Mbalenhle Madlala

49375156

LML4801

08 November 2023

SECTION A

Section 23 of the Act contains the provisions on copyright infringement. There are two

types of copyright infringement: direct infringement and indirect infringement.

Infringement is direct where the infringer commits any of the acts specifically designated

in the Act as acts, the doing of which, or the authorisation of which, in relation to the

particular category of work is the sole prerogative of the copyright owner (s 23(1)). An

infringement of copyright is indirect where the infringer, although not actually committing

any of the acts so designated, still knowingly does something to further the commission

of any of these acts (s 23(2) and (3)). copyright in effect gives the owner of copyright

in a work, the sole right to exploit the work commercially for a limited period. It

is as if the owner obtains a bundle of exclusive, overlapping rights. Actions by

outsiders which diminish these rights are regarded as infringements. Broadly

speaking, one can say that infringement takes place when there is either

unauthorised copying or unauthorised commercial exploitation of a work.

When infringement of copyright takes place by means of unauthorised copying,

there are two requirements that should be met. There must be

- actual copying

- of a substantial portion of the work

Actual copying does not mean that a precise replica (reproduction) of a work should
 be made. More commonly, lawsuits involve some use of the protected material in

which the protected material has been altered. Where a work is transformed in

such a manner that the original or substantial features of the original remain

recognisable, it is called either a reproduction or an adaptation, depending on how

the original was transformed. Both reproduction and adaptation are regarded as

actual copying.

Examples of reproduction would be where

(1) a literary work, a musical work or a broadcast is transformed into a CD or

cinematograph film

(2) an artistic work is converted from two dimensional form to three dimensional

form and vice versa

Examples of adaptation would be where

(1) a literary dramatic work is converted into a non-dramatic work and

vice versa

(2) a literary work is translated

1.1 (3) a literary work is converted into a comic strip

• Process:

o Step 1 = prove that patent was in full force and effect

o Step 2 = consider if Greenpen is entitled to sue for infringement

▪ s53(3) = only 2 parties are able to sue for patent infringement: licensee

and patentee i.e. parties with exclusive, non-exclusive or sole licenses

may not sue

▪ PA = does not define “infringement” i.e. look for exclusive rights held by

the patentee

• s45 of PA = patentee has right to exclude other persons from

making, using, exercising, disposing, offering to dispose or

importing the invention

o “Make” (Dana Corporation)

▪ Making patented article but not selling it =

infringement

▪ Making patented article + use for experimental

purposes = NO infringement

▪ Repairing / prolong the life of a patented article = NO

infringement

• As long as you do not make something new

thereof

o “Use”

▪ Innocent possession, purchase, storage or transport

of patented article = NO infringement

▪ Intention of person holding the patented article = NB

• Intention to use it later in commercial

transactions = infringement

• Example = are pharmaceutical companies

allowed to obtain regulatory approval to use

expires, they push the new product into the

market?

o Yes, but they may not stockpile the

article

The first one is the definition of ‘‘reproduction’’.

Secondly, the term ‘‘copy’’ is defined as a reproduction of a work and, in the case of a

literary, musical or artistic work, a cinematograph film or a computer program, also an

adaptation of the work

Thirdly, it is provided that, when the term ‘‘adaptation’’ is used in relation to:

(a) a literary work, [the term] includes —

a. in the case of a non-dramatic work, a version of the work in which it is

converted into a dramatic work;

II. an artistic work, [the term] includes a transformation of the work in such a manner

that the original or substantial features thereof remain recognizable;

III. a computer program [the term] includes

a. a version of the program in a programming language, code or notation

different from that of the program; or

b. a fixation of the program in or on a medium different from the medium of

fixation of the program.

To commit a direct infringement of copyright, the infringer does not need to know that he

or she is infringing copyright. Knowledge is therefore not a requirement for direct

infringement (it is, however, a requirement for indirect infringement).

enjoy copyright in his or her own work.

If we want to establish infringement through the reproduction or adaptation of a work, we

should prove that the copyright work had actually been copied. Whether there has been

copyright infringement in the form of reproduction or adaptation is a question of fact. This

question must be answered in two stages, one objective and the other subjective (Galago

Publishers v Erasmus (supra) at 280; Jacana Education (Pty) Ltd v Frandsen Publishers

(Pty) Ltd 1998 (2) SA 965 (SCA) at 972; Dexion Europe Ltd v Universal Storage Systems

(Pty) Ltd 2003 (1) SA 31 (SCA) at 36). We use the objective test to determine whether

there is an objective similarity between the copyright work and the alleged infringing

work, and the subjective test to determine whether there is a causal connection between

the two works (see Bosal Afrika (Pty) Ltd v Grapnel (Pty) Ltd & another 1985 (4) SA 882

(C) at 408B–C; Juta & Co Ltd & others v De Koker & others 1994 (3) SA 499 (T)).

To establish infringement, at least a substantial part of the work should have been

copied. This rule is based on the common-law maxim that the law does not concern itself

with trivia (de minimis non curat lex). It also seems to be implied by section 1(2A) that

any act performed in relation to an insubstantial part of a work does not fall under the

Act.

Distinguishing between direct and indirect infringement

the difference between direct and indirect infringement. One of the restricted acts in

respect of literary works is the reproduction of the work in any manner or form.

Accordingly, where a person makes a copy of the work without the consent of the

copyright owner, he commits an act of direct infringement. But if, instead of making a

copy of the work himself, he knowingly and without the consent of the copyright owner

imports into South Africa — and for purposes other than his own private or domestic use
— an infringing copy already in existence, he commits an act of indirect infringement

(see s 23(2)(a)). Similarly, it is an act of direct infringement to perform the work in public

without the consent of the copyright owner (see s 6(c)), but it is an act of indirect

infringement to permit a place of public entertainment to be used for the performance of

the work in public, if the person granting this permission knows that such performance

lacks the consent of the copyright owner (see s 23(3)).

1.2 The general rule is that the author of a work will also be the first owner of the copyright

(s 21(1)(a)). The term ‘‘author’’ is defined in section 1(1) as meaning, in relation to a

poem,as the person responsible for the poem . Copyright is the exclusive right of a

copyright owner to perform any of those acts listed in relation to each category of

works. Where a person performs any of these acts without the copyright owner’s

authorisation, such a person will infringe the copyright owner’s copyright directly,

therefore the WT’s use of use of excerpts from “The wonder of Ice” on their

WordTravel cooler bags amount to infringement of Poet X’s rights

The copyright in a published edition vests, in the copyright owner, the exclusive right

to make or to authorise the making of a reproduction of the edition in any manner (s

11A).

Reproduction, adaptation and publication are such exclusive rights. Students should

discuss whether the reproduction, adaptation and publication infringe copyright in the

diary. Students were also required to discuss the requirements for establishing

infringement as set out in paragraph, Where a person makes a copy of the work

without the consent of the copyright owner, he commits an act of direct infringement.
WT’s use of use of excerpts from “The wonder of Ice” on their WordTravel cooler

bags amount to infringement of Poet X’s rights.

2. Firstly WT, would have to understand Reproduction rights are an essential aspect

of copyright protection. They grant exclusive rights to the copyright holder,

ensuring that no one else can make copies of their original work without

permission. In the realm of copyright, reproduction refers to the act of creating

tangible copies of a work, whether it’s a book, artwork, or any other form of

creative expression.

To establish reproduction rights, certain conditions must be met.

• The user must not have directly copied the original work but arrived at their

own creation independently.

• The new work must be in a tangible form, fixed, and intelligible.

• The user’s work should not be substantially similar to the original, meaning it

should not closely resemble or imitate it.

distribution, public performance, or display. Simply creating a copy does not

automatically grant these additional rights.

By understanding reproduction rights, we can appreciate the significance of respecting

copyright laws and protecting the creative efforts of artists, authors, and creators.

Infringement of Reproduction Rights

Complete replication of the original work is not required for a violation of the reproduction

right to take place. The key factor is whether the copying is substantial and material in

nature. Even copying a significant portion of the work without authorisation can be

considered an infringement.

3. Section 15(3A) of the Copyright Act provides that, where a rights holder has

directly or indirectly produced and sold anywhere in the world three-dimensional

derivative articles of its protected work that "primarily have a utilitarian purpose"

and are made using an industrial process, reproductions by means of indirect

copying will not constitute infringement.

Reproduction rights refer to the exclusive rights granted to copyright holders to

control the duplication or copying of their creative works, however a statement

granting permission to reproduce copyrighted work would have to be issued to

Mike in order for him to escape liability, subject to certain restrictions of time and

scope and in exchange for payment to the copyright WT.

It is a specific kind of copyright registration license that gives the licensee

permission to duplicate protected content. If you manage a small business, you

someone else wants a license to use your original work, the same rules apply; if

you don’t grasp the terms and conditions of the license, you won’t be able to

comply with the licensing arrangement you want.

SECTION B: PATENTS

4. 20 year from 01 May 2021

5. A patent grants the patentee a monopoly that allows him or her to prohibit others

from manufacturing, using, exercising, disposing or offering to dispose of, or im

porting his or her patented invention.Thus, unless the Act expressly states other

wise, anyone who undertakes one of these acts without the authorization of the

patentee infringes the patent.The patentee has the right to enforce his or her pat

ent rights by bringing legal action against the infringer.The Act specifies the rem

edies that are available in infringement cases.

Let us examine the acts of infringement before discussing infringement.

• Making

- ‘‘Making’’ has the ordinary meaning, and includes fabrication,

production, and preparation, doing or performing an act.

The objectives of the person creating the patented article are critical.

According to Burrell (1999 South African Patent at par 5.5), creating a

patented product for sale, even if it is not sold later, is an act of

infringement, whereas making a patented piece merely for the purpose

of experimenting is not considered an act of infringement.

The ordinary meaning of the verb ‘‘to use’’ means to put into practice or

operation, to carry into action or effect. Note that innocent possession,

transport or storage do not constitute infringing acts but, for example,

the mere possession with clear evidence of an intention to use may

justify the grant of an interdict (see Burrell 1999 South African Patent at

par 5.7). Burrell notes that the use must be for the purpose for which it

was patented.

- Exercising

The phrase ''exercising'' has a broad definition that includes ''to put into

effect, to apply, to make use of''. The ideas stated above in relation to

''using'' also apply to ''exercising''. In patent law, the word is particularly

applicable to an art, technique, or system that is ''executed'' against a

machine, manufacture, composition of matter, or other physical

apparatus or means that is typically ''used,'' according to Burrell (par

5.8).

- Disposing of

The verb ''dispose'' implies to bestow, make over, dole out, or distribute

in its ordinary grammatical sense, and the word ''dispose of'' has a

matching meaning (see Burrell par 5.9). It should be noted that any loss

of physical possession (including letting, distributing, promoting,

- Offering to dispose of

The act of ‘‘offering to dispose of’’ was included to fulfil South Africa’s

compliance obligations under the TRIPS Agreement (see Intellectual

Property Laws Amendment Act 38 of 1997). This followed as in terms

of English law the exposure of a patented article for sale was an

infringement, although a mere offer for sale, unaccompanied by

possession, amounted only to a threat to infringe (see No-Fume Ltd v

Frank Pichford & Co Ltd (1935) 52 RPC 231 at 251–252).

The patent claims limit the monopoly imposed by the patent. The purpose of the claims

is to specify the scope of the patent's monopoly (Frank & Hirsch (Pty) Ltd v Rodi &

Wienenberger AG 1960 (3) SA 747 (A)). As a result, the court's first task is to evaluate

the nature and extent of the claimed invention.

6. The commissioner may grant compulsory licences for the exploitation of a

patented invention in two instances, namely dependent patents and abuse of

rights.

Section 55 addresses the issuance of obligatory licences for dependent patents.

If a patentee is unable to exploit his or her patent without violating an earlier patent

and is unable to get a licence under that patent, the patentee may apply to the

commissioner for a licence under that patent. The commissioner may then give
such a licence on whatever terms he sees fit, but it must always include the

requirement that the licence be used only to exploit the innovation covered by the

dependent patent

The commissioner may not grant such a licence unless

I. the invention claimed in the dependent patent involves an important

technical advance of considerable economic signifi- cance in relation to

the invention claimed in the earlier patent;

II. the proprietor of the dependent patent granted the proprietor of the

earlier patent on reasonable terms a cross-licence to use the invention

claimed in the dependent patent; and

III. the use authorised in respect of the earlier patent cannot be assigned

except with the assignment of the dependent patent.

Section 56 mandates forced licenses in cases of patent infringement. Let us first

define what constitutes an infringement of patent rights. Section 56(2) states that

patent rights are considered abused if —

a) The patented invention is not being worked on a commercial scale or to an

adequate extent in South Africa after the expiry of a period of four years

following the date of the patent application or three years following the date

of the patent application or three years following the date on which that

patent was sealed, whichever period last expires, and there is, in the

commissioner's opinion, no satisfactory reason for such non-work. (see

further Syntheta (Pty) Ltd (formerly Delta G Scientific (Pty) Ltd) v Janssen

Pharmaceutica NV 1999 (1) SA 85 (SCA) at 90);

b) he demand for the patented article in the Republic is not being met to an
 adequate extent and on reasonable terms;

c) by reason of the refusal of the patentee to grant a licence or licences upon

reasonable terms, the trade or industry or agriculture of the Republic or the

trade of any person or class of persons trading in the Republic, or the

establishment of any new trade or industry in the Republic, is being

prejudiced, and it is in the public interest that a licence or licences should

be granted (see further Syntheta (Pty) Ltd (formerly Delta G Scientific (Pty)

Ltd) v Janssen Pharmaceutica NV (supra) at 91); or

d) the demand in the Republic for the patented article is being met by

importation and the price charged by the patentee, his licensee or agent

for the patented article is excessive in relation to the price charged in

countries where the patented article is manufactured by, or under, licence

from the patentee or his predecessor or successor in title.

Application for a compulsory licence is made to the registrar. The patentee, or any other

person who appears from the register to be, Those who are interested in the patent may

object to the application (section 56(3)). An applicant for a compulsory licence under

section 56(2) must show that the patent is being abused based on the facts. Bald claims

and repeating the words of section 56(2) do not amount to declarations of truth from

which legal conclusions can be formed (Syntheta (Pty) Ltd v Janssen Pharmaceutica NV

1999 (1) SA 85 (SCA) at 89-90).

The commissioner analyzes the application on its merits and decides whether or not to

award a compulsory licence. Subject to the provisions of section 56(7), the commissioner

may impose restrictions on the award of a licence, including a prohibition on the licensee

importing any patented items into South Africa (section 56(4)). When determining the

terms under which a licence should be granted, the commissioner must consider all
 relevant facts, such as the risks to be faced by the licensee and the research and

development already performed by the patentee (section 56(7)). The licence must

contain a provision that, subject to adequate protection of the legitimate interests of the

licensee, the licence shall be terminated, on application by the patentee, if the

circumstances which led to its grant cease to exist and, in the commissioner’s opinion,

are unlikely to recur (s 56(4)).

The commissioner may amend or revoke any compulsory licence granted by him (s

56(9)).

Section 56 licenses are non-exclusive in nature. It cannot be transferred until the

business, or a portion of the company, in connection with which the licensing rights are

exercised, has been transferred (section 56(5)). Subject to the terms attached to the

award of the licence, the compulsory licensee has the same rights and obligations as

any other licensee under a patent.

7.1 Coolfibre is the inventor

• 7.2 Definition for REVOCATION = an application for revocation, if successful, cancels

a pending application for a patent

o A revocation may be brought on its own or as a counterclaim against an action

for infringement

• s61of PA = grounds for application for revocation

o Patentee is not a person entitled – under s27 – to apply for the patent

o Application for the patent is fraudulent

o Invention concerned is not patentable as per s25 (most common ground used)

▪ Lack of novelty or inventiveness

▪ Non-patentable invention

o Invention, as illustrated or exemplified in the complete specification, cannot be

performed or does not lead to results and advantages stated

o Complete specification concerned does not sufficiently describe, ascertain,

illustrate or exemplify the invention and the manner in which it is to be performed

▪ Partially valid specifications

• No relief may be claimed with a partially valid specification i.e. you

cannot proceed for an urgent interim interdict and would first have

to amend the specification which would – in all likelihood – result

in the urgency of the matter becoming moot (Deton Engineering)

o Application for patent should have been refused in terms of s36

▪ s36 of PA = if it appears to the registrar that the application is frivolous

because it claims anything obviously contrary to well-established natural

laws or is expected to encourage offensive or immoral behaviour, he shall

refuse the application

o (2) = an application for revocation shall be served on the patentee and lodged

with the registrar

• Requirements for person applying for revocation:

o You lawfully own the patent which is, too, lawful or was purchased from an

authorized person

o You lawfully own a license to the patent

The patent application is not new or novel

"CBD")32, which covers patents as well as TRIPs. South Africa enacted the National

Environmental Management Biodiversity Act (the "Biodiversity Act") to meet its

international commitments under the Convention.Importantly, the Biodiversity Act

defines bioprospecting as "any research on, or development or application of,

indigenous biological resources for commercial or industrial exploitation, including the

use for research or development of any information regarding any traditional uses of

indigenous biological resources by indigenous communities." The Biodiversity Act‟s

main objectives are to manage and conserve the biological diversity in South Africa

and to ensure that indigenous biological resources are used in a sustainable manner.

It also aims to combat biopiracy by establishing a fair and equitable distribution of

benefits gained from the bioprospecting of genetic material derived from indigenous

biological resources. According to Chapter 7 of the Biodiversity Act, a party must seek

a permit from the South African government before they can legally bio-prospect in

South Africa. In Chapter 6, the Act also states that if a patent is based on or derived

from traditional knowledge or an indigenous biological or genetic resource,

compensation must be paid to the owner of the traditional knowledge or the person

or community providing access to the indigenous biological or genetic resource.