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A what?

What is a torrent you may ask? A Torrent is basically a bookmark of files kept all over the internet and on users’ computers across the internet. Torrent sites collect these bookmarks and make them available so that other users can load the bookmark and automatically pull bits and bobs of the same file from all across the internet – with the resulting file being a perfect copy of the original file.

So what?

RiSA issued so-called take-down notices on a number of internet service providers in SA where a number of Torrent sites were hosted. A take-down notice is an American invention, now entrenched in the South African Electronic Communications and Transactions Act, whereby ISP’s can escape liability from third parties (copyright owners for example) if it responded on a take-down notice (in which a copyright owner will claim its copyright) whilst the facts surrounding the copyright are investigated and proved.

According the RiSA the South African Torrent sites infringed on its members’ copyright and are piracy-centric sites. After the take-down notices were served on the ISP’s (via the ISP Association_, the sites were closed down – to the great chagrin of the local online community.

To the rescue

A local lawyer jumped in on the behalf of the Torrent sites (pro bono) and made some very interesting legal points about the take-down notices and RiSA’s actions:

1. The sites do not actually host any copyrighted material – this is hosted by the user on the other side of the “bookmark” and downloaded by the person using the “bookmark”.

2. RiSA does not have the necessary locus standi (legal standing) to issue the take-down notices, since in terms of the South African Copyright Act, only the copyright owners themselves would be able to institute legal proceedings for the infringements.

3. In terms of the SA’n constitution everyone has a right to be heard in court (access to the courts) and by merely taking down the sites, the ISP’s might have acted unconstitutionally by not allowing the Torrent sites to state their side of the story.

We take your point

The lawyer also warned of civil claims against the ISP’s and RiSA for the infringements. All-in-all, these points made the ISP’s and RiSA sit up and listen, whom have now offered to sit down with the Torrent sites and negotiate. RiSA has also indicated that whilst the issues are being ironed out, that they will not send out any more take-down notices.

The BSA is a private body funded by the big software houses to look after the said software houses’ interests. They of course have a huge interest that piracy is curbed, because this means a direct contribution to their respective bottom lines.

The BSA claims that Microsoft estimates that for every $1 spent on production of the software, $9 worth of revenue is generated within the local economy in which it distributes. The BSA also claims that if software piracy is reduced by 10%, an additional 1200 jobs can be created within the IT sector, R6 billion in economic growth and R480million in tax revenues. The BSA also calls software piracy “dangerous” which sounds quite alarmist to br!ghtshark.

To combat piracy, the BSA has now started a campaign in which employees can report software piracy to the BSA. If the business is found “guilty” of software piracy, the whistle-blower can receive a reward. The reward is basically paid for from the software licensing fees generated from the tip-off – in general when the BSA engages with a business on software piracy they will put pressure on the business to become legal first, with the purchasing of legitimate software licenses. To the skeptical ear this does sound a little like a kind of blackmail, but be that as it may. The whistleblower will then receive 10% of the software licensing fees generated from the tip-off, up to a maximum of R100 000.

That being said, one would have to look at the actual cost of software licensing and the social cost of blowing the whistle on South African employers to the benefit of international or foreign entities. The whistle blower could very easily find himself without a bonus, or even worse, an employer if the cost of the software comes to a very large amount. In the current rocky financial times, this rings even more true.

So, what could one do to go the legal on the software without going illegal in a different manner and following the Somali’s example by turning into a different type of pirate to finance all of the licensing? One manner is to join the ranks of global giants such as Google, YouTube and Yahoo. Globally governments are also cottoning on and the governments of Australia, New Zealand and even South Africa are switching from retail software to Open Source software.

Open Source Software is software available for free, usually downloadable and is collaborative piece of software (ie, developed by collaborative contributors from all over the world). A full description of Open Source Software can be read (here) on Wikipedia, which in itself is an excellent example of an open source solution at work. If you don’t want to kill your broadband limits (or data cap), you can also get copies of the software from Freedom Toasters located nationwide (a Shuttleworth initiative).

There is practically a piece of Open Source Software to replace any of your current (un)licensed pieces of software. The most well-known pieces of Open Source Software are OpenOffice (a word processing suite, competing with Microsoft Office), Thunderbird or Gmail (email clients, competing with Microsoft Outlook) and Linux (an operating system, competing with Microsoft Windows).

Give it a try – tons of others have and have saved a bundle (of BSA-related-stress and $$) in the process.

The publishers were particularly upset at the fact that one was able to still read the headlines and first couple of sentences from Google’s site long after the news was moved behind the pay-for-use section of the various newspapers’ sites. The Belgian Court, where the case was heard, ruled in essence that Google was infringing on the publishers’ copyright by caching the news on its own servers. Google was thus ordered to remove all the material from its site, as well as pay a fine of €25 000 for each day that the copyright was infringed (coming to some €3.5m!).

In essence this case was about advertising revenue – Google’s main source of income. The publishers of course were also interested in the advertising revenue which could be earned on their own sites and which they lost out to since users were now not clicking through to the publishers’ newspaper sites. It seems however that the publishers forgot that many people came to their sites through Google – something they very quickly realised when Google (after losing the case) went ahead and removed all links to the various newspaper sites together with the offending material.

Other than the fines, Google was never ordered to pay the publishers any amount in damages for the copyright infringement. The publishers have now issues summons against Google in the Belgian courts for an amount of €49m for the alleged damage they suffered because of the copyright infringement (I never knew newspaper online advertising revenue was this lucrative!). The same group of publishers also instituted action against Yahoo as well as MSN in a bid to block the other big online search engines from infringing on its copyright.

The damages which the publishers are now claiming for, are in addition to the fines which the court levied on Google. This comes while Google’s appeal on the original copyright infringement case is still pending and will be heard by the Belgian court sometime in September of this year.

The outcome of this case could have some far-reaching impact on the legal framework around copyright in the European Union, as there are already rumours going around that the EU will be looking into its copyright laws because of the Google case.

In South Africa, the registration of trademarks is governed by the Trade Marks Act 194 of 1993. The act came into operation in May 1, 1995, bringing South African trademark law in line with international trends and the various international laws and treaties currently at play in the international arena.

Trademarks are registered with the Registrar of Trade Marks at the Companies and Intellectual Property Registration Office (CIPRO). Despite the lengthy process, it is worth the time, money and effort to register a trademark in light of the protection afforded you and your business.

What is a trademark?

A trademark is a logo, brand name or a slogan that identifies goods or services of an entity and differentiates the trademark from those of another business.

An example of a logo is Apple’s well known apple with a bite out of it. An example of a slogan is Absa’s “Today Tomorrow Together’. An example of a brand name is ‘Castle Lager’, however it may be written, as one of the brands belonging to SAB.

How can trademarks benefit your business?

When a trademark is registered at CIPRO your business is legally protected against other companies using a similar mark for the same goods or services that you supply. And if another company uses a mark that is similar to your registered trademark, you would be able to take legal action.

The trademark is also protected under common law and through usage you can build up a reputation for the mark. It’s advisable to do this to further protect your rights.

When should you register your trademark?

A trademark would normally form the cornerstone of your business’ marketing portfolio, especially if you have spent time and money building your brand. It’s advisable to register a trademark before using it, although this is not absolutely necessary. It would, however, give you the assurance that there are no conflicting or similar registered marks before you invest a great sum of money in developing and marketing it.

If you haven’t registered your trademark and have been operating for some time, you’re still protected against infringements to some degree. You don’t, however, have the protection afforded by the Trade Marks Act; your rights are protected by the principles of common law.

One benefit to using a trademark before registering it is that its position is entrenched in the industry and ensures that it will be properly protected when finally registered. A registered trademark is protected by the Trade Marks Act (194 of 1993 as amended) which states that, should a person infringe upon your trademark, either by copying it or by using a mark which relates closely to your own registered trademark
and which might lead to deception or confusion, you are entitled to approach the courts. The courts have the power to interdict the infringer from using it, order the removal of the infringing mark, order that all the infringing marks be handed to yourself, compensate you for damages sustained or, if no damages are determinable, any amount that the court deems reasonable as a royalty.

Other than legal benefits, your trademark also has marketing benefits, which provide abstract benefits over and above the actual product or service by conveying a sense of quality or value to the product. Your rights to your trademark can also be pledged or encumbered, should the need arise to furnish security of some sort.

How to register a trademark

The first step before registering a trademark would be to research it. You can do a trademark search at the trademarks office for similar trademarks, search for similar names already registered as internet domain names and search for similar names already registered as company or close corporation names at the registrar of companies. It would also be advisable to make appropriate enquiries within the relevant industry in which you wish to conduct business.

The second step would be to properly identify the class or classes in which your trademark would be registered. The classification takes place according to the Nice Classification System of the World Intellectual Property Organisation.

The third step is to complete a CIPRO TM1 form and apply for registration of each and every class in which you wish to register your trademark. This form can be obtained from the CIPRO offices or from their website and must be submitted to the trademark registrar at CIPRO, in triplicate, together with a registration fee of R266 for each trademark application.

After lodging your application, the registrar will consider it and advise you the outcome of the initial examination of your application. At present, due to a backlog at the offices of CIPRO, the first investigation stage of the process takes approximately 30 months.

Once the registrar has accepted your application, a notice of acceptance will be issued, and your trademark will be advertised. This affords the general public an opportunity of three months from the date of the advertisement within which to oppose your trademark application. Upon expiry of the objection period and provided that there were no substantial objections, you will be issued with a registration certificate.

The whole process currently takes approximately three years from date of application to date of final registration if no objections are received.
After the official registration of your trademark, it will enjoy the full protection of the Trade Marks Act for a period of ten years after the application date, which can be renewed indefinitely for ten year periods upon payment of a renewal fee to CIPRO six months prior to the expiry date of your trademark’s registration.

The processes and procedures surrounding the registration of trademarks are quite complex and intricate, especially in relation to registering your trademark in the correct classes under the Nice Classification System. In order to ensure that there are no unnecessary delays in an already very lengthy process, it is highly recommended to consult with an attorney to assist you with the application.

However, if you are planning to do the application yourself, you can visit the website of CIPRO, where all the necessary forms can be downloaded and where a guide will assist you with the application procedure.

What if somebody else is using your registered trademark?

You would have to approach a court to obtain a court order in terms of the Trade Mark Act in which the infringer can be ordered to halt the infringement (an interdict) of your trademark, directed to remove all the infringing marks, directed to hand over all infringing goods or marks or be ordered to pay damages or royalty fees for the unlawful use of your trademark.

What if somebody else is using your unregistered trademark?

You would still have to approach the court, but would be limited to a common law claim for damages against the infringer for passing off your trademark as his own or for unlawful competition.

The biggest obstacle in bringing such a claim would be your ability to prove the damages that you sustained from the fnfringer’s conduct. This is one of the biggest reasons for registering trademarks despite the long delays currently being experienced at the CIPRO offices.

What if a trademark falls into disuse?

The Trade Mark Act makes provision that, should a trademark fall in disuse, the trademark can be expunged from the trademark’s owner, after which the protection afforded under the act ceases and any third party can apply to have the trademark registered in their own name and for the benefit of their own use.

How to avoid infringing other people’s trademarks

Do the same research as you would when preparing to register your trademark and keep proof of your research on file. This would enable you in future to prove that your use of the mark was not in bad faith and that, at the time of you starting to use your mark, the conflicting trademark was not widely known or used, especially in the specific class or industry in which you intend to conduct business.