Friday, 13 October 2017

Darren Olivier

LES, Herbex, NIPMO, IP Briefs, the Crammer and Kenya's Copyright developments - Friday ramblings

The Licensing Executives Society of South Africa has a very pleasant and active local membership. This week their one day conference attracted over 50 attendees speaking on topics that  included South Africa’s draft IP Policy, OECD tax regime developments, NIPMO’s dynamic progress under Dr Kerry Faul and the Competition Commission’s foray into the world of compulsory licensing. It is as interesting as it is diverse which is real attraction of the LES local chapter and this year they were joined by LES International President Peter Hess, as well as local President Alessia Del Bianco.

My own involvement was to join Dr Madelein Kleyn in a discussion that traversed new acronyms BEPS and DEMPE in the context of transfer pricing, international tax structures and IP structuring. You might well ask what the heck do you know about that and the answer would be - a lot more now then I did prior to preparing for the discussion. Madelein's editorial in the latest IP Briefs will provide some context to these developments and all I have to say is that if BEPS and DEMPE work effectively there will be no need for current headaches caused by local exchange control in South Africa, a mechanism designed in part to curtail base tax erosion.

Without wanting to single out any presentation, Dr Kerry Faul’s update on NIPMO developments was very heartwarming. As an advocate of both intellectual property and Africa, this national initiative to capture and commercialise innovation of some of the smartest minds in South Africa and use it for social good, job creation and general upliftment was commendable to start with. NIPMO was always going to have its challenges and still does but there is evidence of genuine achievement towards its goals. For this Dr Faul received an award from LES which deserves particular mention and congratulations.

Turning to another initiative that is close to my heart, the Crammer is a concept that attempts to digest a year’s worth of IP developments into a single morning for the benefit of busy in-house counsel, executives and business owners. My firm embraced the idea and now advocates their biggest and boldest Crammer yet next Thursday at the Radisson Sandton (not Gautrain), that I have the pleasure of MCing. You can view the complete agenda in the Watering Hole section here, or just RSVP and view it here. The guest speaker is the excellent Michael Charton who will present My Father’s Coat, a truly inspiring and very relevant South Africa tale. It's nearly full so hurry!

"It’s our biggest and boldest Crammer® yet – presented by Adams & Adams to an exclusive audience of in-house legal representatives, entrepreneurs and executive decision-makers. In focusing on IP, commercial and property law developments, our legal professionals will review interesting updates and commentary on subjects ranging from innovation funding, copyright and brand development, to data protection and a number of significant IP and commercial case law studies."

Another recent development is news that the ASA in South Africa is continuing to progress its resurgence under the watchful eye of acting CEO Gail Schimmel and the loyal Leon Grobler. Emboldened by the order in the much anticipated Herbex case appeal which had threatened to severely curtail the decision making powers of the ASA they are making progress in re-captivating consumer and industry trust as a self regulated watchdog.

The upshot of the Herbex order is that although the ASA is not able to rule against non members it is able to adjudicate on whether any advertising is contrary to its code.  This will enable it members, which are vast ranging and include a number of industry associations embracing media, consumers and broadcasting to elect not to accept advertising which is contrary to the code. For more on the ASA on this blog, click here.

Looking north, Kenya’s Copyright (Amendment) Bill 2017 was recently tabled in parliament for a first reading. It has provisions that seek to update copyright laws with the digital age and information systems, as well as specific benefits for those that are blind, have visual impairments and certain physical disabilities. It also introduces the concept of a resale royalty right. I am hoping that our colleagues in East Africa will provide some commentary on this development in a future posts together with news of the Kenya Copyright Board’s new logo which is the subject of a competition launched by their Department of Justice, with almost $2000 worth of prize money up for grabs.

Have a good weekend!
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Tuesday, 10 October 2017

Afro Leo

Hans Muhlberg and others on the Afro-IP Linkedin platform

If you are a fan of Hans Muhlberg then be sure to follow him over on the Afro-IP Linkedin Group. For the benefit of readers on this platform here are some headlines to his posts over the last few weeks. Enjoy, they are always entertaining and insightful:

There’s been much talk about the Netflix trademark cease-and-desist letter, about how it may actually boost the brand. If you haven’t seen it the best bits follow (for the benefit of readers over 30, Stranger Things is a TV series, Dr Brenner is a more

There’s talk of ‘food apartheid’ in Europe. According to The Guardian, some food products sold in Eastern Europe are of a lower quality than products sold in Western Europe under the same branding. In some cases the differences are so marked that pe.. show more.
Have trademarks ever enjoyed so much media attention? Over the space of a few days we’ve had:
Ridicule at Taylor Swift’s decision to register more lyrics and song titles as trade marks. Last time it was This Sick Beat and Cause we never go out of sty.. show more.

Brexit, so many unexpected consequences. Even within the arcane field of trademarks: what will happen to all those EUTMs that presently cover the UK; more importantly, what will happen to all those UK trademark attorneys who presently cover the EU? .. show more

The Afro-IP Linkedin Group is an open group inviting conversation from all of its 768 members. You can access it here.
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Monday, 9 October 2017


Copyright in databases: The Philanthropic Collection v Girls & Boys Town

TPC logo
Context - IP and social causes

The Philanthropic Collection (TPC) is the company that brought The CEO SleepOut to South Africa in 2015. The event that year raised over R25million (almost $2million) for its beneficiary Girls & Boys Town (GBT). 

The FAQs posted on the CEO SleepOut website records that independent consultancy IQ Business valued the social impact return on investment of the 2015 CEO SleepOut event at 1:1.3.15 (for every Rand invested in the event it delivered R3.15 for social good). For the 2016 event TPC increased this value to 1:4.24.  Like the event or loathe it that's impressive. (For more information on how SROI values work, this Australian report is informative and TPC's initiative compares very favourably indeed.)

From an IP perspective the SROI value of a social initiative like The CEO SleepOut is encapsulated in its trade marks (branding that communicates the initiative), copyright (databases created as a result of the initiative) and knowhow (the skill of companies like TPC to bring it all together). The protection of this SROI and its associated IP are therefore as critical to the general public that donates and derives social benefit from the initiative, as they are to the sustainability of the initiative itself. 

This is why it is not uncommon, indeed critical, for social causes to enforce their IP. In Boston College Law Review Lauren Behr's article entitled Trademarks for the Cure: Why Nonprofits Need Their Own Set of Trademark Rules advocates for greater protection for trade marks in the non-profit sector: 

because the work of these organisations affects the greater public as well as both potential donors and recipients”.

The dispute and the court case

During preparations for the 2017 event, it came to the attention of TPC that GBT had copied the database of donors for the 2015 event and were using it to solicit donations. TPC was obviously concerned because:
  • it felt that such activity would compromise its ability to raise funds for the 2017 event that it was about to launch (ed - to protect the SROI);
  • that the database contained personal information of its donors of which it was the custodian; and 
  • that GBT was in breach of its agreement not to solicit donations using the database, having been warned about this on several previous occasions, according to the papers.
In the circumstances, TPC felt compelled to approach the court for urgent relief on three grounds: copyright infringement, breach of undertaking and unlawful competition.

GBT denied the allegations and argued that it was the co-owner of the copyright in database. Its copyright defence was based on the premise that the 2015 event was in fact a joint venture between it and TPC and/or that because it had helped with certain manual entries on the database from a form completed by some of the donors, it was in fact a co-owner of the copyright in the database. 

The judge agreed that the matter was urgent for TPC and in deciding for TPC felt sufficiently persuaded on the papers and in argument, to dispose of the case on the basis of the copyright claim alone.

The copyright findings

Judge Modiba ruled that GBT’s role as “partner” was simply an expression of TPC when referring to them, as it had done with all of its stakeholders e.g. its media partner, and did not create legal obligations nor a partnership nor a joint venture nor co-ownership of the database. In fact she described the notion as "absurd" (see para 25 of the judgment).

The judge felt that although circumstances required that GBT had both access to the backend of the website used to create the database and was involved in manually entering some of the information not capable of being generated by the website, this was not sufficient to create any rights in the database. She also felt that this was "absurd".

In support of this Judge Modiba quoted the 2016 case of Moneyweb v Media 24 Ltd where it was held that there must be sufficient application of the author’s mind to produce a work that could be judged to be original. The form created by GBT did not meet this  threshold according to the judge. 

The court upheld TPC’s claim and ordered GBT to pay their costs. The judgment of course does not mean that GBT are precluded from contacting donors (including those that were on their own database) it simple means that GBT must not do so using TPC's database.

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Friday, 6 October 2017


A Questionable Ad Campaign from KFC

Some new advertising signs have been appearing in Nairobi. An ad campaign for KFC (technically, the authorised KFC franchisee is Kuku Foods East Africa Holdings Ltd.) involves images of fried chicken meals next to highly praising quotations attributed to "Obama", "Kanye", and "Oprah". A close inspection reveals that these quotes are actually from "Jammo Obama" and "Kanye Otieno", presumably fictional individuals.

The layout of the ad is clearly meant to obscure the names "Jammo" and "Otieno" - these are balanced by opposing solid lines so as to minimise their impact on the viewer.

These ads play dangerously with the law.  Kenya's Competition Act 2010, section 55(a)(v), prohibits false representations that "goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have." Kenya's Consumer Protection Act 2012 has a similar provision.

Notwithstanding that the ads do not in fact state that Barack Obama or Kanye West have endorsed KFC, there is a very clear intention that the target audience is meant to have such endorsements as an immediate first impression. The layout of the ads require a viewer to look very closely in order to see the full names of the endorsement. The ads are positioned to be prominently displayed to motorists (for which close inspection is difficult or impossible, as Nairobi roads demand a high level of attention!).

Several people have recently asked this blogger whether it's illegal to attribute false statements to American celebrities in Kenyan ads. They only realised that this was not in fact occurring when they were told to look more closely at the names on the signs.

This is an example where a factually accurate advertisement is nevertheless misleading (and in this case, seemingly, intentionally misleading).  A similar situation of misleading yet factual advertising occurred when Orange Kenya was compelled to withdraw or change advertisements comparing their mobile calling rates with those of Safaricom.

But what of the IP angle?

Kenya has no law on image rights, but trademark law may apply. A quick search of an online TM database indicates that Obama and Kanye have probably not filed for TM protection in Kenya (although, interestingly, "Oprah" has been registered in Class 26 for hair pieces and wigs).  So there is no infringement of a registered TM, but could there be passing off?  A UK recently court found that unauthorised t-shirts bearing Rihanna's picture was passing off. Perhaps the question here, then, is whether KFC's ads are likely to mislead the public to believe that Obama or Kanye or Oprah said these statements.

Is it illegal?  Perhaps so, although this blogger would want the Advertising Standards Body of Kenya (ASBK) to have their say.  In any case, is it distasteful?  Most definitely.  
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Afro Leo

Nigeria, The Gleisner Files and IP Commercialisation news

Yesterday Nigeria ratified no less than four treaties that will help us assist its development of modern IP legislation. These treaties are the World Copyright Treaty, the Performances and Phonograms Treaty (the Internet Treaties), the Beijing Treaty on Audiovisual Performances and the Marrakesh Treaty.

Ijeoma Egbunike writing for NaijaNews explains the impact here

"The development again underscores the urgent need to enact a new Copyright legislation that will implement the standards stipulated in the treaties. The Director General of the Nigerian Copyright Commission, Mr. Afam Ezekude has reiterated the commitment of the Commission to follow through with the Copyright Reform project of the Commission launched in November, 2012.

He added that since the initiation of the reform,  aside the ongoing review of the framework of copyright protection,  the commission has been able to effect major Policy and Regulatory reforms,  including the issuance of the Copyright (Levy of Materials)  Order,  which is awaiting final approval for commencement; and the establishment of an e-Registration system for copyright works."


The excellent Tim Lince of World Trademark Review has unearthed a remarkable investigation that he has dubbed The Gleinser Files. With the help of search company Compumark it records one individual's trade mark, company and domain name filing spree of nearly 9000, and costing in excess of $750 000 in trade mark filing costs alone.

The motives are unclear as experts still pour over the detail trying to establish a trend and rationale which you can read about here. Afro Leo remarks that Mr Gleisner obviously does not like safaris; only a single trade mark filed in Africa amongst the entire lot - that for Fashion TV in South Africa in the name of Fashion Tele Settlement Company Limited.


Fellow blogger Darren Olivier has published part 2 of the UKIP saga on the niche IP Finance blog whose contributors include Mike Mireless, Neil Wilkof, Keith Mallinson and Anne Fairpo in a piece entitled UKIP - Politics, Branding and Trade Marking. He references two lion scraps in Europe to explain why he things UKIP will likely lose to the FA and comments on a lack of appreciation for trade marking by political parties citing developments on the WIPO, UKIPO and USPTO registries and drawing from the ANC's fight against COPE and other African examples. That in full here.

Speaking of blogs that focus on the commercialisation aspects of intellectual property readers should also look out for posts on IP Live. This is a niche blog edited by Nic Rosslee for the IP commercialisation team at his firm.

And finally don't forget that LES South Africa are hosting a mini seminar next week Wednesday entitled "An IP Smorgasboard" in Rosebank, Johannesburg. Speakers include LESI president Peter Hess. You can read more about that here.
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Thursday, 5 October 2017


Japan ups its game for Africa IP infrastructure assistance

As long ago as 2009 this blog reported on Japanese funding of IP infrastructure on the continent. A few days ago Afro-Hip wallowed over to this post on the Intellectual Property Watch hailing the efforts of the Japanese, in conjunction with ARIPO, to train 1000 people in IP systems across Africa. They will be spending over $1.6 million per annum according to the article; $1600 per person. 

Fellow blogger Jeremy Phillips was critical in 2009 lamenting that flying IP officials all over the place and staying in luxurious hotels etc was perhaps not the most fruitful use of funding and that technology could be better used for the purpose. There is no doubt that IP systems have improved on the continent since 2009 and this blogger was hoping for some data on the progress of the Japanese initiative over the last decade or so. His call was answered not by the IPW post but by this report from WIPO in 2016.

The initiative has received steady funding (recently topped up from $1.1million) over the years and there is evidence of various training and funded projects across Africa, digitisation of records, training in IPAS, scholarship and textbooks, and ministerial dialogue. The focus has now turned more to training it appears. The report, while short on the actual spend and financials, does indicate progress which is corroborated by various articles on this website and elsewhere about the increasing reliability of IP systems in Africa and the increase in IP jurisprudence. One suspects therefore, without knowing the finer details, that this program is working and should be commended for that.

It is interesting though that South Africa's place in the program is but for a few meetings here and there, largely ignored. This could be because they have long been regarded as being the pre-eminent IP system in Africa (still accounting for most of the registered IP on the continent) and hence there is more need elsewhere in Africa or it could be that it is WIPO and others are preferring direct access to Registries in Africa. Perhaps South Africa does not see itself as the custodian of Africa IP or lacks resources to assist in Africa where, in truth, there is lots to be done in its own country. 

Whatever the reason, collaborating with South Africa has benefits which include training courses already on offer for both patents and trade marks under SAIIPL as well as its infrastructure, relative ease of access for travellers on the continent and accommodation. In turn South Africa should make itself available for more collaboration otherwise it will lose out on the advantages of not being part of the continent's slow but steady maturity. There are already systems in Africa far more efficient than its own.

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