By: Manisha Bugwandeen-Doorasamy
Senior Associate | Intellectual Property, ENS
Copyright protects a wide range of works. The first of the categories listed in the South African Copyright Act (“the Act”) is “literary works”. It is an unhelpful monitor, because literary merit does not come into it at all – the definition in the Act in fact uses the phrase “irrespective of literary quality”. The Act goes on to make it clear that works such as reports, tables and compilations are categorised under the term ‘literary works’. Any combination of letters and / or numerals, sentences or slogans may also qualify as literary work, no matter how ordinary they are. Case law takes this even further – in the recent South African case of Board of Healthcare Funders v Discovery the court held that there was copyright in a compilation of numbers identifying medical practitioners, whereas older cases found that there was copyright in parts-numberings systems (Bosal v Grapnel and Payen v Bovic.) A more accurate name might be “written works”.
It is a fundamental requirement of copyright that the work must be original. Originality in the context of copyright does not mean novelty, which is, of course, a requirement in certain other areas of intellectual property (IP). Originality simply means that the work must in fact be the creation of the person who claims to have created it. In other words, it must not have been copied and need not be unique or inventive. It is basically all about labour and effort. The word “skill” is also sometimes used, and this possibly suggests that there is some objective requirement of merit, that there is perhaps some de minimis requirement that excludes something that is completely trivial, or something that is, as a Canadian court once put it, a “purely mechanical exercise”. But for the most part the courts seem to adopt the approach that if you gave it some welly you have copyright.
Knowing all of this, we can now look at the recent decision of the Gauteng High Court in the case of Premier Soccer League (PSL) v Gidani. South African readers will know that PSL runs the top football league in the country, whereas Gidani is the company that operates the National Lottery, having taken over that role a few years back from a company called Uthingo. PSL’s complaint was that Gidani had copied its football fixture lists without authority. Gidani had, as part of a sports betting product that it offered, reproduced the lists on its website and in retail outlets and petrol stations. The evidence showed that, whereas Uthingo had had a written agreement with PSL (an agreement that involved the payment of royalties or licence fees), Gidani and PSL had never been able to reach an agreement.
The first issue was whether the football fixture lists enjoyed copyright. Yes said the court. Why? Because the court accepted that a great deal of work had gone into the creation of the lists – two employees of PSL gave detailed evidence of how much experience they had in football administration, and how much effort they had put into the creation of the lists, a task that involved taking all sorts of factors into account, including broadcasters’ requirements, stadium availability and clashes with rugby fixtures. The court referred to a number of well-known South African cases (including those referred to earlier), as well as the UK case of Ladbroke v William Hill, which also involved football, although in this case football pool coupons. In that case the court said these often-repeated words: “In deciding therefore whether a work in the nature of a compilation is original, it is wrong to start by considering individual parts of it apart from the whole… many compilations have nothing original in their parts, yet the sum total of the compilation may be original”.
The court referred to Coppinger and Scone James on Copyright in looking further at what constitutes a table or compilation. Essentially, according to the dictionary definition, the word “table” is defined as “an arrangement of numbers, words or items of any kind, in a definite and compact form, so as to exhibit some sets of facts or relations, in a distinct and comprehensible way”. The word “compile” is defined as “to construct a written or printed work out of materials collected from various sources”. Therefore, where extensive effort has been made in making a compilation, such compilation may be regarded as being original even if there was less skill involved in the making of such compilation. The court indicated that there was merit in PSL’s submission that enough effort had been put into compiling the fixture lists, and it was sufficient to render the work original and worthy of copyright protection.
The court also delved into the issue surrounding computer programmes and shed some light on this – a work is regarded as been “computer generated” if it was created by a computer and where there has been no human author of the work. A “computer assisted” work is where the work has been created by an individual using a computer as a tool. PSL in its evidence indicated that the fixture lists were compiled through the use of a computer programme. The evidence suggested that the computer program did not in itself produce the fixture lists – it was used to assist with corrections and aimed at ensuring that accurate fixture lists were created.
So the football fixture lists had copyright, but was there any defence to the unauthorised reproduction? Here I have to say that it may not have displayed any originality in the area of fixture lists, but Gidani certainly did when it came to copyright defences – the company claimed that the Constitutional right of freedom of expression allowed it to reproduce the fixture lists. Gidani went on to argue that the purpose of the fixture lists created by PSL was to merely inform the public about the where and when the matches where to be played. Gidani also argued that PSL had disseminated the information to the public at large and that the public are well within their rights to use the information even for commercial use. This argument was rejected by the court. The court particularly emphasised that Gidani cannot be considered as a member of the public. It operates a commercial gambling business and its business is not to “receive or impart information or ideas”.
Constitutional defences are, of course, finding their way into IP disputes, and it is well known that a Constitutional defence was successfully raised in a trade mark dilution matter. In the case of SAB v Laugh-It Off the owners of the Black Label beer trade mark sued a t-shirt maker who had altered the famous Black Label Logo to read Black Labour, in an attempt to make a point about the company having benefited from apartheid-era labour practices. The freedom of expression defence was upheld by the Constitutional Court, seemingly because there was no risk of ‘substantial economic detriment’. I understand that freedom of expression has also been raised in a pending copyright infringement case. In that case the national broadcaster, SABC, commissioned an independent filmmaker to make a documentary dealing with corruption and paid her for the work, making the SABC the copyright holder. When the SABC failed to broadcast the documentary (seemingly for political reasons), the filmmaker showed a copy of the film in public. Her defence to the copyright infringement action that followed was that of freedom of expression, and the fact that it was in the public interest that the film be shown.
Gidani’s freedom of expression defence was rejected. The judge distinguished the case from the SAB case on the basis that, whereas there had been no risk of substantial economic detriment to SAB, there was clearly was such a risk to PSL. The judge suggested that things might have been different if this had been a case of parody, or of the media trying to publish something that was in the public interest, but this was nothing more than a commercial enterprise appropriating another party’s IP. The argument that there was some greater purpose here because the National Lottery benefits “good causes” was also rejected. The judge said this: “The defendant’s conduct is not a form of speech or expression identified for protection by the Constitution. On the contrary all indications or pointers point or lead to the appropriation of an intellectual property asset belonging to the plaintiff, not for purposes of parody or lampooning or for other social purposes, but instead for no purpose other than to generate commercial gain for itself.”
It’s hard to see how the judge could have found otherwise. Upholding the defence would have effectively put an end to copyright in literary works.