PRODUCT LABELLING IN SOUTH AFRICA: LITTLE MARGARINE FOR ERROR

Round 3 was decided with Clover winning the war (despite losing a battle along the way) after a favourable decision was recently churned out by the Supreme Court of Appeal (SCA).  Readers may remember that the writer first reported in June 2021 that Clover’s urgent application to interdict the use of STORK BUTTER SPREAD by Siqala (known to us as Stork) was unsuccessful, due to a lack of urgency.

Clover had a second bite of the buttered bread and was successful in securing an order against Stork in November 2021 entailing, inter alia, that Stork be interdicted from competing unlawfully with Clover by using the offending product label.  Stork, not backing down, took this decision on appeal and for purposes of this article, the focus will be on the decision handed down by the SCA on 31 May 2023, as far as it relates specifically to the product label.

By way of reminder, Clover objected to Stork promoting, marketing, distributing, and selling a product as a butter product, when it was in fact not such a product, but a modified butter product. Clover objected to the product label being used which it felt misrepresented modified butter as a butter product.

Relevant to this dispute, are the provisions of the Agricultural Product Standards Act 119 of 1990 (the Act) and the relevant regulations published thereunder, which:

  • first, regulate and prescribe, amongst others, the size of the marks that may be imprinted on a product label or container (Section 3 of the Act read with Regulations 2(1)(d) and (e) and 26(7)(a)); and,
  • second, prohibits the use of any mark that conveys or creates, or is likely to convey or create, a false or misleading impression as to the nature, class or identity of a product (Section 6 of the Act read with Regulations 32(3)(a) and 32(4)).

 

 

  • Findings and comments by the court in respect of elements

 

Clover contended that the product label, viewed as a whole, not only contravenes the statutory labelling prohibitions, but also misrepresents or is likely to create the impression that the Stork’s modified butter product, is in fact a butter product.

The Court found that there were 5 questions for consideration and for the sake of brevity, only two of the questions, below, will be discussed:

  1. Do the marks in the product label contravene the statutory labelling requirement?
  2. Does Stork’s product label misrepresent, or is it likely to misrepresent and create a misleading impression, that the product is of another nature, composition, class or identity?

With regard to question 1, Sections 3(1)(a)(iii) and (v) of the Act empower the Minister to prohibit the sale of a product, unless the labelling of that product complies with the prescribed requirements. In terms of Regulation (2)(1)(d) “no person shall sell a dairy product or imitation dairy product in the Republic of South Africa… unless a container and outer container in which such product is packed, is marked with particulars and in a manner set out in Regulations 26 to 31”.  And in terms of Regulation 26(7)(a) “no words or expression (on a label) may be bigger than the class designation, unless it is a registered trade mark or trade name” (emphasis added).   There is no definition in the regulations for a “trade name”, and a “registered trade mark” is defined as a trade mark registered in terms of the Trade Marks Act 194 of 1993 (the Trade Marks Act). The relevance of this will become apparent below.

To be clear, there was no dispute that the relevant product class was modified butter and not butter.

In the judgment, the Honourable Justice Ponnan went to great lengths to describe how, and seemingly took a dim view of the fact that, the Applicant had changed its position in referring to STORK BUTTER SPREAD, first as a trade mark and then later a trade name.   When seeking clearance for its product label, Stork had apparently referred to its STORK BUTTER SPREAD trade mark (no reference to the mark being registered, by Stork) and in the response to the demand sent, reference was also made to Stork’s trade mark (no reference to the mark being registered, by Stork).

Of course, if STORK BUTTER SPREAD was a registered trade mark (or a trade name, for that matter), it could appear “bigger” on the label, than the class designation.

In its answering affidavit, Stork stated that “whether or not STORK BUTTER SPREAD is a registered trade mark is…wholly irrelevant”.  The Honourable Justice Ponnan considered it significant that Stork did not specifically state at that stage that STORK BUTTER SPREAD is a trade name. Stork ultimately (and perhaps impermissibly so) in a fourth affidavit submitted that “for the avoidance of all doubt” STORK BUTTER SPREAD is a trade name.

A search of CIPC’s records has confirmed that STORK BUTTER SPREAD is not a registered trade mark, but that there is a pending application for the mark, with the status reflected as “oppositions lodged”.  As mentioned above and as apparent from the ruling, it was never Stork’s case that it owned a registered trade mark.

The writer would argue that there was nothing untoward in Stork referring to STORK BUTTER SPREAD as filed, as a trade mark, in these circumstances.

Even if STORK BUTTER SPREAD is not a registered trade mark, why could it not qualify as a trade name, for purposes of Regulation 27(6)(a)?  A trade name is not defined in the Act or regulations and most IP practitioners would accept that a trade name, could equally be considered a trade mark.  In fact, the Trade Marks Act defines a mark as any sign capable of being represented graphically, with no express list being provided, but “a name” being included as a possibility.

Be that as it may, the Honourable Justice Ponnan took a different view and found that because STORK BUTTER SPREAD was not a registered trade mark (and Stork was not permitted to belatedly attempt to escape the consequences of that, by referring to a trade name), that the Provisions of Section 3, read with Regulations 2(1)(d) and 26(7)(a) were contravened.

Even if the court had found that STORK BUTTER SPREAD is a trade name which could be expressed bigger than the class designation, the second question referred to above would still have to be considered. In other words, the court would still have to consider whether Stork is using a mark that conveys or creates, or is likely to convey or create, a false or misleading impression as to the nature, class or identity of a product.   No use crying over spilled milk.

With regard to the second question, the court confirmed that it is not necessary to peer too closely at the offending article to make the determination as to whether it is likely to mislead and that it should notionally transport itself from the court room to the marketplace and look at the article as it is seen by the consumers.   Although not peering closely, the court seemingly had a good look at the elements of the product label (and the different sizes, etc. used), as can be seen from the commentary above.

From the Judgement, it is apparent that Stork relied on (or attempted to rely on) evidence in the form of qualitative consumer research on the intended label (the Melange Proposal), an assessment of the effectiveness of the label with particular emphasis on what was described as the “stand-out” of the label  (the VAS analysis) and lastly a market survey to determine whether the STORK BUTTER SPREAD product would be interpreted by consumers to be pure butter (referred to as Project Lard).

There was much debate about whether the expert evidence should be admissible, but what was interesting to read is that the court found that the outcome of the VAS analysis, read together with the Melange Proposal, suggested (irresistibly so according to the Honourable Justice Ponnan) that the product label was fashioned to focus consumer attention on the word “butter”.  One has to wonder about the circumstances leading to Stork relying on this evidence, in support of its case.

With regard to the outcome of Project Lard, the court was particularly critical about the survey and commented, inter alia, that the survey ignored the national market place and the national consumer, who would encounter Stork’s product, cheek by jowl with other products. According to the judgement, the survey involved, inter alia, a questionnaire being completed by butter and/or butter spread users, which entailed qualifying participants being shown a various range of (pure) butter and modified butter products (the offending product was seemingly included, as there is reference to product recognition, despite the short period the offending product had been on shelves) and being asked to categorise each one as either:

  1. Butter;
  2. Butter Spread;
  3. Margarine;
  4. None of the above;
  5. Other – with a reason to be specified.

The court found it significant that the survey concluded that a significant number of the participants identified and categorised the product (not specifically confirmed that this is the offending product, but one would assume so) as “butter” and “butter spread”. Only 5% categorised the product as “margarine” or “something else”. The court was impressed by the fact that 94% of the participants, identified the product as “butter” and “butter spread”.

The judgement ultimately concluded that although the survey is hearsay, it can be admitted as evidence. Despite further suggesting that the evidence could be rejected as unreliable, the court concluded that to the extent that reliance can be placed on the evidence, it appeared to warrant the inference that Stork had, in adopting the product label, acted out “a common charade”.

And so, the court did ultimately conclude that the offending product label would convey or create a false or misleading impression as to the nature or class of the product and the notional consumer would (or at least, would likely) be deceived or confused that the product is a butter product, which it is not.

Stork has to wonder whether the reference to STORK BUTTER SPREAD as a trade name (and not a trade mark) earlier in the proceedings would have made a difference to the outcome of question 1.  That being said, even if Stork had been permitted to give more prominence to STORK BUTTER SPREAD, as a trade name, the name would still have resulted in the likelihood of confusion, considering how the court wheyed the elements of the label and the expert evidence submitted.

Clover must certainly be relieved that the cows have now come home.

 

Ed Sheeran two-steps to victory in copyright dispute across the pond

Ed Sheeran’s victories continue to multiply, after a New York jury recently ruled that his song, Thinking Out Loud, does not infringe the copyright of well-known American song, Let’s Get It On, written by Marvin Gaye and Ed Townsend. This 100-million-dollar claim was first brought by Townsend’s heirs in 2017 against Sheeran, his records label, Warner Music Group, and his music publisher, Sony Music Publishing, with the aim of protecting the musical “heart” of their late father’s work. Understandably, the case has attracted the attention of the music industry, after the underlying music composition of the two songs came under scrutiny.

Setting the stage, both sides entered the dispute with the benefit of being able to point to previous favourable decisions in the record cabinet. As readers will recall, Sheeran won a separate copyright trial in London in 2022 regarding hit song, Shape of You. Separately, Mr Gaye’s heirs were also awarded 5.3 million dollars in 2015 after their claim that the song, Blurred Lines, written by Robin Thicke and Pharrell Williams, had infringed the copyright of Gaye’s song, Got to Give It Up, was upheld in court.

In this case, Townsend’s heirs’ “smoking gun” was an online fan video of Sheeran on stage, in which he merged the two songs to illustrate the similarity of the chord progressions of hit songs to his fans. The heirs argued that the seamless transition between the two songs, during a live show, was evidence that Sheeran had infringed the copyright in the earlier work. This did not subtract from Sheeran’s defence, however, and during evidence, Sheeran and his co-writer, Amy Wadge, explained the inspiration behind the creation of their hit song in 2014. Guitar in hand, Sheeran also explained that he is able to perform similar medleys, as a result of the limited harmonic palette in today’s mainstream pop music. This clearly struck a chord with the jury, which handed down a decision after 3 hours of deliberation.

Sheeran’s lyrical talents were also evident in his statement issued after the ruling was handed down, in which he shared that “these chords are common building blocks, which were used to create music long before “Let’s Get It On” was written, and will be used to create music long after we are all gone”.

In assessing an allegation of copyright infringement, South African Courts will rely on a qualitative test, examining the degree of objective similarity between two works, as well as whether a causal link exists between the original work and the alleged infringing work. This would mean that the claimant must prove that the artist actually regarded and had access to the prior work, and adapted or copied substantial elements of it when creating the new song. While our courts do have a general discretion, our Copyright Act does make provision for the Court to grant specific relief to successful litigants in the form of damages, an interdict, ordering the delivery-up of infringing copies and, in lieu of damages, a reasonable royalty payable by the infringer which could have been payable by a licensee of the earlier work.

This case calls a well-known phrase in the music industry to mind, namely “where there is a hit, there is a writ”, and we anticipate that artists will continue to lock horns to protect their valuable intellectual property rights which vest in our favourite songs.

Parody in South Africa: addressing the Hippo in the room

A recent advertising parody has caused quite a stir at the watering hole, and left consumers questioning whether Hippo.co.za may have been out of line.

The advert, which has already garnered over half a million views on YouTube alone, is a parody of OUTsurance’s “saver” advertisements that appears to spoof the original advertisements that featured Katlego Maboe as presenter. In the advert, a female driver and male passenger travel in a car, while discussing car insurance. The male passenger, who bears a striking resemblance to Mr Maboe, is then ousted from the vehicle, when it becomes apparent that the driver could have saved more on her current insurance, had she used Hippo.co.za’s platform to compare insurance quotes.

After no doubt seeing purple, OUTsurance instituted urgent proceedings to interdict Hippo’s conduct, arguing that the advertisement implies that OUTsurance overcharges its clients and creates an impression that the insurer cannot be trusted to offer competitive short term insurance products. OUTsurance further argued that the advertisement constitutes an anti-competitive act, that the advert infringes its common law and intellectual property rights, and that the advert contravenes the Financial Advisory and Intermediary Services Act’s General Code of Conduct, the South African Insurance Association’s Code of Conduct, and the Advertising Regulatory Board’s (“ARB”) Codes of Advertising. The matter was, however, dismissed by the Pretoria High Court, after it was held that OUTsurance had failed to prove the requisite level of urgency. As a result, OUTsurance was ordered to pay the costs of the application. The advert will also continue to feature across media platforms.

This article is limited to the regulation of advertising, specifically.

The ARB is a self-regulatory, membership-based entity which makes decisions that guide both its members and broadcasters, in practice.  The recent decision handed down by the Supreme Court of Appeal in the matter of ARB & Others v Bliss Brands confirms that while the ARB does not have jurisdiction over non-members, it may still consider the advertising and issue decisions relating to adverts created by agencies and brands that do not belong to the industry body, for the benefit of its members and broadcasters. This is important, as the ARB’s decision will guide whether its members elect to publish or broadcast a particular advertisement or not (based on its determination of whether it deems an advertisement as being contrary to its Code).

While it is difficult to comment on OUTsurance’s specific arguments without having had sight of the papers, it is likely that OUTsurance’s legal team would have referenced and relied on the general principles contained in the ARB’s Code. One such provision regulates truthful presentation.  Those who have seen the advertisement will recall that the driver, after seeing the Hippo’s smartphone, refers to the fact that she could have saved R 300 on her existing insurance quote. In terms of the ARB’s Code, Hippo should have had credible documentary evidence at hand to support this claim before the advert was published.  It is insinuated that the Hippo mascot has all the “receipts” necessary to back the claim, saved on his trusty smartphone.  The other relevant principles contained in the ARB’s Code include the rules governing price comparisons, disparagement, comparative advertising and imitation.

Hippo will, no doubt, in any response filed in due course, argue that this advert, which pokes fun at OUTsurance, was created as a parody. The ARB Code specifically allows for “harmless parody”, if the parody is intended to catch the eye or to amuse. The advertiser must, however, be able to show that the advert is seen as clearly humorous or hyperbolic and is not likely to be understood as making literal claims for the advertised product.

The ARB Code also includes a general prohibition on the exploitation of advertising goodwill, prohibiting advertisements which take advantage of the advertising goodwill relating to a trade name or symbol of the product or service of another, or the advertising goodwill relating to another party’s advertising campaign or advertising property, unless prior written permission has been obtained. Parodies, however, are specifically excluded from the general prohibition, provided that the intention of the parody is primarily to amuse, and which is not likely to adversely affect the advertising goodwill of another advertiser to a material extent. In these cases, the ARB would consider factors such as the likelihood of confusion, deception and the diminution of advertising goodwill. It will be interesting to see whether OUTsurance could substantiate an argument that it has acquired advertising goodwill in the concept of having a discussion with a driver in a moving car relating to car insurance, which Hippo has possibly exploited.

At this stage, it seems as though OUTsurance has only approached the High Court for relief (likely in the pursuit of an interdict on the basis of unlawful competition). Without having had sight of the papers in the urgent matter, however, it is difficult to comment on the evidence led by OUTsurance. It would be interesting to see how muddy the waters get, if OUTsurance decides to bring a fresh application before the normal motion court or, alternatively, the ARB.

It remains to be seen whether Hippo may one day find itself in deep waters, and in the writers’ opinion, much will turn on whether this advert qualifies as a parody.

Copyright counterclaim falls flat – Ed Sheeran Exonerated

“There are only so many notes and very few chords used in pop music – coincidence is bound to happen if 60 000 songs are being released every day…that’s 22 million songs a year and there are only 12 notes that are available”. Ed Sheeran’s words certainly ring true, in light of the momentous victory before the UK’s High Court of Justice earlier this month. In this case, Mr Justice Zacaroli ruled in favour of Mr. Sheeran and his co-authors, dismissing the claim that the hook of the song, Shape of You, infringed the copyright in the song Oh Why, written by Sami Chokri (who performs under the name “Sami Switch”) and music producer, Ross O’Donoghue. 

In reaching this decision, the Court was tasked with assessing, in rather technical detail, whether the 8-bar post-chorus of the song, in which the phrase “Oh I” is repeated three times to the tune of the first 4 notes of rising minor pentatonic scale (commencing on the C# note), qualified as a substantial part of the hook in the song Oh Why which was allegedly reproduced by Mr. Sheeran and his co-writers. 

Similar to South African Courts, the UK system also requires that an adjudicator rely on a qualitative test, examining the degree of objective similarity between two works, as well as whether a causal link exists between the original work and the alleged infringing work. This means that Mr. Chokri needed to prove that Mr. Sheeran had actually regarded and had access to the prior work, and adapted or copied substantial elements of it when creating his new song, Shape of You. The Court, correctly in our view, held that the rather sparce evidence presented by the Defendants did not satisfy this burden of proof, and illustrated that Mr. Sheeran had not heard or deliberately copied Oh Why during his creative process. Furthermore, the Court acknowledged that while there were certain obvious similarities between these two musical works, there were also significant differences to consider. 

As part of the heartfelt message to his supporters released in response to the outcome of this case, Mr. Sheeran’s outro will certainly resonate with fellow artists: “Hopefully we can all get back to writing songs, rather than having to prove that we can write them”.

Previous article: Pop stars to face the music over alleged copyright infringement

Pop stars to face the music over alleged copyright infringement

Copyright infringement hearings have certainly taken on a new meaning, after well-known musician, Ed Sheeran, recently performed bars of his hit, Shape of You, before the High Court in London in an effort to prove that portions of the chart-topper were not copied from an existing musical work.

Mr. Sheeran is currently embroiled in a copyright battle with grime artist, Sami Chokri (who performs under the name “Sami Switch”) and music producer, Ross O’Donoghue, who allege that Shape of You infringes portions of their song Oh Why, released in 2015. These proceedings were initially launched by Mr. Sheeran and his co-authors before the High Court in May 2018, seeking that the Court declare that the song did not infringe Mr. Chokri and Mr. O’Donoghue’s copyright. In July 2018, a counterclaim was brought on the basis of copyright infringement, with Mr. Chokri and Mr. O’Donoghue arguing that the “Oh I” hook in the Shape of You song is “strikingly similar” to the “Oh Why” hook in their own song of the same name. These authors also believe that Mr. Sheeran and his co-authors would very likely have heard their track, before creating their later work.

During the leading of evidence, the Court was played a number of recordings of Sheeran singing the hook of his song in different pitches, using a technique known as “stacking”. As part of the hearing, Mr. Sheeran also sang elements from Nina Simone’s Feeling Good and the Blackstreet’s song, No Diggity, to illustrate how melodies are commonplace in the composition of pop music. His testimony also detailed how the final melodies in question did bear a resemblance to one another, given that both compositions are based around the minor pentatonic scale and contain vowels in them.

It was further explained that the first version of the song had already been revised, to remove elements which sounded similar to Bill Withers’ song, Grandma’s Hands, and TLC’s hit, No Scrubs. In fact, TLC’s writers were later given credit on the track, despite failing to respond when Mr. Sheeran and his team sought clearance before the song was released.

Across the pond, pop star Dua Lipa now faces two separate cases of copyright infringement brought in relation to her hit, Levitating, within the span of a week of each other. The first claim was brought by reggae band, Artikal Sound System, who claim that the chorus of this bop infringes their 2017 song, Live Your Life. Songwriters L. Russel Brown and Sandy Linzer filed their claims shortly thereafter, arguing that the “signature melody”, especially the introductory verse of Dua Lipa’s Levitating, copies their songs Wiggle and Giggle All Night and Don Diablo.

Of course, this similar issue has played out in South Africa, when Daniel Baron accused French DJ, David Guetta of copying the melody of his 2016 single, Children of the Sun, in his own collaboration with Sia in 2018, entitled Light Headed. Our firm, led by our colleague Stephen Hollis, subsequently sent a letter of demand to Mr. Guetta’s management team on behalf of Mr. Baron in 2019, demanding that Mr. Baron receive credit for his work and share in the profits generated by Light Headed, on the basis of its melodic, chordal and rhythmic similarity to Mr. Baron’s work. In this specific case, the South African Music Rights Organisation (SAMRO), the organisation with whom Mr. Baron’s song is registered, froze all royalties payable to Mr. Guetta in South Africa pending the outcome of the dispute between the parties. The matter remains pending.

The South African Copyright Act of 1978, of course, recognises the bundle of rights which vest in an author, and these rights may be relied on by an artist to protect their musical work (the musical notation), literary work (the lyrics) and sound recording components of an original performance reduced into material form. The subsistence of copyright in a work confers a number of exclusive rights on the holder of copyright, including reproducing, publishing and performing the work.  An author’s copyright in South Africa is deemed to have been infringed when a person does or causes any other person to perform any act which the owner has the exclusive right to do or authorise.

In assessing these alleged infringement cases, the Court will rely on a qualitative test, examining the degree of objective similarity between two works, as well as whether a causal link exists between the original work and the alleged infringing work. Essentially, this means that the claimant would need to prove that the artist actually regarded and had access to the prior work, and adapted or copied substantial elements of it when creating the new song. The notion of a “substantial part” of the work being infringed has been the subject of interpretation by our Courts, and it would be interesting to see how our Courts would apply this test in these circumstances. The line which musicians tread between inspiration and theft is becoming an increasing relevant consideration in the music industry, and our Courts will, no doubt, be tasked with examining when an artist’s musical influences have been infringed when composing these new melodies. Can we expect Zoom concerts from the High Courts of South Africa?

It is yet to be seen whether these allegations of copyright infringement against Mr. Sheeran and Dua Lipa will fall flat. Encore possibly to follow?

Follow up article: Copyright counterclaim falls flat – Ed Sheeran Exonerated

McFringement? McDonald’s take Hungry Jack’s to Court over the new Big Jack burger

On 31 August 2020, companies in the McDonald’s group filed a lawsuit against the Hungry Jack’s franchise in the Australian federal court. The Hungry Jack’s chain, founded by fast-food mogul Jack Cowin in 1971, consists of approximately 400 stores across Australia (in comparison to McDonald’s estimated 970 stores). These conglomerates have had a tenuous relationship in the past, dating as far back as 2014, when Hungry Jack’s was accused of “hijacking” the McDonald’s Monopoly campaign by inviting McDonald’s customers to redeem their winning Monopoly food vouchers at Hungry Jack’s stores.

The source of this new beef between these two powerhouses traces back to July, when Hungry Jack’s began selling the “Big Jack” burger, and its heartier sibling, the “Mega Jack”. Hungry Jack’s stand accused of deliberately adopting or imitating the “distinctive appearance or build” of the world-famous Big Mac burger, as well as its ingredients, tagline and infringing the registered BIG MAC and MEGA MAC marks. In this regard, the Hungry Jack’s registration of the BIG JACK trade mark in November 2019 is alleged to have been done “in bad faith”.

The Big Mac burger has been advertised with the tagline “two all-beef patties, special sauce, lettuce, cheese, pickles, onions – on a sesame seed bun”, since its creation in the 1970s. The new kid on the block, the “Big Jack”, has been promoted online as containing “two flame-grilled 100% Aussie beef patties, topped with melted cheese, special sauce, fresh lettuce, pickles and onions on a toasted sesame seed bun”.

In a statement dated 4 September 2020, a Hungry Jack’s spokesperson has indicated that the company is “bemused by the trade mark lawsuit filed against it in the Federal Court”, which it believes is “without basis”. The spokesperson argues that “BIG JACK” is a registered trade mark in the name of Hungry Jack’s, and that it is clearly evident that consumers will not be confused or misled by the use of “Big Jack” and “Mega Jack”.

Were McDonald’s to find itself in a similar pickle in South Africa, the provisions of section 34 of the Trade Marks Act 194 of 1993 (“the Act”) would be applicable to any claim of infringement of the registered marks.   Section 34(1)(a) of the Act, of course, provides that a registered trade mark will be infringed by the unauthorised use of an identical mark, or a mark so nearly resembling it that it would be likely to cause deception or confusion, in the course of trade in relation to goods or services for which the trade mark is registered.  Clearly, the BIG JACK and MEGA JACK trade marks are being used for the identical goods which one would expect to be covered by the BIG MAC and MEGA MAC registrations.  The question would, therefore, simply be whether Hungry Jack’s marks so nearly resemble the BIG MAC and MEGA MAC marks, so as to cause confusion.

Should McDonald’s lose its appetite to litigate on the basis of trade mark infringement, it may also consider pursuing recourse in terms of the Advertising Regulatory Body’s Code of Advertising Practice. The Code contains provisions to curb any salty behaviour, stating clearly that  advertisements may not take advantage of the advertising goodwill relating to the trade name or symbol of the product or service of another, or advertising goodwill relating to another party’s advertising campaign or advertising property.

The Code further provides that an advertiser should not copy an existing advertisement or any part thereof in a manner that is recognisable or clearly evokes the existing concept and which may result in the likely loss of potential advertising value. This will apply notwithstanding the fact that there is no likelihood of confusion or deception. In considering whether or not an infringement has taken place consideration will be given to, inter alia, whether the concept is central to the theme, distinctive or crafted, as opposed to in common use.

How special is McDonald’s special sauce? One has to wonder what other ingredients could be used to make a burger, other than those listed in both advertising campaigns?

This is not the first instance of McDonald’s pursing trade mark infringement proceedings to protect its Big Mac trade mark in Australia. Recently, independent Burger chain “Burger Urge” was taken to task for selling the “Big Pac”, made with alpaca patties, sauce, cheese, pickles, lettuce and onion on a bun. This resulted in Burger Urge removing its product and promotional materials from the market.

It looks like the bun fight may well be super-sized and worth following.

Authored by Jani Cronje, Partner and Jared de Canha, Candidate Attorney at Adams & Adams

Co-authored by Jared de Canha, Candidate Attorney at Adams & Adams

Teacher’s pet…hate

With day (who can remember) of lockdown arriving, your phone chirps excitedly, reporting “your homework” which has arrived for next week, ready to be downloaded and printed in advance.  Yes, best to be prepared!

The writer is sure that every parent out there will now be able to update their LinkedIn profile and more specifically their skill set, to include educator.   Being directly involved and particularly interested in the protection of IP, the first thought that came to mind, was copyright.  Well, that is actually a lie, the first thought that did come to mind was “how am I going to do this”.  Let us not digress.  The writer is fairly certain that the documents being diligently transmitted for home execution, do not constitute original works and most likely, were copied from a textbook at hand.

In addition to being worried that you have not correctly conveyed what should be identified as nouns and adverbs in a sentence, parents should not have the added stress of wondering whether they have been breaking the law.  The scenario the writer has in mind is somewhat different to the pdf versions of famous South African magazines making the rounds.  It must be mentioned that these pdf documents were quickly retracted by the unknowing senders when, most likely, someone in the IP field was called in haste to assist.

What the writer wishes to reassure parents/educators about, is the transmission of copied parts of textbooks, for purposes of completing schoolwork at home.  All things being equal, the textbooks being copied are most likely protected and copyright still subsists in the various works making up the textbook.  The reproduction of a copyright work (read “the making of a copy”) is included in the list of acts covered by the current South African Copyright Act, which only the owner of copyright is entitled, exclusively, to do or authorise anyone else to do.  So, if you make a copy of a copyright protected work or a substantial part of it, this should constitute infringement.   By the way, storing the homework you receive from school and actually printing a copy, both constitute making a copy of the work.  Also, a substantial part of the work, does not mean the entire textbook.

Before you angrily dial the relevant teacher who has now made this your problem, fortunately, our Copyright Act also provides for some exceptions in respect of the reproduction of copyright work.  Our Act states that copyright shall not be infringed if a literary work is used solely, and then only to the extent reasonably necessary, for purposes of private study by, or the personal or private use of, the person using the work.  Being in lockdown, no doubt private study is all that is taking place.  Ok, so that covers your copy at home.  What about the quaranteacher (cute new name being thrown around), sending the work home?

Our Copyright Act further provides that the copyright in a literary work shall not be infringed by using such work, to the extent justified by the purpose, by way of illustration in any publication, broadcast or sound or visual record for teaching – provided that such use shall be compatible with fair practice and that the source shall be mentioned, as well as the name of the author if it appears on the work.  Ok, so arguably, most scenarios would be covered … if the teacher remembers to also include the name of the source, as well as the name of the author. The writer highly doubts that semantics will play a big role in the current climate, but hey, we are busy with schooling and rules are rules.

Fortunately, the Regulations to our Copyright Act in fact give teachers a free pass in these circumstances, as multiple copies (not exceeding one copy per pupil per course) may be made by or for a teacher for class-room use or discussion, provided that copies may not be used to create, replace or be used as a substitute for the purchase of books.  For now, the “class-room” lives in a virtual space but we all know that lockdown will end and it is certainly foreseeable that the textbooks being copied, were previously purchased for conventional schooling (how we long for those days).

Phew, looks like this is one item to be ticked off the list.  Happy educating everyone!