across the bar

google victory in the you tube copyright lawsuit

by Steve - Posted 26 June 2010

Google have successfully defended the lawsuit brought against them by Viacom and its co-plaintiffs for direct and secondary copyright infringement involving copyright protected material being uploaded to You Tube. The New York district court ruled that Google were entitled to safe harbour protection under the Digital Millenium Copyright Act, and that general knowledge of copyright infringement on its site did not disqualify it from such protection. Viacom have said that they will appeal the decision.

Check out the ruling.  

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google adwords decision expected next week

by Steve - Posted 19 March 2010

Online advertisers will be waiting anxiously for the decision of the EU's Court of Justice next week in the Google Adwords case. The court will rule on whether or not a company that buys Google adwords for a rival's trade marks are committing trade mark infringement. Google's adWords system currently lets the highest bidder choose any search term to display its ads.

The case involves luxury brand, Moët Hennessy Louis Vuitton (LVMH), who noticed that adverts for counterfeit product suppliers were being displayed on Google when searching under various LVMH trade marks.

The case will have major repercussions for online advertising that is based on a context-sensitive ad model. It will also provide some much needed clarity on the application of traditional trade mark protection into the online world.

Watch the space.

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first decided case involving ISP liability for copyright infringement

by Steve - Posted 11 February 2010

Judgment was handed down by the Austrailian Federal Court on 4 February 2010 in the landmark case of Roadshow Films (Pty) Limited v iiNet Limited. 

The case raised the question whether an internet service provider or ISP authorises the infringement of copyright by its users when they download copyrighted movies and TV shows on the internet. The general principle In Australian copyright law is that a person who authorises the infringement of copyright is treated as if they themselves infringed copyright directly.

The court found that the ISP did not authorise copyright infringement for the following reasons:

• The infringement of copyright was done using the BitTorrent system and not simply from the internet services provided by the ISP. The ISP did not create or control the BitTorrent system.
• The ISP did not have the relevant power to prevent those infringements occurring.
• The ISP did not sanction or approve copyright infringement.

The judge said that he could not be compelled to make a finding against the ISP simply because "something had to be done" about internet piracy, which on the evidence presented appeared to be occuring on a large scale worldwide.

He also said that an ISP provides a legitimate communication facility which is not intended to infringe copyright. It is only when users choose to make use of file sharing tools such as BitTorrent that copyright infringements take place.

This judgment will have persuasive authority if a similar case comes before a South African court. Although copyright holders may be disappointed by the outcome, it looks like common sense has prevailed in a situation which could have had dire consequences for the ongoing development of the internet if the decision had gone the other way.

A summary of the case is available here (we are trying to access the full judgment which is a 200page monster).

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FIFA 1 - ambush marketers 0

by Steve - Posted 21 April 2009

FIFA has won its first court case against ambush marketing which used some of the World Cup 2010 trademarks. The Pretoria High Court has ordered the Eastern Tavern to take down external signage which features the words "World Cup 2010" and displays the flags of various soccer nations. The pub was also ordered to pay FIFA's legal costs.

As this is the first case dealing with this issue ahead of July's Confed Cup and next year's World Cup, FIFA obviously wanted to send a strong message that it will be jealously guarding its intellectual property.   

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Writing software at work - new SCA judgment

by Steve - Posted 07 December 2008

The Supreme Court of Appeal in King v SA Weather Service was asked to decide who was the owner of certain software written by an employee (King). The main question to be answered was whether he had written the programs within the course and scope of his employment? 

The court held that although King's job description (as a meteorigical technical officer) did not formally include computer programming when he was employed, his job had evolved to the point where he was spending 50% of his employment time on system development and programming (this contradicted King's evidence that he had developed the programs at home and in his own time).

The court also found that the relevant software was directly related to the employer's business and had been developed by King so that he could do his job better. He had also been asked to write other programs by his employer according to a prescribed format which had to be approved before the programs were implemented. None of the programs developed by King were used or exploited outside his employment. 

The court held that King had written the programs within the course and scope of his employment and that the employer was the owner of the software.

The court did not want to set down any rules relating to this issue and instead said that each case would need to be decided according to its own facts. The court also said that the creating the work at home would not be conclusive in deciding who was the owner of the work.           

Our R0.02

Because there are no hard and fast rules on this, you should probably agree with your employer upfront before you start a project on your own time, that they will not assert ownership over any copyright that comes of it (good luck with that!).

You would probably be well advised to avoid writing anything which is remotely useful to your employer's business or from which they can gain some form of advantage. 

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Cape Town - one word or two?

by Steve - Posted 26 November 2007

The owners of the Town Lodge motel chain in SA recently took a shot at the owner of the Cape Town Lodge for trademark infringemnt and passing-off. Before legal action was instituted, the Town Lodge applied to the Registrar of CC's to have the cc name "Cape Town Lodge CC" changed on the grounds that it was confusingly similar to their trade mark. The Registrar agreed and the owners were ordered to change the cc's name. Application was then made to the High Court to set the Registrar's decision aside (Cape Town Lodge CC v  Registrar of Close Corporations & another). Town Lodge also brought a counter-application for trade mark infringement and passing off.

The court was asked to decide, among other things, whether the words "Cape Town" could be seen as two seperate words rather than being read together as the geographical indicator for the city. I.e. if the Town Lodge group wanted to open up a motel for the Cape, would it be called Cape Town Town Lodge or Cape Town Lodge. The court held that Cape Town must seen as one word and not two. If it could be seen as two seperate words, then the argument was that the Cape Town Lodge CCcc's contained the town lodge registered trade mark.  The Town Lodge also argued that  the registration of this cc name was calculated to  unlawfully  pass off  the goodwill of the group onto its own hotel.

The court decided that Cape Town could not be seen as two seperate words and that the words "Town" and "Lodge" were generic and descriptive words used in the hospitality industry. The Registrar's decision was set aside and the counter-application for TM infringement was dismissed.

Our R0.02:
When you register a company name or trade mark using words which describe your services or goods and which, on their own, are not unique, it will be very difficult to enforce your rights against other players in the same industry who register names using the same descriptive words but in a different way.        

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Are PVR decoders legal in SA

by Steve - Posted 21 November 2007

Professor Michael Geist  recently asked the Q whether TiVO (specifically the recording function of PVR decoders) was legal in Canada. The home recording of television content is not included under the fair use exceptions in the Canadian copyright act. Which begs the question - are PVR decoders in SA illegal? Our copyright act also doesn't have a TV home recording exception even though Multichoice have been roling out PVR for the past 3 years. We also don't have a general doctrine of fair use which we could squeeze this issue into.

More reason for much needed copyright reform to keep up with modern technology.

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85% of tech executives say IP will increase in importance over next 3-5 years

by Steve - Posted 22 June 2007

In a recent online survey by PriceWaterhouseCoopers, it was found that over 50% of technology companies do not extract the full value from their IP. Tech companies recognise that in a time when IP is fast becoming the most important currency, they need to do more to account for, protect and exploit their intangible assets.

The report recommends that companies should treat IP as a seperate portfolio with the company and its IP professionals working together to look for existing or emerging opportunities and to prepare for litigation against competitors.  

A full copy of the report is available here.   

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Bootleggers and teenage lovers beware

by Steve - Posted 30 May 2007

Malaysian cinemas are getting crafty in the crackdown on the illegal practice of bootlegging (making a real time copy of a movie while it is playing using a cellphone or video camera). Ushers are now strapping on military style night vision goggles to seek out the nasty pirates.

This serves as a warning to the teenagers in the kissing corner.

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Free consultations on offer to mark World Intellectual Property Day

by Steve - Posted 26 April 2007

To mark World Intellectual Property Day on 26 April 2007, Nicci Ferguson are offering free 30 min consultations on intellectual property. The offer will run from 26 April to 10 May 2007.

If you are a developer, designer, artist, author or  entrepeneur who would like to learn how to identify, protect and make money from your intellectual or creative assets, contact Olivia on (021) 465 9175 to book a slot.

For people outside Cape Town, we are also offering a free e-mail hotline for questions. Mail your questions to mail at nicciferguson coza.

      

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