The recent decision of the Gauteng High Court in the case of Premier Soccer League (PSL) v Gidani, a judgment of Judge Kgomo dated 28 February 2014, is fascinating. The issue was whether Gidani, the operator of the National Lottery, had infringed the copyright that the PSL has in its football fixture lists – Gidani had, as part of a sports gambling offering, reproduced the lists on its website and published them at petrol stations and retail outlets, without any licence from the PSL.
Copyright in football fixture lists! This was indeed the first major issue – does an area of law that protects music, art and film also protect fixture lists? It certainly can. One of the categories of works protected by copyright is the‘literary work’. It’s something of a misnomer, because although this term does indeed cover works of literature, it also covers just about any other written work. The Copyright Act, for example, makes it clear that the expression includes mundane things like tables and compilations of data. And case law tells us that it covers a great deal more.
Back in 1964 a UK court in the case of Ladbroke v William Hill held that there was copyright in football pools coupons. In the South African case ofPayen v Bovic the court held that there was copyright in a numbering system for gaskets, and in the later case of Bosal v Grapnel the court held that there was copyright in a vehicle part numbering code. Recently a South African court in the case of Board of Healthcare Funders (BHF) v Discovery held that there was copyright in a so-called ‘Practice Code Numbering System (PCNS)’, a compilation of numbers identifying all the medical practitioners in South Africa, and containing information like their addresses and bank details. In this case BHF led evidence that a great deal of work went in to the creation of this system.
This leads us on to another important aspect of copyright law. The Copyright Act says that it protects works that are ‘original’. But when is something original for copyright purposes? Must it be something that is clever or interesting, must it go even further and be ground-breaking? The conventional wisdom is that originality requires nothing of the sort, that it simply means that your work must be the result of your own labour and effort and that it must not be copied from another source. So the bar is quite low – it’s graft rather than creativity. Yet it is sometimes also said that copyright shouldn’t protect things that are totally trivial, and that there must be some objective requirement of merit. There seems to be a slight contradiction.
In the PSL case the court seemed to adopt the established ‘sweat of the brow test’. It certainly accepted the PSL’s contention that a great deal of effort went into the creation of the football fixture lists. Two employees of the organisation had given evidence which showed, inter alia: that they had a great deal of experience in football administration; that they compiled the lists with the aid of a computer program; that they had to take into consideration all sorts of issues like blocking out certain dates including Fifa-sanctioned match days and Cup days; that they had to consult with various interested parties including clubs and broadcasters; that they had to make sure that fixtures weren’t too close to other matches; and they had to consider things like floodlight availability and rugby fixtures (in cases of shared stadiums).
So the fixture lists enjoyed copyright. And there had been infringement because a substantial part had been reproduced. It appears that Gidani may have raised a defence that it had an implied licence to copy the fixture lists. That defence wasn’t pursued however. No surprise there, because it’s hard to see how it could have succeeded – the judgement shows that Gidani’s predecessor as operator of the lottery, Uthingo, did have a formal licence with the PSL, and that Gidani and the PSL had tried but failed to conclude a deal. And in the case of BHF v Discovery the implied licence argument was rejected on the basis that it was highly unlikely that an organisation that charged its members a fee to use the PCNS system would allow Discovery, an ex-member which had at one stage been authorised to use the system, the right to continue using use it free of charge.
The second big issue was far more interesting. Gidani raised the defence that what it was doing was permitted in terms of section 16 of the Constitution, the right of freedom of expression. The judge was prepared to accept that constitutional rights can be considered in copyright cases, but he could hardly have done otherwise. In the famous case of SAB v Laugh-It-Off – where a satirist had copied the Black Label beer logo, changing the name to ‘Black Labour’ and adding wording that commented unfavourably on SAB’s labour practices – the Constitutional Court held that the right of freedom of expression trumped the right of the trade mark owner to object to unauthorised use. But the judge in the PSL case felt that the balancing of rights – freedom of expression (section 16) and property ownership (section 25) – was very different. Why? Well, for starters the court in the Black Label case had been influenced by the fact that SAB had not suffered a ‘substantial economic detriment’, something that could not be said about the PSL. Second, this was clearly not a case of parody, social commentary or the imparting by the media of important information, but rather the unauthorized use of intellectual property for commercial purposes.
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.’ The judge also felt that the fact that the National Lottery benefits ‘good causes’ was of no consequence: ‘Even if its claim was true, there is no basis in law for supposed and/or self-determined “good causes” to serve as a basis to limit copyright recognition or otherwise excuse copyright infringement’.
Copyright owners can be very grateful that the freedom of expression defence did not succeed. Because if it had, it’s hard to see how copyright in literary works would have any future significance in South Africa.
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