Six intellectual statutes to be amended
30/12/2002

Proposed amendment of the Copyright Act 98 OF 1978

1. It is proposed to amend section 9 to introduce the "pay for play" or needle-time principle in respect of sound recordings. In fact, three new restricted rights in respect of sound recordings will be created, namely the right to broadcast, to transmit in a diffusion service, and to communicate to the public. The provision will require a broadcaster to pay a royalty for the right to broadcast, with the proviso that such right cannot be refused by the copyright owner, and it is further provided that the royalty will be apportioned between the copyright owner of the sound recording and the performing artist(s).
   
   A corresponding mechanism is introduced into the Performers' Protection Act 11 of 1967.
2. Amendments are proposed in section 12 to give substance to the concept "fair dealing" presently used in section 12(1) in the context of limited exemptions granted in respect of certain restricted acts, and to make it clear that the doing of a restricted act (eg. making a copy) of a copyright work for purposes of research or private study, or for personal or private use, will only be exempted from infringement if such act is done by a natural person.
3. Section 23 will be amended to add a further act of indirect infringement to the list as set out in section 23(2), namely the act of possessing or having control of an infringing article in the course of business. The concept "in the course of business" is wider in scope than the phraseology "by way of trade" used elsewhere in section 23(2).
4. The proposed amendment to section 24 seeks to quantify the additional or penal damages payable in the case of flagrant infringements, to R10000 for each infringing article (or each infringing act).
5. Section 26 is proposed to be amended by the introduction of two rebuttable presumptions in any court proceedings for copyright infringement, namely presumptions regarding the subsistence of copyright and the ownership of copyright.
6. Section 27 will be amended to create a further criminal offence in the context of copyright infringement namely the possession or control of an article in the course of business and with a view to committing an infringement, where the person knows or has reason to suspect that the article is an infringing copy.

Members of Adams & Adams were closely involved in the drafting of comments and submissions in response to the proposed amendments, and proposals for changes to improve the wording of the amendments and to render them into more effective form.

Proposed amendment of the Performers' Protection Act 11 of 1967

1. It is proposed to amend section 5 to mirror the proposed "pay for play" or needle-time provisions in respect of sound recordings to be introduced into the Copyright Act. The amendment provides that no person will be permitted, without payment of a royalty to the performer, to broadcast a fixation of a performance by a performer, or cause the performance to be transmitted in a diffusion service, or cause any communication of the performance to be made to the public. Again the amount of the royalty is to be determined by the Copyright Tribunal in the absence of agreement.
2. Section 5 is further amended by the introduction of a new subsection (3) providing that, where a performer has authorised the fixation of his/her performance, he/she shall be deemed to have granted the person arranging for the fixation to be made, the exclusive right to exact, for example from a broadcaster, payment of the royalty referred to. The performer will be entitled to share in such royalty. In the absence of agreement as to the basis of such sharing, the Copyright Tribunal is to determine an appropriate apportionment.

Proposed amendment of the Trade Mark Practices Act 76 of 1976

1. It is proposed to amend section 9 of the Trade Practices Act, to address the increasing problem of ambush marketing.
   
   Ambush marketing has become a major threat to the attractiveness to potential sponsors of events sponsorships. Sponsorship in South Africa, as elsewhere in the world, has become an important component in the development and promotion of a wide variety of public-oriented activities, including sport, cultural events, recreational and leisure activities and the like. In fact, without sponsorships many sports and cultural events would not be financially viable.
2. Sponsors are prepared to pay large sums of money for the exclusive privilege and commercial benefit of having their company names or trade marks associated with high profile events such as World Cup events, Olympic Games, etc. The undermining practice of ambush marketing poses a threat to, and creates a variety of problems for those involved in sponsorships. Ambush marketing involves intentional conduct on the part of a person or company to create a false or misleading impression of a connection or association with a sponsored event, where in fact no such connection or association exists.
3. Section 9 already prohibits certain advertisements, statements and the like in relation to the sale or leasing of goods and the rendering and provision of services which, directly or indirectly, are false or misleading in material respects. The proposed amendment will introduce a new paragraph to provide that a false or misleading advertisement, statement, communication, description or indication for purposes of section 9 will include such conduct which is intended, directly or indirectly, to represent, imply or suggest a contractual or other connection or association with any event, person, organisation or place by virtue of patronage or sponsorship.
   
   The new provision will make it clear that the false or misleading activity prohibited by section 9 includes such activity which implies a connection or association in the context of patronage or sponsorship.
4. Increased penalties will also be prescribed by a proposed amendment of section 19 of the Act. In the case of a first conviction a fine not exceeding R5000 can be imposed, or imprisonment for a period not exceeding two years, or both. In the case of a second or subsequent conviction, these are increased to R10000 and five years respectively.
   
   Members of Adams & Adams were involved in the drafting of the proposed amendments.

Proposed amendment of the Counterfeit Goods Act 37 of 1997

Three amendments of a technical rather than a substantive nature are proposed to be effected in the Counterfeit Goods Act.

1. The first amendment is to the definition of "intellectual property" in section 1, to make it clear that the trade mark rights which are protected against counterfeiting activity includes unregistered trade mark rights.
2. The second amendment is to section 5(4), to make it clear that only acts of entry, search, seizure, removal etc. performed by an inspector without a warrant will require subsequent confirmation by a magistrate or a judge having jurisdiction in the relevant area.
3. Thirdly, it is proposed to amend section 21 to make it clear that the provisions of the Act will not detract from the capacity or competence of anyone to act in terms of other existing legislation, particularly the Criminal Procedure Act, 1977.

Proposed amendment of the Merchandise Marks Act 17 of 1941

1. Several amendments are to be effected to the definitions section and to other sections of the Act, to make it clear that the provisions of the act will not apply to trade marks. This is to avoid any possible overlap with the provisions of the Counterfeit Goods Act.
2. Section 2 is to be amended to make it clear that the prohibited act in terms of the Act, is the application of a false trade description to goods.
3. It is proposed to amend section 7 to create an offence also in those cases where a person sells or lets or offers for sale or hire goods in relation to which a trade mark has been altered, whether by addition or effacement or in any other manner.
4. Section 14 is to be amended to make it an offence if a person uses, in certain circumstances, in connection with his/her trade, business, profession or occupation in respect of his/her goods, without the appropriate written authority, any of the following:

• the national flag of a convention country;
• the armorial bearings or any other state emblem of the Republic or a convention country;
• an official sign or hallmark adopted by the Republic or a convention country and which indicates control and warranty;
• the flag, armorial bearings or any other emblem or the name or abbreviation thereof, of any international organisation.

The purpose of this latter amendment is to bring the legislation in line with South Africa's Trade Marks Act and with TRIPS.

Proposed amendment of the Patents Act 57 of 1978

1. The proposed amendment to section 9, to delete paragraph (b), would have the effect to permit individual applicants (ie. inventors themselves, private persons as well as corporate applicants) to prepare and file their own complete applications and to effect their own amendments. In other words, it will no longer be necessary for any applicant to work through a patent agent or patent attorney to effect a complete filing or to amend a complete specification - the applicant can do all of these acts himself.
2. The South African Patent Office is a non-examining office; it does not have the technical staff nor the capacity to inspect and examine all incoming complete applications and amendments of complete specifications to ensure that the requirements of the Patents Act are complied with. In the past, this responsibility was, effectively, transferred to patent agents and patent attorneys who were required, in terms of section 9(b), to sign all complete specifications and all amendments of complete specifications.
3. This amendment will place the burden on the applicant to ensure that the application or amendment complies with the requirements of the Act.
4. Section 19 is to be amended to afford ordinary attorneys (ie. non-patent attorneys) the right of audience in the Court of the Commissioner of Patents, provided they have appearance rights in terms of the Right of Appearance in Court Act, 1995.
5. Again members of Adams & Adams were actively involved in drafting submissions in response to the proposed amendments to the Patents Act, inter alia pointing out the increased burden which will be placed on the Patent office and its staff.

We are monitoring the progress of the amendments and shall keep you informed.

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