Merlene Engelbrecht, attorney at Spoor & Fisher South Africa, outlines important things that advertising and marketing professionals need to know about copyright.
In South Africa, we don’t recognise ‘look and feel’, as the subject of copyright. It’s about originality. So when it comes to infringement, it’s not a question of ‘how much’ is copied. It’s a question of quality; of whether or not something is identifiable. So how do we apply copyright to creative material and assess copyright infringement?
Copyright is not registrable
In most countries, including South Africa, and unlike other forms of IP protection provided for by statute, it is not possible to register copyright (apart from films). Copyright exists automatically when a work is created, provided that the work is original and fits into a category recognised by the Copyright Act no. 98 of 1978 (‘the Act’).
These works include:
· Literary works (for example, novels, poems, tables and manuals).
· Artistic works (for example, photographs, paintings and drawings).
· Musical works (for example, music reduced to writing or musical notations preserved in a material form).
· Sound recordings.
· Cinematograph films.
· Broadcasts (for example, radio and television).
· Programme-carrying signals (for example, a signal being emitted and passing through a satellite).
· Published editions (i.e. the first print of a particular typographical arrangement of a literary or musical work).
· Computer programmes.
Again, the work must be original and not copied from another source. It must also exist in material form; that is, a physical or tangible product (written down, recorded, filmed, or captured electronically) must exist. The rights holder must also be a ‘qualified person’ which is defined as either a South African citizen or someone domiciled or resident in South Africa. In the case of a juristic person, a qualified person is one with a registered place of business in South Africa or a country that is a member of the Berne Convention.
To prove that you are the creator of an original work, you may need to:
· Show supporting evidence as to the progression of the work (early drafts, sketches, synopses, rough recordings, etc.).
· Ensure that your work is properly marked and dated.
· In the case of a joint venture, clearly stipulate, in writing, who will own what rights and what happens when someone exits the relationship.
Rights in a website
Let’s consider a website. Websites contain multiple elements that could be the subject of copyright: the code, the copy, the layout, etc. It is therefore essential to ensure that each original work (outsourced or otherwise) which forms part of the website is either assigned or licensed to the website owner.
The copyright owner enjoys two types of protection: protection of their economic rights, which allows them to derive financial reward from the use of their works by others, and protection of their moral rights, which protects non-economic interests.
Copyright grants the owner the exclusive right to do or to authorise others, by way of license or consent, to do certain acts in relation to that work for personal gain or profit.
These acts include:
· Reproduction in various forms, such as printed publication or sound recording.
· Public performance, such as in a play or musical work.
· Recording of the work.
· Broadcasting of the work, by radio, cable or satellite.
· Translation of the work into other languages.
· Adaptation of the work, such as a novel into a film screenplay.
Examples of widely recognised moral rights include the right to claim authorship and the right to oppose changes that could harm the rights holder’s reputation.
Who owns what?
Back to the website – what if a developer worked on the code, a writer worked on the copy, and a designer worked on the layout? Who owns the copyright? It’s either the person who makes or creates the work, the employer, the commissioner, or the person who exercises control over the making of the work, depending on the type of work and the circumstances under which the work was created. If, for example, an agency employee creates the work within the course and scope of his employment, the agency will be the owner of the copyright in that work.
‘The underlying philosophy or principle of copyright law,’ explained Dr Owen Dean in the Handbook of South African Copyright Law, ‘is to reward or compensate the author of a work for the utilisation or expenditure of [their] talents, time and effort in creating works… [as an] incentive for [them] to create more and better works.’
As a result, copyright law serves to protect the owner’s interests and to define and regulate the scope and operation of their monopoly in relation to their work. According to this definition, the author of a work is the person responsible for the creation of its material embodiment – not the person who conceived the idea.
Ownership of copyright does not automatically ‘follow the money’. You own what you create unless transferred in writing or by way of one of the few specific exceptions provided for in the Act. Even the copyright in a logo, which qualifies as an artistic work, belongs to the creator, which is usually the advertising agency, and not the client. This is so, even if the agency has been paid for the work. In cases where the client specifically wants to own the copyright, which is necessary for them to be able to enforce it, this transfer of ownership should be provided for in the design agreement or confirmed later by way of an assignment agreement, which agreement must be in writing and signed by the assignor.
Third-party content
In addition to creating original content, incorporating third-party materials into advertising is also common amongst advertisers.
It is therefore critical to ‘clear’ pre-existing third-party material – music, images or personalities – that you intend to use for advertising purposes, and to educate your team members, to make them aware of possible copyright implications.
Heads-up, agencies: obtain written permission, licences or assignments where needed and educate your employees so that they are aware of possible copyright implications of their work and others’ rights. It is particularly important to consider clearance issues in the period between pitch and publishing, to engage with your clients upfront, and to confirm whose responsibility it will be to have a formal clearance search conducted. Typically, licences are granted for specific periods and you may find yourself on the receiving side of a costly claim if, by way of example, a photograph of a model used in a specific campaign that ran for three months, is found to still be used once the license has expired. Problems may also arise if limited clearance is obtained – for example, if you’ve obtained permission to use photographs for a client pitch – but no additional clearance is obtained when the campaign goes public.
Associating a new product or service with a popular song or a well-known celebrity, for example, has proven to increase market penetration. We have all seen Roger Federer’s image that has been used to market Rolex, Mercedes Benz and others. In the absence of permission, an association may be regarded as false and misleading insofar as the public will be led to believe that there exists a connection or an endorsement by that person when that is not the case. In November 2020 Neil Young (‘Young’) filed a suit of copyright infringement against Donald J. Trump for President, Inc. (‘the Re-election Campaign’) for playing Young’s ‘Rockin’ in the Free World’ and ‘Devil’s Sidewalk’ songs at campaign rallies without a license to do so. Young’s lawyers stated that he ‘cannot allow his music to be used as a ‘theme song’ for a divisive, un-American campaign of ignorance and hate’. The suit was later dismissed by Young himself and was probably settled out of court, but no further information is available in this regard.
No permission needed
In some cases, permission to use content or material is not required; for example, if you’re using facts or ideas and not the author’s expression; if the material is in the public domain (also referred to as ‘commons’); if the copyright has expired; or if the content is covered by a limitation/exception under the law or ‘fair use’/‘fair dealing’.
Copyright subsistence in a work is of limited duration. Depending on the type of work, copyright usually subsists 50 years from the end of the year in which the author dies; or 50 years from the year in which the work was first made public or published. For example, the economic rights over Homer’s famous poem ‘The Odyssey’, have lapsed (it is estimated to have been composed near the end of the 8th Century BCE) and the work can be used without the need for authorisation or remuneration.
Be warned, however, that ‘in the public domain’ is not the same as ‘public’, so the fact that something is available on the internet does not mean that it is copyright-free. Public domain images are only those in which copyright has expired, or where the copyright owner has given very broad permissions to people to use it freely.
Handling copyright infringement
What if you believe that your work has been reproduced without your permission?
Firstly, properly documenting your copyright creation to ensure that you can prove ownership is paramount. This would include having correct clauses in your agreements with employees or independent contractors; keeping a record of which employees worked on what projects and created what content; what pre-existing content was considered (i.e. a mood board) before new works were created, etc. Often, proving ownership of copyright is harder than proving the copying.
Thereafter, after having carefully assessed whether or not the reproduction is an infringement of your copyright, try to identify the person responsible.
It is usually possible to bring a claim before a civil court for monetary compensation and also to prevent the continuation or repetition of the infringement. Before taking this step, however, it is advisable to send a formal notification to the alleged infringer, requesting that they stop the infringement and/or pay compensation. It is usually a good idea to appoint experts for professional advice.
SPOOR AND FISHER
https://spoor.com/
