Intellectual Property and Copyright Toolkit
Prepared by Beech Veltman Incorporated, 2022
Intellectual Property Rights
1. What is intellectual property?
Intellectual property (IP) relates to the ‘creations of the mind’. It is a tangible representation of intellectual creativity or intellectual activity, where legal rights are gained from that creativity or activity. IP comes in many forms, as given below.
2. What are the forms of intellectual property?
The key forms of intellectual property are:
a) Trade marks
b) Copyright
c) Registered designs
d) Patents
e) Plant breeders’ rights
f) Trade secrets
3. What are the distinctions between the forms of intellectual property?
a) Trade marks: Trade marks are marks (e.g., logos, headings, labels, signatures, names, containers) used to distinguish someone’s goods or services from another’s goods or services, in the course of trading. For example, the Coca-Cola mark distinguishes products from Pepsi, a similar product.
b) Copyright: A legal term used to describe the rights that creators have over their work(s). Works that are eligible for copyright protection include music, books, paintings, films, computer programs and technical drawings.
c) Registered designs: Registering a design protects the appearance of a product embodying the design, such as on clothing, handbags, textiles, clocks or jewellery. The holder of a registered design can exclude others from (1) making, (2) using, (3) importing or (4) disposing of any item that embodies the registered design.
d) Patents: A patent is a person’s exclusive right to an invention and excludes other people from exploiting their patented invention. This exclusive right lasts for a limited period, depending on the country that the patent is registered in (e.g. 20 years in South Africa). Each country prescribes its own patent laws.
e) Plant breeders’ rights (PBR): These protect new plant varieties. A PBR holder has the exclusive right to, among others, (1) produce/reproduce, (2) sell, (3) export, (4) import and (5) stock the new plant variety.
f) Trade secrets: Trade secrets are IP rights that are considered confidential and can be sold or licensed. An example is the secret formula for Coca-Cola.
4. No intellectual property rights in ideas
As a general rule, you cannot simply claim that you are the only person who thought of a particular idea or concept. Practical steps must be taken to turn the idea or concept into something tangible.
5. Territoriality
Generally speaking, intellectual property rights do not go beyond the country that they are granted (e.g., registered) in. So, if you have a registered trade mark in South Africa, it does not automatically mean that you have a registered trade mark or trade mark rights in Kenya, for example. There is an exception to this general rule: well-known trade marks can be recognised in countries where they were not registered.
6. FAQs on intellectual property rights
What does intellectual property mean in the context of art?
Art is ordinarily protected under the banner of copyright and registered designs.
What type of intellectual property protects artists’ works?
Copyright and registered designs
How does intellectual property protect the rights of artists?
Copyright: A legal term used to describe the rights that creators have over their work(s). Works that are eligible for copyright protection include music, books, paintings, films, computer programs, technical and drawings.
Registered designs: Protects the appearance of a product embodying the design, such as on clothing, handbags, textiles, clocks or jewellery. The holder of a registered design can exclude others from (1) making, (2) using, (3) importing, (4) disposing of any item that embodies the registered design.
Copyright 7. What is copyright and the Copyright Act?
In South Africa, copyright is an exclusive right granted by law that an author has over his or her exclusive work. The Copyright Act (No. 96 of 1978) governs copyright for a limited period.
8.
What is eligible for copyright?
In terms of Section 2 of the Copyright Act, the following works are eligible for copyright protection in South Africa:
a) Artistic works
b) Literary works
c) Musical works
d) Cinematograph films
e) Sound recordings
f) Broadcasts
g) Program-carrying signals
h) Published editions
9. FAQs on copyright
a) Can I get a free copyright?
Unlike other forms of intellectual property, copyright does not need to be registered in South Africa, except for cinematograph films. Copyright automatically subsists in certain works if they meet the following requirements:
i. The work falls within the following categories: Artistic works, literary works, musical works, cinematograph films, sound recordings, broadcasts, programcarrying signals, published editions and computer programs
ii. The work is considered to be ‘original’, meaning that the work must not have been copied from an already existing work and sufficient labour, skill and effort was expended by the author in creating the work
iii. The work is reduced to material form. For obvious reasons, this excludes program-carrying signals
iv. The author of the work is a ‘qualified person’, which means that the author (including a juristic person) must be:
• a South African citizen (or a body incorporated under the laws of South Africa), or
• domiciled (permanently based) or resident in South Africa, or
• domiciled in any of the countries where the operation of the Copyright Act extends.
b) What qualifies as a ‘literary work’ under the Copyright Act?
Examples of literary works include:
• Novels, stories and poetical works
• Dramatic works, stage directions, cinematograph film scenarios and broadcasting scripts
• Textbooks, biographies, essays and articles
• Letters, reports and memoranda
• Lectures, speeches and sermons
• Tables and compilations, including tables and compilations of data stored or embodied in a computer or a medium in conjunction with a computer, but does not include computer programs.
c) What are ‘artistic works’ under the Copyright Act?
Artistic works include the following:
• Paintings, drawings, engravings, sculptures and photographs
• Works of craftsmanship
• Works of architecture.
d) What exactly is copyright in the context of visual art?
Because visual art includes any creative art that is appreciated by sight, all categories of copyright mentioned in 8 above (except for program-carrying signals, sound recordings, broadcasts, musical works and computer programs) may qualify for copyright protection.
e) Can I copy a famous piece of art?
This will depend on whether copyright still subsists in the artwork. Please refer to the table in the next page.
f) In South Africa, how long is art protected by copyright? In South Africa, the duration of copyright protection will depend on the category of work:
CATEGORY OF WORK DURATION
Literary works
Musical works
Artistic works (excluding photographs)
For the life of the author and 50 years from the end of the year in which she or he dies
Photographs
Cinematograph films
Computer programs
Literary works
Musical works
Program-carrying signals
50 years from the end of the year in which the work is legally made available to the public or is first published, whichever term is longer
50 years from the end of the year in which the broadcast first takes place
50 years from the end of the year in which the signals are emitted to a satellite
Published editions
50 years from the end of the year in which the edition is first published
g) How can I keep my artwork from being copied?
Owners may put up a copyright notice to notify people that the work is the subject of copyright protection. This notice typically includes the use of the © symbol, accompanied by the owner’s name and year in which the work was created:
© NAME OF OWNER, 2022
h) How much artwork should be changed to avoid copyright infringement?
If artwork can be sufficiently linked to the original work, in whole or part, the copyright subsisting in that artwork may be infringed.
i) How can I protect the copyright subsisting in my work?
Unlike other forms of intellectual property, copyright does not need to be registered in South Africa, except for cinematograph films. Copyright automatically subsists in certain works if they meet the requirements below:
i. The work falls within the following categories: Artistic works, literary works, musical works, cinematograph films, sound recordings, broadcasts, program-carrying signals, published editions and computer programs
ii. The work is considered to be ‘original’, meaning that the work must not have been copied from an already existing work and sufficient labour, skill and effort was expended by the author in creating the work
iii. The work is reduced to material form; for obvious reasons, this excludes program-carrying signals
iv. The author of the work is a ‘qualified person’, which means that the author (including a juristic person) must be:
• a South African citizen (or a body incorporated under the laws of South Africa), or
• domiciled (permanently based) or resident in South Africa, or
• domiciled in any of the countries where the operation of the Copyright Act extends.
j) How do I use the © symbol to keep my artwork from being copied?
Owners may use a copyright notice to notify people that the work is the subject of copyright protection. This notice typically includes the use of the © symbol, accompanied by the owner’s name and year in which the work was created:
© NAME OF OWNER, 2022
k) What are the legal consequences if I infringe someone else’s copyright?
i. The owner of copyright in a work is entitled to institute copyright infringement proceedings out of the High Court.
ii. The owner may request the following remedies from the High Court: (1) an interdict prohibiting the conduct complained of,
(2) damages (which can be calculated on the basis of a reasonable royalty payable by a licensee), and (3) delivering up of the infringing copies.
iii. The Copyright Act also allows for criminal sanctions in certain instances.
l) How to avoid copyright infringement?
While it is almost impossible to completely protect work from being copied, with the exception of certain works that may be capable of being digitally encrypted and protected, authors should protect their works by using the © logo alongside their work.
m) What can I do if my copyright has been/is being infringed?
• The owner of copyright in a work is entitled to institute copyright infringement proceedings out of the High Court.
• The owner may request the following remedies from the High Court: (1) an interdict prohibiting the conduct complained of,
(2) damages (which can be calculated on the basis of a reasonable royalty payable by a licensee), and (3) delivering up of the infringing copies.
• The Copyright Act also allows for criminal sanctions in certain instances.
n) What is not protected by copyright in the arts?
Any work that does not fall within the categories listed below:
• Artistic works
• Literary works
• Musical works
• Cinematograph films
• Sound recordings
• Broadcasts
• Program-carrying signals
• Published editions
• Computer programs.
o) Is it permissible to imitate someone’s artistic style?
If artwork can be sufficiently linked to the original work, in whole or part, the copyright subsisting in that artwork may be infringed.
p) How can I tell if an image is free of copyright?
Fortunately, access to modern technology helps us to check whether an image enjoys copyright protection. A reverse search of the image should allow you to see where the image first appeared on the internet, and who the owner of
that image is. A reverse search can be done by uploading an image on Google Search.
q) Can you be sued for stealing someone else’s design?
The owner of copyright in a work is entitled to institute copyright infringement proceedings out of the High Court.
The owner may request the following remedies from the High Court: (1) an interdict prohibiting the conduct complained of, (2) damages (which can be calculated on the basis of a reasonable royalty payable by a licensee), and (3) delivering up of the infringing copies. The Copyright Act also allows for criminal sanctions in certain instances.
r) Is there copyright protection for nonfungible token (NFTs) and digital art? Digital art such as NFTs are considered ‘artistic works’ and are therefore capable of copyright protection.
s) How do I protect my NFT artwork?
In addition to using the © logo alongside the NFT, NFTs can be protected by:
• using both visible and invisible watermarks
• locking the NFT until payment of a fee/the licensing terms are agreed to
• holding a digital archive of NFT artwork and recording the date of creation of the NFT.
t) Can you be sued if you use someone else’s NFT?
The owner of copyright in a work is entitled to institute copyright infringement proceedings out of the High Court.
The owner may request the following remedies from the High Court: (1) an interdict prohibiting the conduct complained of, (2) damages (which can be calculated on the basis of a reasonable royalty payable by a licensee), and (3) delivering up of the infringing copies.
The Copyright Act also allows for criminal sanctions in certain
Trade marks
10.What is a trade mark and the Trade Marks Act?
Trade marks are marks (e.g., logos, headings, labels, signatures, names, containers) used to distinguish someone’s goods or services from another’s goods or services, in the course of trading.
11. What is eligible for trade mark protection?
a) Marks (anything capable of being represented graphically)
b) Devices (logos)
c) Names
d) Signatures
e) Words (including phrases, slogans, unique selling points and tag lines)
f) Letters
g) Shapes
h) Patterns
i) Colours
12. What is the relationship between trade mark rights and visual art?
In some instances, an artist may use a particular mark to distinguish their art from other people’s work. Over time, it functions as a trade mark.
13. How can I protect my trade mark?
a) Proprietors of unregistered trade marks are permitted to use the letters ™ alongside their trade mark.
b) The holder of registered trade mark rights is permitted to use the ® symbol alongside their trade mark.
c) It is a criminal offence to use the ® symbol with a trade mark that is not registered!
14. What are registered trade marks?
A trade mark that is registered under the Trade Marks Act. You can conduct a free trade mark search on the trade marks register, which is accessible from the CIPC’s website: https:// iponline.cipc.co.za/trade marks/ Search/FreeTMSearch.aspx
15. What are unregistered trade marks?
A trade mark that is not registered under the Trade Marks Act. These can include a domain name, business name, tag line or product name.
16. How are the ® and TM symbols used?
• Proprietors of unregistered trade marks are permitted to use the ™ alongside their trade mark.
• The holder of registered trade mark rights is permitted to use the ® symbol alongside their trade mark.
• It is a criminal offence to use the ® symbol alongside a trade mark that is not registered.
17. What constitutes trade mark infringement?
Using an identical or similar trade mark that belongs to someone else, without their authorisation.
18. How can I avoid trade mark infringement?
a) Assess whether the trade mark is
accompanied with a ® or ™ symbol alongside it.
b) Conduct a trade mark search on the trade marks register as stated in 14.
c) Seek help from an intellectual property lawyer.
19. What do I do if my trade mark has been/is being infringed?
a) Gather evidence: Collate evidence of the infringement. For example, establish the identity of the infringer (if possible), take photographs or screenshots, and note dates and times to establish the first instance of infringement. This will help your attorney to examine the facts to determine if an infringement has actually occurred, and to assess your merits in successfully instituting legal action against the infringer.
b) Issue a letter of demand: Typically, the first step to stop IP infringement is to send the infringing party a ‘cease and desist’ letter. However, this may not always be the best option for every case and your attorney will advise you on the best strategy.
c) Send a take-down notice: File a take-down notice with the internet service provider (ISP), in terms of Section 77 of the Electronic Communications and Transactions Act, No. 25 of 2002. This procedure is useful when the infringement is taking place on the internet. The take-down procedure notifies an ISP to remove unlawful content (i.e., content that infringes on one’s IP rights) from the website.
d) Litigate: If the above steps have not stopped the infringement from taking place, you may approach a court for relief. Where trade mark infringement amounts to a criminal offence, such as counterfeiting or copyright piracy, you may approach the authorities to investigate the matter.
e) Register your IP: The best line of defence against trade mark infringement is to register your trade mark. We highly recommend that you consult with an intellectual property law specialist to assist you with the application.
Commercialisation of IP
Like other forms of property, IP is a tradeable commercial tool. It can be sold, licensed, pledged as security and so forth.
IP can be commercialised in various ways:
• Selling your IP: This often involves an assignment (transfer of rights and obligations) from the seller to the purchaser, so that ownership of the IP passes on to the purchaser.
• Licensing your IP: If you want to retain ownership over your IP but want to allow third parties to use it for a fee (i.e., royalties or licensee fees), a licensing arrangement can be entered into between the owner of the IP (i.e., the licensor) and the party who will be paying to have certain rights of use of the IP (i.e., the licensee). There are two main types of licenses:
• Exclusive: An arrangement where no person other than the named licensee can use the IP licensed to it.
• Non-exclusive: An arrangement where more than one person (licensee) can use the IP licensed to it.
Useful websites
World Intellectual Property Organization:
https://www.wipo.int/portal/en/index.html
Free trade mark search (SA):
https://iponline.cipc.co.za/Trademarks/ Search/FreeTMSearch.aspx
Free IP search (EU):
https://euipo.europa.eu/eSearch/ Domain name search (SA):
https://coza.net.za/
Credits
Design: Lara Koseff
Photography:
Mahdi Bafande (pg: 47)
Jean Beller (pg: 50)
Fiona Bowden (pg: 12)
Maximilian Bruck (pg: 4)
Maria Krasnova (pg: 28)
Anne Kristin Euba (pg: 35)
Drew Dizzy Graham (pg: 36)
Kaleidico (pg: 44)
Lilzidesigns (pg: 8)
Josep Martins (pg: 3)
Brian Mcgowan (pg: 43)
Jacques Nel (pg: 19)
Ria (pg: 20)
Arno Senoner (pg: 39)
St James Studio (pg: 15)
Mike Von (pgs: 23, 40)
Fia Yang (pg: 32)
