,
validated by a piloting process in selected countries, using a series of practical tools. The
framework will be developed by a cluster of expert working groups comprised of eminent
development economists from around the world, IP experts and advisors from international
organizations, in the fields of trade, environment, culture and education, industry, health,
agriculture, and science and technology. The resulting framework, together with the
methodology and practical tools, will be made available to WIPO’s Member States. WIPO will
then provide its services to assist countries to develop national IP strategies upon demand.

Norm-setting, flexibilities, public policy and public domain (Cluster B).

These eight recommendations are about making the process and outcomes of negotiations
over new intellectual property rules fairly balanced and inclusive of various different
perspectives. Very importantly, WIPO’s activities in this respect shall take into account
different levels of development in different countries, as well as a balance between the costs
and benefits of intellectual property protection. The value of a robust public domain of
knowledge not protected by intellectual property rights is alluded to in several
recommendations. Issues that are especially important for some developing countries, like
the protection of genetic resources, traditional knowledge and folklore, and access to
knowledge and technology to foster creativity and innovation, receive specific mention in
recommendations within this cluster.

Many of these principles are captured well in Recommendation 15:

Norm-setting activities shall:

• be inclusive and member-driven;
• take into account different levels of development;
• take into consideration a balance between costs and benefits;
• be a participatory process, which takes into consideration the interests and priorities of all
WIPO Member States and the viewpoints of other stakeholders, including accredited inter-
governmental organizations (IGOs) and NGOs; and
• be in line with the principle of neutrality of the WIPO Secretariat.
In the context of this cluster of recommendations for one of the implementation projects
WIPO has engaged an independent expert to prepare studies on Intellectual Property and
Public Domain.
Recognizing the importance of the public domain, the project will comprise a series of
surveys and studies that will analyze good practices and the currently available tools for
identifying content that is in the public domain and to preserve such content from individual
appropriation. The surveys and studies should facilitate the subsequent possible steps in
preparation of guidelines and/or possible development of tools to facilitate the identification of
and access to public domain subject matter. The project is divided into three components that
will address the issue from the perspective of copyright, trademarks and patents. A study
about copyright and the public domain was one of the first outcomes of this initiative.
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WIPO has also done work to study and promote flexibilities in the intellectual property
system, and to align its own activities embracing the United Nations Millennium Development
Goals. In the Millennium Declaration, all 189 member states of the United Nations set out
within a single framework the key challenges facing humanity at the threshold of the new
millennium, outlined a response to these challenges, and established concrete measures for
judging performance through a set of inter-related commitments, goals and targets.

Technology transfer, information and communication technologies (ICT) and access to

knowledge (Cluster C).
Distributing the benefits of innovation and information as widely as possible is a central aim
of linking IP and development, so this cluster of eight recommendations suggests several
ways that may happen. Among those are recommendations to encourage research
collaborations and scientific cooperation that might facilitate technology transfer to less
developed countries, and to expand the use of databases of intellectual property related
information, for example, of publicly available patent information. Recommendation 25 is one
of several that capture the essence of Cluster C:
25. To explore intellectual property-related policies and initiatives necessary to promote the
transfer and dissemination of technology, to the benefit of developing countries and to take
appropriate measures to enable developing countries to fully understand and benefit from
different provisions, pertaining to flexibilities provided for in international agreements, as
appropriate.
To implement this recommendation, along with several others, the Development Agenda
Coordination Division is working on a project called, “Intellectual Property and Technology
Transfer: Common Challenges – Building Solutions,” which includes meetings, studies and a
high-level expert forum. This project involves preparation or updating and improving a series
of modules and materials relating to managing IP rights by academic and research
institutions, including on the setting up and running of technology transfer offices at public
research organizations, exploring technology transfer mechanisms (in particular, licensing
agreements) and enhancing the capacity to draft patents.

Assessment, evaluation and impact studies (Cluster D).

Before IP laws, policies and practices can be best used or improved, their impact must be
better assessed and understood. That is the focus of 5 recommendations in Cluster D. In
addition to recommending a yearly review and evaluation mechanism to assess all of WIPO’s
development-oriented activities against appropriate benchmarks, this cluster proposes some
specific topics to be studied, including open collaborative projects, intellectual property in the
informal economy, and economic, social and cultural impacts of intellectual property.
Recommendation 38, the last in this cluster, nicely captures the overarching objective:

37. Upon request and as directed by Member States, WIPO may conduct studies on the
protection of intellectual property, to identify the possible links and impacts between
intellectual property and development.
In pursuit of this objective, WIPO has engaged in projects on Intellectual Property and
Economic and Social Development, and on Open Collaborative Projects.
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The project on economic and social development consists of a series of studies on the
relationship between IP protection and various aspects of economic performance in
developing countries. They would seek to narrow the knowledge gap faced by policymakers
in those countries in designing and implementing a development-promoting intellectual
property (IP) regime. The envisaged studies would focus on three broad themes:
 domestic innovation,
 the international and national diffusion of knowledge,
 institutional features of the IP system and its economic implications.
The benefits will be to promote better understanding of the socio-economic effects of IP
protection in developing countries, and create analytical capacity in countries where little
economic work on IP has been undertaken so far.
The separate project on open collaboration models will initiate and explore a range of
activities for exchanging experiences on open innovation environments (including user-
centric environments where users co-create innovations through open collaborative
agreements) in developed and developing countries.

Institutional matters including mandate and governance(Cluster E)

Here is where WIPO’s own processes and activities, and its relationships with other important
inter- and non-governmental organizations, are specifically considered. Some of the matters
covered by these 6 recommendations are also addressed in other clusters, such as
suggesting a review of current technical assistance activities, cooperating with other United
Nations agencies, and enhancing the ability of stakeholders to participate in decision-making
processes. Take Recommendation 40, for example, which is important because it
emphasizes that intellectual property is only one part of a comprehensive strategy for
development. It must be related to issues like trade, health, the environment, education,
science and culture, which within the purview of other United Nations bodies or multilateral
organizations. To request WIPO to intensify its cooperation on IP related issues with United
nations agencies, according to Member States’ orientation, in particular UNCTAD, UNEP,
WHO, UNIDO, UNESCO and other relevant international organizations, especially the WTO
in order to strengthen the coordination for maximum efficiency in undertaking development
programs.
To implement some of the recommendations in this cluster, WIPO has worked to involve
more non-governmental organizations in its activities, and is working more closely with other
United Nations agencies. Moreover, WIPO is working with independent experts to conduct a
large-scale evaluation of its technical assistance activities in the area of cooperation for
development.
Expected benefits from this project include:
(i) Adapting and strengthening WIPO’s existing management framework to ensure that
there is a strong focus across all relevant programs on the impact of the
Organization’s activities on development, including technical assistance.
(ii) A contribution to the monitoring and evaluation culture within the Organization, and

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(iii) Assistance to the systematic collection and use of performance information to ensure
accountability, and support informed decision-making by the Organization and its
stakeholders. This will also increase the capacity and ability for independent and
objective evaluations of the development impact of WIPO’s activities.
As a practical example, during a recent meeting of WIPO’s Advisory Committee on
Intellectual Property Enforcement (ACE), the principles behind Recommendation 45 had a
clear impact. The ACE’s work includes a review of methodologies applied in existing studies
to measure the economic impact of counterfeiting and piracy; research to identify different
types of infractions and motivations for IPR infringements, taking into account social,
economic and technological variables and different levels of development; targeted studies
with an aim to developing analytical methodologies that measure the social, economic and
commercial impact of counterfeiting and piracy on societies, taking into account the diversity
of economic and social realities as well as
different stages of development; and an analysis of various efforts, alternate models and
other possible options from a socio-economic welfare perspective to address counterfeiting
and piracy challenges.
What does the future hold for issues of intellectual property and development?
The Development Agenda is not exactly like most of the treaties and agreements
administered by WIPO because it is more policy than typical international law, but it will have
an ongoing impact on the organization, its Member States and, indeed, all of those who are
interested in the global intellectual property system.
For one thing, more people now appreciate that intellectual property must be understood as
part of a carefully balanced system of laws, policies and practices that recognize and
encourage creativity and innovation, to the benefit of society a whole. In that context, the
Development Agenda is not about promoting stronger or weaker intellectual property
systems: it is about promoting better intellectual property systems. That requires great
sensitivity to local social, cultural and economic circumstances, which WIPO and its Member
States are increasingly demonstrating.
This task is not for WIPO alone. Implementation of the principles underpinning the
Development Agenda must take place at regional, national and local levels too. Everyone
who holds a stake in the intellectual property system needs to think critically about the
outcomes they want to achieve, and how intellectual property can be leveraged appropriately
to those ends.

BENEFITS TO DEVELOPING COUNTRIES

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The effective protection of intellectual property rights is fundamental for developing countries
wishing to attract Foreign Direct Investments (FDIs). The FDIs have the potential for the
transfer of technology and the development of a competitive local market.

ECONOMIC BENEFITS OF INTELLECTUAL PROPERTY FOR DEVELOPING

COUNTRIES
Developing countries can benefit from the intellectual property system in the same way as
industrialized countries. The disadvantage for developing countries today is that many of their
companies do not yet fully appreciate how to use the intellectual property system to their own
advantage. But as awareness increases, certain products start to appear on the market; I
cannot give exact examples, but generally speaking Indian multinational companies trade
and sell branded products, which are a reference for their clients, so the clients go and are
able to find the products that they are looking for, because they know the origin of the
products and use that as an indicator of quality.

In technology too, if a research center in a developing country develops a technology that

might be useful to another country, and does not secure patent for its inventions or industrial
design, it will lose its advantage. It will lose the possibility of selling the technology and
thereby earning additional income for its intellectual product. Another example springs to my
mind; it concerns pineapples. In Europe, you will find pineapples on the market that come
from various countries. Sometimes the shop will state that it’s a pineapple from Ghana, from
Central America or from Ivory Coast, but as far as I know only Ivory Coast has so far actually
introduced a label "Pineapples from Ivory Coast," and certain shops have observed that
customers are looking for those pineapples in particular. This is not a trademark as such; it’s
more of a certification mark, but it is registered as a trademark, and exporters from Ivory
Coast can use the label to distinguish their products from the pineapples of other foreign
producers. And I believe

that developing countries would benefit from making more use of the various appellations of
origin, geographical indications or trademarks that are available as a means of selling their
goods as local produce, not as standard goods from no identifiable regional source.

There are various mechanisms for receiving payments from other people using one’s
intellectual property The terms licensing and royalties often come up in connection with
the exploitation or marketing of intellectual property. What’s the difference between
licensing and royalties?

Licensing is a process whereby something is allowed. It's the giving of permission. It comes
from the Latin noun licentia, meaning permission. The owner of the intellectual property right
or IPR is the only person who can permit the use of that IPR by somebody else. If somebody
wants to use my technology, he has to enter a license agreement, a form of contractual
arrangement, with me, and that agreement will specify the conditions on which he will use my
intellectual property rights, namely how, where and when. This amounts to permission by
law, and it is the legal way of exploiting intellectual property rights. If somebody uses my
intellectual property, say my technology, my invention or my trademark, without permission –
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that is illegal, it's infringement or an act of piracy, and it only becomes legal if and when he
enters into a license agreement with me.

The Royalties on the other hand are the remuneration payable under license agreements,
usually calculated as a percentage of the number of units or the quantity to be produced
under the license. For example, if you license the production of tires to somebody, you have
two ways of setting the price in the license agreement. Either you opt for a lump sum, in
which case you decide that your technology and the know-how that goes with it is worth a
million dollars, and the agreement specifies how the licensee is to pay the million dollars, or
you provide for royalties, which are regular payments of remuneration based either on
production quantities or on other factors.

Royalties are used by licensors when they want control over the licensee's output and also to
some extent on its quality, because the volume of royalties is an indicator of how much the
licensee is manufacturing and ultimately a means of checking on the licensee's
manufacturing capacity.

For the licensee, the advantage of agreeing on royalties is that the amount payable for the
technology is spread over years and the benefit he derives from the license depends on his
output. It is useless if a licensee has to pay a huge amount as a technology fee, which we
call a lump sum royalty, and then does not use the technology to secure a return on the
investment made.

There have been numerous attempts to help creators of intellectual property to turn their
rights into commercially successful products.

INNOVATION CENTERS
Innovation centers are a concept that appeared in the late 1970’s and 1980’s in some
industrialized countries. Basically, they appeared for the first time in conjunction with
university research or government-funded research laboratories in Western Europe and
North America. The main function of an innovation center is to bring a new technology and
new development from the researcher's desk or the laboratory to the market. It’s easy to say
that you have to transfer technology. It’s much more difficult actually to do it, because the
stage of development of an invention will greatly influence the cost of the transfer.
If you have an invention that has been proved new and is therefore patentable, and you have
been granted a patent, you have taken the first step, but this does not mean that the
technology will actually work. It may work well in laboratory conditions but never work in
industrial applications. Sometimes the market is not ready to receive it. Sometimes other
conditions or human factors interfere and you cannot transfer the technology. So in fact
innovation centers are similar to the business incubation centers of a government or chamber
of commerce.
The innovation center would help the inventor or researcher bring his invention or other IPR
on to the market. It could offer various services like, intellectual property advice, assessment
of inventions for economic viability and technical feasibility or in relation to the legal
environment in which the invention has to work, and it would assist the inventor or researcher
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in developing a business plan with which to attract investors and manufacturers more easily,
as a business plan gives a better idea of how one would like to see the invention develop and
be exploited as a marketable product. Basically, it would serve as a bridge between research
and development on one hand and manufacturing on the other.

So in a way, the innovation center is an attempt to turn intellectual property into intellectual
capital?
That's right. That is indeed what an innovation center would do, ideally, to facilitate the
transfer of the invention from the research stage to the market.
There are successful innovation centers in many universities, not only in industrialized
countries but also in Mexico, Brazil and in Argentina, and I’ve heard that they are also to be
found in countries of the Far East. Our task at WIPO is to encourage developing countries to
establish innovation centers as structures that will facilitate the marketing of intellectual
investments, in other words, the research results achieved at national or university-based
research laboratories, or by national inventors.
As mentioned in Unit 11 above, Geographical Indications are important for the protection and
preservation of IP related to traditional cultures, geographical diversity and production
methods. This also helps in the protection of the environment as the local people get involved
with the exploitation of their natural resources.
E.g.
 Basmati Rice
 Darjeeling Tea

Better protection of GIs contributes to increasing income particularly in rural areas by way of
encouraging quality production and the promotion of tourism.

TECHNOLOGICAL TRANSFER
The TRIPs agreement Article 66 (2) provides that “developed country members shall provide
incentives to enterprises and institutions in their territories for the purpose of promoting and
encouraging technology transfer to least developed country members in order to enable them
create a sound and viable technological base.”

E.g. Technological transfer involving climate change.

INVESTMENT
Globalisation has seen a dramatic increase in Foreign Direct Investment (FDI) as a key
means of promoting economic development and social welfare.

FDI has been a source of increased industrial production, creation of businesses and
increased job prospects in developing nations.

UNIT 30 INTELLECTUAL PROPERTY INTERNATIONAL LITIGATION

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TRIPs AGREEMENT
The TRIPs agreement has reasonably detailed obligations concerning the enforcement of
IPR in comparison to the Berne and Paris conventions. The Part 3 of the TRIPs agreement
lays down the minimum standards as follows:

Section 1 Article 41 - General obligation: To guarantee fair and equitable proceedings and
provide for judicial review.

Section 2 Article 42 - Civil and Administrative Procedures and remedies of claims to

injunction orders, damages, information and destruction

Section 3 Article 50 - Provisional measures regulating the prevention of infringements and

the preservation of relevant evidence.

Section 4 Article 51 - Requirements for and consequences of the suspension of the release
of imported goods by the customs authorities.

Section 5 Article 61 - Criminal procedures and Penalties: Regulates wilful trademark

counterfeiting or copyright on a commercial scale.

INTELLECTUAL PROPERTY LITIGATION PROCESS

Whilst there are regional (ARIPO) and international agreements on intellectual property rights
(IPRs) enforcement, it is expected that most disputes will be resolved in domestic civil courts.

CIVIL PROCEEDINGS:

PRE – TRIAL RELIEF

Disputes in Intellectual Property are normally of a civil nature and are to be heard in the High
Court. Most disputes will be initiated by the rights holder or his representative writing a letter
to the alleged infringer. (LA Gear Inc v Hi-Tec Sports Plc [1992] FSR 121, CA)

However, there are certain disputes which could be initiated by an ex-parte order, such as a
search order, which would allow the claimant to gather evidence from the infringers’
premises. This eliminates the danger of the infringer disposing of the evidence necessary for
the purposes of litigation which is evidence-based.

THE SEARCH ORDER

Anton Pillar AG v Manufacturing Process Ltd (1976)

The plaintiff, a German manufacturer, had evidence that its English agent was passing
confidential manufacturing drawings and other information to a competitor.
The plaintiff instituted legal action, without notice to the agent for a pre-trial injunction
stopping the agent from infringing copyright or passing on confidential information.

Held

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That in exceptional circumstances, where the actual or potential damage to the claimant was
extremely serious and a likelihood that the defendant might destroy or dispose of the
evidence, the court could order the entry, inspection and removal of such materials from the
defendant’s premises.

GUIDELINES FOR SEARCH ORDERS

These were established in the case of Universal Thermo Sensors Ltd v Hibben [1992] 3 All
ER 257 as follows:
(1) The order should be executed during normal working hours.
(2) The solicitor executing the order should be accompanied by a woman if executing at a
private dwelling.
(3) The items taken should be recorded
(4) The orders should be executed at the business premises
(5) There should be provision to prevent the claimant from going through all company
documents including sensitive information to avoid a competitor gaining useful
information.
As Intellectual property law litigation is very costly, the parties are encouraged to use
Alternative Dispute Resolution (ADR) such as mediation. In this regard both WIPO and
TRIPS have the Arbitration and Mediation provisions.

STANDING
The claimant must have standing in order to initiate legal proceedings. The claimants or
rights holders with standing are:
(1) Registered proprietor (Patents)
(2) An assignee
(3) A licencee
(4) Owner of Goodwill (in Trademark and Passing off)

FREEZING ORDER
These orders, also called Mareva injunctions, are intended to restrain a defendant from
disposing of his assets before trial.
The only exception to the freezing of the defendant’s assets is the safeguard to allow the
defendant sufficient funds to carry on his business and for living expenses.

INJUNCTIONS
Injunctions are an equitable remedy given at the discretion of the court to preserve the
claimants’ position until the outcome of the proceedings. It will be granted to stop the
defendant from further infringements.
The court must be satisfied that the claim is not frivolous or vexatious, in other words that
there is a serious question to be tried.

FINAL INJUNCTIONS
Also called perpetual injunctions may be granted to a successful claimant at the conclusion of
a trial.

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MONETARY REMEDIES

(1) DAMAGES
Seek to compensate for the loss or injury caused by an infringement.

(2) ADDITIONAL DAMAGES

They are compensatory in nature and the courts may award additional damages as the
justice of the case may require.

(3) ACCOUNT FOR PROFITS

As an alternative to damages, the claimant may seek an order for an account of profits.
This is an equitable remedy and only ordered at the discretion of the court. To account for
profits is to pay the claimant all the gains that may have been made by the defendant. An
account of profits considers the profit made by the infringer. The maximum amount payable is
the total of the profits made by the infringer. This figure may be higher than the damage
suffered by the plaintiff. It is only the profits made through the infringement for which the
defendant has to account after taking into account the infringers expenses and costs.

However, it should be noted that the claimant may not seek both an award of damages and
an order for an account of profits but must choose between them.

DELIVERY UP
This is provided for by statute under the CPRA section 26 that the court may order that the
infringing copy or article be forfeited and delivered up to the copyright owner.

DISPOSAL
The CPRA section 28 (4) provides for the destruction or delivery up to the owner of the
copyright in question on the application of the rights owner.

CRIMINAL PENALTIES
The criminal prosecution of an infringer has severe consequences of either fines,
imprisonment or both. The justification for criminalisation is the prevention of future harmful
conduct due to its deterrence value.

Infringement has been held to be immoral and comparable to theft of property.

ADVANTAGES OF CRIMINAL PROCEEDINGS

1. Shock value – receipt of a summons is alarming, fear of imprisonment or other sanctions.
2. Cost – exorbitant legal costs when convicted.
3. Speed of expediting the case as compared to civil proceedings.
4. A search warrant maybe executed by the police to seize infringing copies.

DISADVANTAGES OF CRIMINAL PROCEEDINGS

The criminal standard of proof which is to prove beyond reasonable doubt is more difficult.

CRIMINAL OFFENCES AND PENALTIES

- Already noted the Zambian law on offences of infringement in previous units.
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- TRIPS Agreement Article 61.

BIBLIOGRAPHY

Aplin T and Davis J, Intellectual property Law, OUP Oxford, 2009

Alces P.A., Commercial Law of Intellectual Property, Aspen Publishers, 1994

Bainbridge D.L, Intellectual Property, 8th edition, My Law Chamber, 2010

Barrett M, The Emmanuel Law outlines series: Intellectual Property, 2nd ed., Aspen
Publishers, 2008

Dratler J, Intellectual Property Law: Commercial, Creative, & Industrial Property, Volume 13,
Library of Congress, 2006

Fishman S, The Copyright Handbook: What every writer needs to know, 11th edition, NOLO,
2011

Kanja M. George, Intellectual Property Law, UNZA press, 2006 Lusaka

WEB SITES

www.wto.org

www.wipo.int

http://ec.europa.eu

www.zamlii.org

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