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08 May 2019

The Range Rover in China, copyright in South Africa

We have written before about the case concerning the look-a-like Range Rover Evoque on sale in China for a fraction of the price of the real thing. In this case, Jaguar Land Rover ("JLR") sued the makers of the copycat Land Wind X for copyright infringement. JLR have now won, with the court finding that five features of the vehicle were copied and that damages should be paid. According to one report, other car manufacturers are now considering similar actions.

This quote from Keith Benjamin, JLR’s head of legal, highlights the commercial importance of such a finding: “We welcome this decision of the Beijing court, which further strengthens our confidence in investing in China and in the fairness of intellectual property adjudication in the Chinese courts. This ruling is a clear sign of the law being implemented appropriately to protect consumers and uphold their rights so that they are not confused or misled, whilst protecting business investment in design and innovation.”

The Evoque case follows another Chinese product shape case, Lego v Lepin.  In this case, Lego sued a Chinese company that sold look-a-like bricks, including bricks that clearly copied Lego’s Star Wars, Friends, Harry Potter and Batman ranges. A court found for Lego on the basis of infringement and unfair competition and it awarded Lego damages of RMB4.5-million. All the signs are that things are improving in China.

But, what about South Africa? What protection exists for product shapes such as the shapes of vehicles? Trade mark registration is definitely an option, but shape marks can be difficult to protect because it’s not always easy to persuade the authorities that the shape of the product is an indicator of source in the same way that a name might be. Design registration might well be an option – the most important requirement here is that the design must be new, so you cannot test the market for a few years and then decide, yes, it’s a runner, we’ll protect it!

But, what about copyright? Copyright doesn’t specifically cover products such as cars, but there might be an argument that, as the technical drawing that led to the manufacture of the car is protected as an artistic work, there is surely protection against copying the car itself because that’s tantamount to making an indirect copy a technical drawing. But section 15(3) of the Copyright Act, 1978 puts paid to that. This effectively takes industrial design out of the realm of copyright. It provides that:

“The copyright in an artistic work of which three-dimensional reproductions were made available ... to the public by or with the consent of the copyright owner (hereinafter referred to as authorized reproductions), shall not be infringed if any person without the consent of the owner makes or makes available to the public three-dimensional reproductions or adaptations of the authorized reproductions, provided ... the authorized reproductions primarily have a utilitarian purpose and are made by an industrial process.“

So, what about the much-discussed changes that are coming to South African copyright law? Will they bring industrial design within the ambit of copyright law? The Copyright Amendment Bill, 2017 has attracted much negative publicity. Professor Owen Dean has said that the Bill “grants the courts a virtually unbridled discretion to make any and all exceptions to protection that suit them, thus causing undesirable legal uncertainty and prejudice to copyright owners.” In a recent opinion piece published in News24, Collen Dlamini makes the point that a recent and well-publicised EU Parliament ruling “holds tech giants responsible for compensating content creators and for removing copyright-violating posts, a powerful blow for the rights of creators against unfair exploitation of their work by multinational corporations.” Yet, in South Africa, legislation that “is poised to give the tech giants unprecedented rights to exploit copyrighted works without payment” is being “rushed through Parliament thanks to the advocacy of tech giants like Google.”

A full exposition of the proposed changes will take far too long. But we’ll briefly discuss some of the proposed changes:

  • the Bill clarifies that there is no copyright in ideas, mathematical concepts or interface specifications.
  • it makes changes to the provisions regarding the ownership of works that have been commissioned.
  • it makes provision for the licensing of so-called “orphan works”, in other words, works where the owner cannot be identified or located.
  • it makes provision for authors of literary, musical, visual artistic and audio-visual works to get a share in royalties notwithstanding an assignment of their rights.
  • the Bill creates new rights such as resale royalty rights in the context of visual artistic works.
  • it creates new exceptions to copyright protection, such as fair use exceptions in the field of education and exceptions that allow access to works for people with disabilities.
  • it creates sanctions for the abuse of digital rights management measures that are built into copies of works.
  • on an administrative level, the Bill provides for the accreditation and control of collecting societies, and it deals in great detail with the Copyright Tribunal.

The Bill does many things, but one thing it doesn’t do is change section 15(3). So, South African copyright law will not change the law as regards copyright in three-dimensional industrial articles. It’s down to trade marks, designs and possibly even common law rights such as unlawful competition.