Ownership of intellectual property rights: Did Vodacom ‘sell’ its rights in Makate v Vodacom?

by | Jan 15, 2022 | SAIPLJ, SAIPLJ 2021

Ownership of intellectual property rights: Did Vodacom ‘sell’ its rights in Makate v Vodacom?

Author Malebakeng Agnes Forere

ISSN: 2521-2591
Affiliations: Associate Professor in Law, University of the Witwatersrand
Source: South African Intellectual Property Law Journal, 2021, p. 18 – 34
https://doi.org/10.47348/SAIPL/v9/a2

Abstract

The case between Mr Makate and Vodacom, which was decided by the highest court in the land — the Constitutional Court, raises interesting intellectual property questions; yet it was argued and decided on as a purely contractual matter. Specifically, Vodacom was found to have been in breach of an agreement to reward a former employee who conceived an idea that led to the development of a product known as ‘Please Call Me’ while still employed by Vodacom. In the main, the dispute is now about fair compensation payable to Mr Makate. It is argued herein that the determination of fair compensation is predicated on the determination of ownership of the ‘Please Call Me’ product. This paper finds that ownership of the product in question vests in Vodacom in accordance with the Copyright Act and the Patents Act, even though the product was never patented, which, in turn, makes compensation to Mr Makate even less determinable. Accordingly, it is argued herein that any determination of compensation must be based on how the industry, in general, and Vodacom, in particular, has rewarded its employees who have conceived workable ideas in the past. Thus, compensation cannot be based on market value.

A right to read object code – software copyright law and the development of a decompilation exception in South Africa

by | Jan 15, 2022 | SAIPLJ, SAIPLJ 2021

A right to read object code – software copyright law and the development of a decompilation exception in South Africa

Author Cobus Jooste

ISSN: 2521-2591
Affiliations: Consolidoc Postdoctoral Fellow in Law, Department of Mercantile Law, Faculty of Law, University of Stellenbosch
Source: South African Intellectual Property Law Journal, 2021, p. 35 – 66
https://doi.org/10.47348/SAIPL/v9/a3

Abstract

The opportunity to read and extract knowledge from a lawfully obtained copy of any published work is a cornerstone of copyright law, except in the case of computer programs. This article examines the development of an exception to copyright protection that will permit decompilation of object code as a means to access its underlying ideas. It illustrates that the persistent link between software and literary works leads to an unduly narrow view of decompilation. This contention is supported by a basic technical illustration of the decompilation process to support the submission that reading object code should not amount to copyright infringement in any way. Thereafter, the proposed decompilation exception in South African copyright law is critically analysed in light of the developmental objectives expressed in national policy, to formulate an alternative approach based on the inherent flexibilities in international law and local conditions.

Gallo Africa Ltd v Sting Music (Pty) Ltd 2010 (6) SA 329 (SCA) — Revisiting the justiciability of cross-border copyright infringement in South African courts

by | Jan 15, 2022 | SAIPLJ, SAIPLJ 2021

Gallo Africa Ltd v Sting Music (Pty) Ltd 2010 (6) SA 329 (SCA) — Revisiting the justiciability of cross-border copyright infringement in South African courts

Author Thato M Moloto

ISSN: 2521-2591
Affiliations: Consultant, World Intellectual Property Organization (Copyright Management Division), Geneva
Source: South African Intellectual Property Law Journal, 2021, p. 67 – 86
https://doi.org/10.47348/SAIPL/v9/a4

Abstract

This contribution examines the basis for and implications of the strictly territorial approach of South African courts in cross-border copyright infringement cases, requiring litigants to bring separate infringement suits in every country where infringement is alleged. This position by the courts loosely hinges on principles of effectiveness, locality and comity, as well as the classification of all intellectual property — copyright in this case — as immovable incorporeal property. In this belated case note, the Roman-Dutch law origins from which this classification is inferred to be derived from the English common law precedent with which it is paralleled and private international law principles applicable are briefly interrogated in light of prevailing constitutional prescripts. This complete bar on the authority of local courts on what is a ubiquitous concern for rights holders is a matter with far-reaching consequences.

DABUS gains territory in South Africa and Australia: Revisiting the AI-inventorship question

by | Jan 15, 2022 | SAIPLJ, SAIPLJ 2021

DABUS gains territory in South Africa and Australia: Revisiting the AI-inventorship question

Author Desmond Osaretin Oriakhogba

ISSN: 2521-2591
Affiliations: Senior Lecturer, Department of Mercantile and Private Law, University of Venda
Source: South African Intellectual Property Law Journal, 2021, p. 87 – 108
https://doi.org/10.47348/SAIPL/v9/a5

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Abstract

This paper draws from and builds upon DO Oriakhogba ‘What If DABUS Came to Africa? Visiting AI Inventorship and Ownership of Patent from the Nigerian Perspective’ (2021) 42(2) Business Law Review 89. It reviews the recent granting of a patent by the Companies and Intellectual Property Commission (CIPC) to Dr Stephen Thaler in respect of the DABUS-generated invention in South Africa and the judgment of the Australian Federal Court (FCA) upholding AI-inventorship. The review, which is based on desk research, is conducted against a backdrop of statutory provisions and case law from both countries, the provisions of the Patent Cooperation Treaty (PCT) and relevant literature dealing with the inventorship question. The paper determines whether, without reform of the extant patent law and policy, recognition of artificial intelligence (AI) as an inventor does not undermine the foundational concept of human inventorship, and the central focus on human creation and agency for intellectual property protection in South Africa and Australia. In connection with this, the paper asks and examines the question of whether the CIPC patent grant and the FCA judgment can stand judicial scrutiny under the extant patent regimes in South Africa and Australia.

From Century City to Sandton City: Aspects of geographical trade marks

by | Jan 27, 2021 | SAIPLJ, SAIPLJ 2020

From Century City to Sandton City: Aspects of geographical trade marks

Author Wim Alberts

ISSN: 2521-2591
Affiliations: Professor of Mercantile Law, University of Johannesburg
Source: South African Intellectual Property Law Journal, 2020, p. 1 – 12

Abstract

A name that is a geographical designation may at times acquire a secondary meaning, indicating the origin of goods or services. With regard to retail services it is well established, in South Africa and Europe that they qualify for protection – the essence being the bringing together, for the sake of convenience goods for purchase by the public. However, a particular problem has arisen in relation to shopping complexes. Whilst European, but also British, law has protected such marks, they have also come under attack. The basis for the latter, in brief, is that the names of the complexes have become landmarks or acquired primarily a geographical significance. In Britain for instance protection was not granted to the mark canary wharf, as it, amongst others, was the name of a political ward. The marks in other words no longer function as trade marks. This issue came to a head in the judgment in the Century City case. In this matter the trade marks of a retail establishment were attacked on the ground that they have come to relate more to a place name than a trade mark. Having regard to the need for tenants to describe their businesses whilst using the name, the principal marks were expunged. In applying the case to developments such as Sandton City, possible discerning factors are investigated. One might be single ownership of the complex. Another interesting question is the impact of the situation where there is a pre-existing suburb, with the same name as the complex, versus where the complex is built later on.

Corporate control of intellectual property for wealth maximisation: Prospects for stakeholders’ protection within corporate law

by | Jan 27, 2021 | SAIPLJ, SAIPLJ 2020

Corporate control of intellectual property for wealth maximisation: Prospects for stakeholders’ protection within corporate law

Author Nojeem Amodu

ISSN: 2521-2591
Affiliations: Postdoctoral Research Fellow, University of Cape Town
Source: South African Intellectual Property Law Journal, 2020, p. 13 – 34

Abstract

Corporate interests have dictated globalised protection and enforcement of intellectual property rights (IPRs). Corporations have not only controlled IPRs as exclusive private properties, gotten IPRs strengthened as trade-related in the World Trade Organisation’s Trade-Related Aspects of Intellectual Property Rights (TRIPS), but have also laid property-based human rights protection claims to IPRs. While IPRs controlled by businesses have largely enhanced shareholder value, they have also engendered corporate abuses with negative impacts on competing interests of other corporate stakeholders, including the employees, contractors and consumers. This paper interrogates the extent to which such stakeholders are (or can be) protected within the IP law and corporate law framework. It provides specific instances of corporate abuses of IPRs, highlighting attendant injuries to relevant stakeholder interests. Following the identification of a few remedies available within the IP law system, the paper examines not only current possible safeguards at corporate law but also proposes new and complementary roles corporate law may play towards the protection of victim stakeholders from asocial control of IPRs using the corporate form.