Intellectual Property Law

INTELLECTUAL
PROPERTY LAW

George M. Kanja

The University of Zambia

© University of Zambia & George Mpundu Kanja 2006

ISBN 9982-03-042-6

Published by UNZA Press for

The School of Law
The University of Zambia
P.O. Box 32379
Lusaka
DEDICATION

To my parents Simon Ngosa Kanja (late) and Emelia Chiboshi

Kanja
CONTENTS

Acknowledgement ................................................................. (xvii)

Foreword............................................................................... (xviii)
List of Acronyms.................................................................... (xx)
List of Statutes....................................................................... (xxi)
Table of Cases ...................................................................... (xxii)

PART I: GENERAL OVERVIEW OF INTELLECTUAL

PROPERTY
Chapter One
Introduction ........................................................................... 1
Intellectual Property as ‘Property’ ......................................... 2
Types of Intellectual Property.................................................. 3
Law of Breach of Confidence ................................................ 8
Rationale and Justification for Intellectual Property .................. 8
Criticism of Intellectual Property Rights .................................. 10

PART II: COPYRIGHT AND RELATED RIGHTS

Chapter Two
Introduction to Copyright ................................................... 15
What is Copyright? ................................................................ 15
History of Copyright .............................................................. 17
Rationale of Copyright Protection ........................................... 20
Criticism to Copyright Protection ............................................ 23

Chapter Three
Related Rights .................................................................... 25
Introduction ........................................................................... 25
Types of Related Rights ......................................................... 26
Performers’ Rights ................................................................ 26
Phonogram Producers’ Rights ................................................ 27
Broadcasters’ Right ............................................................... 28
Film Producers’ Rights............................................................ 29
Publisher’s Rights .................................................................. 30

Chapter Four
Subsistence of Copyright ................................................... 31
Introduction ........................................................................... 31
Ideas/Expression Dichotomy .................................................. 31
Originality ............................................................................. 33
Protected Works .................................................................... 43
Literary Works ...................................................................... 43
Dramatic Works .................................................................... 46
Musical works ....................................................................... 47
Artistic Work ......................................................................... 47
Works of Artistic Craftsmanship ............................................. 48
Computer Programmes .......................................................... 48
Compilations .......................................................................... 49
Derivative Works.................................................................... 52
Sound Recordings .................................................................. 53
Films ..................................................................................... 53
Broadcasts ............................................................................ 54
Cable Programmes ................................................................ 54
Typographical Arrangements of Published Editions ................... 55
State Copyright ...................................................................... 56
Works That Violate Public Order ............................................ 56

Chapter Five
Protection Criteria .............................................................. 61
Introduction ........................................................................... 61
Criterion of Form ................................................................... 61
Criterion of Content ............................................................... 66
Criterion of Status .................................................................. 71
Qualification by Reference to the Author ................................. 72
Qualification by Reference to the Country of First Publication
or Transmission .................................................................. 72
Formalities ............................................................................ 74

Chapter Six
Authorship and Ownership of Copyright ............................ 75
Introduction ........................................................................... 75
Authorship ............................................................................. 75
Anonymous or Unknown Authorship ....................................... 78
Joint Authorship ..................................................................... 79
Ownership ............................................................................. 82
Employees’ Work ................................................................... 82
Commissioned Work .............................................................. 85
Joint Ownership ..................................................................... 87
Anonymous ........................................................................... 87
Term of Protection ................................................................. 87
Original Works ....................................................................... 88
Sound Recording .................................................................... 88
Films ..................................................................................... 88
Broadcasts and Cable Programmes ......................................... 89
Typographical Arrangement of Published Editions .................... 89
Special Cases ........................................................................ 89
Chapter Seven
Moral Rights ....................................................................... 91
Introduction ........................................................................... 91
Types of Moral Rights ............................................................ 92
(i) Paternity Right ............................................................. 92
(ii) Integrity Right .............................................................. 93
(iii) False Attribution of a Work ............................................ 97
(iv) Right to Privacy in Relation to Photographs and Films ..... 97
(v) Divulgation Right .......................................................... 98
(vi) Retraction Right ............................................................ 99
Joint Authors .......................................................................... 99
Duration and Transmission on Death ........................................ 99
Waiver ................................................................................... 100
Remedies ............................................................................... 101

Chapter Eight
Economic Rights ................................................................. 103
Introduction ............................................................................ 103
Types of Economic Rights ....................................................... 103
(i) Reproduction Right ..................................................... 103
(ii) Translation Right ........................................................ 104
(iii) Adaptation Right ........................................................ 107
(iv) Public Performance Right ........................................... 108
(v) Communication Right .................................................. 111
(vi) Broadcasting Right ..................................................... 114
(vii) Distribution Right ........................................................ 115
(viii) Rental Right ............................................................... 116
(ix) Right of Display ......................................................... 117
(x) Right of Resale (Droit de suite) .................................. 117

Chapter Nine
Dealing in Copyright ........................................................... 119
Introduction ............................................................................ 119
Assignment of Copyright ......................................................... 120
Licensing of Copyright ............................................................ 122
Distinction Between Assignments and Licences ....................... 123
New Forms of Exploitation ...................................................... 124
Collecting Societies ................................................................. 125
Introduction ............................................................................ 125
Historical Background ............................................................. 126
Legislative Framework ............................................................ 127
Compulsory Licences .............................................................. 128
Copyright Registration ............................................................. 129
Registrar of Copyright ............................................................. 131
Dispute Settlement .................................................................. 131

Chapter Ten
Copyright Infringement ....................................................... 133
Introduction ............................................................................ 133
Acts Restricted by Copyright ................................................... 133
Misappropriation ..................................................................... 134
Causal Link or Connection ....................................................... 134
Subconscious Copying and Intention of the Infringer .................. 139
Indirect Copying ...................................................................... 143
Substantial Copying ................................................................. 143
Copying of Various Categories of Work .................................... 149
Original Literary, Dramatic, Musical and Artistic Works ............. 149
Films, Sound Recordings, Broadcasts and Cable Programmes .... 157
Typographical Arrangements of Published Editions .................... 158
Issuing Copies to the Public ..................................................... 159
Public Performance of the Work, Showing or Playing the
Work in Public ..................................................................... 160
Broadcasting and Including in a Cable Programme Service ........ 165
Making an Adaptation ............................................................. 165
Rental and Lending of the Work to the Public ........................... 166
Secondary Infringement .......................................................... 166

Chapter Eleven
Defences to Copyright Infringement ................................... 169
Introduction ............................................................................ 169
Consent of Copyright Owner ................................................... 169
Public Interest ........................................................................ 173
Fair Dealing ........................................................................... 179
Private Study and Research ..................................................... 181
Criticism and Review .............................................................. 182
Reporting Current Events ........................................................ 184
Incidental Inclusion .................................................................. 184
Judicial Proceedings ................................................................ 185
Educational Use ...................................................................... 185
Instruction and Examination ..................................................... 185
Performance, Playing or Showing a Work ................................. 186
Libraries and Archives ............................................................. 186
Computer Programme ............................................................. 186
Broadcast or Cable Programme ............................................... 186
Chapter Twelve
Enforcement and Remedies ................................................. 187
Introduction ............................................................................. 187
Conservatory or Provisional Measures ...................................... 188
Civil Remedies ........................................................................ 192
Damages ................................................................................ 193
Punitive or Exemplary Damages ............................................... 194
Injunctions ............................................................................... 195
Accounts (of profits) ................................................................ 198
Delivery up ............................................................................. 198
Presumptions ........................................................................... 198
Criminal Offences ................................................................... 200
Border Measures .................................................................... 203

Chapter Thirteen
Rights in Performances ........................................................ 205
Introduction ............................................................................. 205
Subsistence of Rights in Performance ....................................... 206
Qualification Requirement ........................................................ 207
Nature of Performer’s Rights ................................................... 207
Rights Granted to Performers ................................................... 207
Infringement ........................................................................... 209
Criminal Offences ................................................................... 210
Defences Against Alleged Infringement .................................... 211

PART III: PATENTS

Chapter Fourteen
Background and Basic Principles ........................................ 215
Introduction ............................................................................. 215
History of Patents ................................................................... 216
Rationale of Patents ................................................................ 218

Chapter Fifteen
Subject Matter and Conditions of Patentability ................... 223
Introduction ............................................................................. 223
Novelty ................................................................................... 223
Availability to the Public ........................................................... 224
Disclosure ............................................................................... 227
Exceptions .............................................................................. 229
Inventive Step ......................................................................... 230
Industrial Application ............................................................... 235
Patentable Subject Matter ........................................................ 235
Chapter Sixteen
Patent Application Process ................................................... 245
Introduction ............................................................................. 245
Right to Apply for a Patent ....................................................... 245
Application for a Patent ........................................................... 246
Patent Specification ................................................................. 246
Claims .................................................................................... 248
Abstract .................................................................................. 251
Priority Date ............................................................................ 251
Convention Applications............................................................ 252
Publication, Examination and Search ......................................... 253
Publication .............................................................................. 253
Preliminary Examination and Search ......................................... 253
Substantative Examination ........................................................ 254
Opposition to Grant of Patent ................................................... 254
Secrecy of Inventions for Defence Purposes ............................. 256
Grant and Term of Patent ......................................................... 258
Extension of Patent .................................................................. 258
Rights Granted ......................................................................... 259
Patents of Addition ................................................................... 259
Patents after Grant and Amendment ......................................... 260
Amendment by Registrar ......................................................... 261
Amendment by Court ............................................................... 261
Renewal and Restoration .......................................................... 262
Surrender of Patents ................................................................ 263
Revocation of Patents .............................................................. 263

Chapter Seventeen
Ownership and Dealings in Patents ..................................... 267
Ownership .............................................................................. 267
Co-ownership ......................................................................... 267
Employees’ Inventions ............................................................. 268
Disputes of Employees’ Invention ............................................. 271
Dealings .................................................................................. 271
Assignment ............................................................................. 272
Licences of Right .................................................................... 272
Compulsory Licenses ............................................................... 274
Grounds for Compulsory Licence in Case of Abuse of Patent ..... 276
Grant of Compulsory Licences in the Public Interest .................. 277
State use of Patents ................................................................. 278
Disputes of State use of Patents ............................................... 280
Inventions Relating to Food and Medicine .................................. 280
Compulsory Licences Under the Trips Agreement ...................... 281
Exclusive Licence ................................................................... 283
Restrictions on Contracts ......................................................... 284

Chapter Eighteen
Infringements, Defences and Remedies ............................ 287
Infringement ........................................................................... 287
Elements of Infringement ........................................................ 288
Proceedings for Infringement .................................................. 291
Defences ............................................................................... 292
Groundless Threats of Infringement Proceedings ...................... 293
Remedies ............................................................................... 294
Civil Sanctions ........................................................................ 294

PART IV: DESIGNS

Chapter Nineteen
Background and Basic Principles ....................................... 299
Introduction ............................................................................ 299
History of Designs .................................................................. 299
Rationale of Designs ............................................................... 301

Chapter Twenty
Subject Matter and Conditions of Protection ..................... 303
Introduction ............................................................................ 303
Requirements for Registration ................................................. 303
Features ................................................................................. 304
Novelty .................................................................................. 304
Application by Industrial Process ............................................. 305
Eye Appeal ............................................................................ 305
Exceptions to Registration ....................................................... 306

Chapter Twenty-One
Design Registration ............................................................. 309
Application for Registration ..................................................... 309
Convention Applications .......................................................... 310
Publication ............................................................................. 311
Secrecy of Designs ................................................................. 311
Rights of the Proprietor ........................................................... 312
Term of Protection .................................................................. 312
Corrections and Rectification ................................................... 313
Cancellation ............................................................................ 313
Chapter Twenty-Two
Ownership and Dealings In Designs ................................... 315
Ownership .............................................................................. 315
Dealings ................................................................................. 315
Assignment ............................................................................ 316
Exclusive Licence ................................................................... 316
Compulsory Licence ............................................................... 317
Use of Registerd Design for Services of the State ..................... 318
Disputes as to State use of Design ........................................... 319

Chapter Twenty-Three
Infringement, Defences and Remedies ............................... 321
Infringement ........................................................................... 321
Defences ............................................................................... 321
Groundless Threats of Infringement Proceedings ...................... 321
Remedies ............................................................................... 322
Civil Sanctions ........................................................................ 322
Criminal Sanctions .................................................................. 323

PART V: TRADE MARKS

Chapter Twenty-four
Background and Basic Principles ....................................... 327
Introduction ............................................................................ 327
History of Trade Marks ........................................................... 329
Rationale of Trade Marks ........................................................ 330
Other Types of Trade Marks ................................................... 332
Trade Names .......................................................................... 334

Chapter Twenty-Five
Subject Matter and Conditions of Protection ...................... 335
Introduction ............................................................................ 335
Signs ...................................................................................... 335
Protection Criteria ................................................................... 337
Use of Trade Mark ................................................................. 338

Chapter Twenty-Six
Trademark Registration ...................................................... 341
Introduction ............................................................................ 341
Registrable Trade Marks ......................................................... 341
Unregistrable Trade Marks ...................................................... 342
Absolute Grounds for Refusal .................................................. 342
Relative Grounds for Refusal of Registration ............................. 346
Registration Process ................................................................ 348
Aplication for Registration ........................................................ 349
Examination ............................................................................ 350
Publication .............................................................................. 353
Opposition ............................................................................... 354
Registration ............................................................................. 354
Duration and Renewal ............................................................. 355
Revocation, Invalidity, Alteration and Rectification ..................... 355
Revocation .............................................................................. 355
Invalidity ................................................................................. 357
Alteration ................................................................................ 357
Rectification ............................................................................ 357
Registration Subject to Disclaimer ............................................. 358
Registered Users and Permitted Use ........................................ 359
Associated Trade Marks .......................................................... 360
Certification Trade Marks ........................................................ 361
Well-known Trade Marks ......................................................... 362
Paris Convention Trade Marks ................................................. 365
Trade Mark Agents .................................................................. 365
Offences ................................................................................. 366

Chapter Twenty-Seven
Dealings in Trade Marks ...................................................... 369
Rights Conferred by Trade Marks ............................................ 369
Assignment ............................................................................. 370
Trade Mark Licensing .............................................................. 371
Franchising .............................................................................. 372

Chapter Twenty-Eight
Infringement, Defences And Remedies ............................... 375
Infringement ............................................................................ 375
Defences ................................................................................ 378
Remedies ................................................................................ 381
Offences ................................................................................. 382
Trade Marks and Internet Domain Names ................................. 383

Chapter Twenty-Nine
Passing Off ............................................................................ 387
Introduction ............................................................................. 387
Basic Requirements for a Passing Off Action ............................ 388
Goodwill .................................................................................. 390
Misrepresentation .................................................................... 396
Damage .................................................................................. 400
Remedies ................................................................................ 402
Malicious Falsehood ................................................................. 403

PART VI: LAW BREACH OF CONFIDENCE

Chapter Thirty
Confidential Information ....................................................... 407
Introduction ............................................................................. 407
Historical Development ............................................................ 407
Elements of the Breach of Confidence ...................................... 411
Confidential Quality .................................................................. 412
Trade Secrets .......................................................................... 413
Government Secrets ................................................................. 414
Personal Information ................................................................ 415
Confidential Obligation ............................................................. 416
Fiduciary Relationships ............................................................. 416
Contractual Relationships ......................................................... 417
Employer/Employee Relationship .............................................. 417
Former Employee’s Obligations ................................................. 419
Third Party Relationship ........................................................... 420
Unauthorised use of Confidential Information ............................ 421
Remedies ................................................................................ 423
Injunctions ............................................................................... 423
Damages ................................................................................. 424
Accounts of Profits .................................................................. 424
Delivery up and Destruction of Articles ..................................... 425
Public Interest Defence ............................................................ 425
Bibliography ............................................................................ 429
Index ..................................................................................... 431

xvi
ACKNOWLEDGMENTS

The author would like to sincerely thank all those who have contributed
directly or indirectly to the publication of this book. I am particularly
indebted to Professor Alfred Chanda, Professor Carlson Anyangwe, Mr
Patrick Matibini and Mr Mumba Malila of the University of Zambia School
of Law, and Dr Mpazi Sinjela, Dean of WIPO Worldwide Academy for
reviewing the manuscript and their invaluable comments, suggestions
and criticisms that helped improve the structure and contents of the work.
I also wish to extend my thanks to the following people, namely, Sandra
Ndemanga, a former law student, for research into most of the cases
cited in this book. Fadah Lungu for typing the draft of the manuscript
despite her busy schedule. Lastly I wish to thank Swedish International
Development Agency (SIDA) for financing the publication of this book.

George Mpundu Kanja

March 2006

xvii
FOREWORD

Many developing countries attained their independence around the same

period of time. Some of these countries have made, since then, giant
leaps and bounds in their national development. Other countries have,
on the other hand, fallen far behind; even losing the small development
gains made a few years following the advent of their independence.
Due to the high levels of poverty; absence of employment, a lack of
educational opportunities, absence of good health care, an abundance of
hunger and a lack of good infrastructure, these countries have become
harbingers of disease, such as malaria, tuberculosis and HIV/AIDS. Yet
some of these diseases are preventable or even curable, but thousands
of people die each year due to lack of good health care and other associated
problems.
How can these countries defeat poverty and be on the road to national
development? What tools do they need to use to allow them to compete
at the world markets? Can intellectual property play a role in the
development process of these countries? Why should intellectual property
be taught in universities and other schools of higher learning?
Intellectual property for some, is an alien concept, while for others,
intellectual property is well known and developed. These countries have
been able to use their power and to fully exploit it to harness and generate
wealth for national development. Due to a lack of knowledge regarding
the importance of intellectual property as a tool for national development,
the subject is hardly taught in universities but only in law schools as an
option subject. Yet intellectual property has relevance to all disciplines;
law, economics, business, engineering, sciences, including biochemistry
and biotechnological, etc.
Every student ought to study intellectual property to know how to
protect various works and creations for the well being of national
enterprises. For some students, specialisation in intellectual property
could provide an opportunity to work in an intellectual property related
industry or profession. For example, this could be as a patent or trademark
owner, lecturer in a university, examiner in an intellectual property office,
or technology transfer specialist in a research and development (R & D)
institution. Such job opportunities could even be as an IP expert in an
international or regional organisation dealing with the complex issues
involved in the international or regional promotion and protection of
intellectual property.
More importantly, intellectual property can be used as a major tool for
national development. Its protection can ensure value added to indigenous

xviii
products and services, serve as an incentive to the nation’s talented
inventors and can assist the national products attain a competitive edge
in international trade.
To the uninitiated, intellectual property is, but a technical subject, which
is not within the grasp of a lay person. Yet, such pre-conceived notions
completely miss the point. Mr Kanja has disapproved this point by
presenting us with a book that is well written and easy to read, understand
and digest, even by a person not skilled in difficult legal jargon. His inclusion
and discussion of a select number of decided cases on various aspects of
intellectual property has greatly enriched the book. It will therefore find
great appeal to law students, legal practitioners, and anyone interested in
acquiring knowledge in intellectual property and how it is protected. Other
departments within the university system, such as engineering, natural
sciences, including agriculture, humanities, will all find great utility of the
book in its relevant aspects of intellectual property to those disciplines.
The book is an important contribution to the teaching of intellectual
property not only in Zambia, but in Africa and the world as a whole. In
particular, in Africa and the developing world, there is a dearth or shortage
of teaching material. The book will therefore serve as a good textbook
for students as well as for reference purposes by legal practitioners. It
will also facilitate the dissemination of knowledge and create awareness
in intellectual property among decision-makers and policy advisors who
need to know how intellectual property can be used as a tool for national
development.
I congratulate Mr Kanja for his immense contribution to the
development and promotion of intellectual property in Zambia and the
world through his highly scholarly work contained in this book. I know
that the book, due to its quality of scholarship will find great utility in
universities, among legal practitioners, decision-makers and policy
advisers, the business community and anyone who has an interest in the
promotion of the protection of intellectual property.

Dr Mpazi Sinjela, LLB (Zambia), LLM, JSD (Yale)

Professor of Intellectual Property Law and Dean WIPO Worldwide

Academy, Geneva, Switzerland

xix
LIST OF ACRONYMS

AC Appeal Cases
All ER All England Reports
ARIPO African Regional Industrial Property Organisation
B&C Barnewall & Cressell’s King’s Bench
Beav Beavon’s Reports
CA Court of Appeal
Ch Chancery
Ch.App Court of Appeal in Chancery
Ch. D Chancery Division
CD compact disc
DVD digital versatile disc
EIPR European Intellectual Property Review
EWCA Civ Court of Appeal, Civil Division (England and Wales)
F Federal Report (US)
FSR Fleet Street Reports
HC High Court
KB King’s Bench
LT Law Times Reports
QB Queen’s Bench
QBD Queen’s Bench Division
RPC Reports of Patents, Designs and Trade Mark Cases
Russ & M Russell and Mylne’s Chancery Reports
SI Statutory Instrument
SC Supreme Court
TLR Times Law Reports
TRIPS Trade Related Aspects of Intellectual Property Rights
HL House of Lords
UK United Kingdom of Great Britain and Northern Ireland
US United States
USC United States Code
USPTO United States Patent and Trade Mark Office
USPQ United States Patenpts Quarterly
WLR Weekly Law Reports
UNZA University of Zambia
WIPO World Intellectual Property Organisation
ZR Zambia Law Report

xx
LIST OF STATUTES

English Law (Extent of Application) Act, Cap 11 216

Copyright and Performances Rights Act, Cap 406 20
Registered Designs Act, Cap 402 297, 299, 301
Patents Act, Cap 400 245
Trade Marks Act, Cap 401 325, 328, 332
Defamation Act, Cap 68
Penal Code, Cap 56
State Security Act, Cap 111 410

INTERNATIONAL INSTRUMENTS

Berne Convention for the Protection of Literary and Artistic Works 19,
114, 128
Paris Convention for the Protection of Industrial Property 218, 230,
252, 307, 308, 335
Patent Cooperation Treaty 230, 232, 245
Rome Convention 26, 27, 29, 127, 207
WIPO Copyright Treaty 113, 115, 116
Trade Related Aspects of Intellectual Property (TRIPS Agreement) 30,
66, 279

xxi
TABLE OF CASES

A&M Records Inc. v. Napster Inc. 154

A v. B 146
A.G. Spalding v. A.W. Gamage Ltd 397
AD 2000 Trademark
Alain Bernadin et Cie v. Pavilion Properties Ltd 388
American Screw Company’s Application
Amp Incorporation v. Utilux Pty Limited 303
Amway Corporation v. Eurway International Ltd 308
Anheuser-Busch v. Budejovicky Budvar 389
Antiquesportfolio.com v. Rodney Fitch & Co 143
Anton Piller AG v. Manufacturing Process Limited 188
Apple Computer, Inc. v. Mackintosh Computers Ltd 105, 150
Argyll v. Argyll 411, 416
Aristoc v. Rysta 346
Ashdown v. Telegraph Group Ltd 177, 184
Attorney-General v.. Guardian Newspapers Ltd 56, 176
Attorney-General v. Guardian Newspaper Ltd
Attorney-General v. Guardian Newspapers Ltd 176
Attorney-General v. Guardian Newspapers Ltd (No. 2) 416, 418
Attorney-General v. The Observer Ltd 411, 419
Baker v. Gibbons 412
Baker v. Selden 69
Banier v. News Group Newspapers Ltd 172
Baron v. Hooda 59
BBC v. Talbot Motor Co Ltd 387
Beloff v. Pressdram Ltd 173, 180
Biogen Incorporation v. Medeva Plc 241, 247, 250
Bishop v. Stevens 140
Bookmakers Afternoon Greyhound Services Ltd v. Wilf Gilbert
(Staffordshire) Ltd 39
Boosey and Hawkes v. Walt Disney Company 125
Bouvier v. Cassigneul 98
Bravado Merchandising Services Limited v. Mainstream Publishing
(Edinburgh) Limited 372
Bright Tunes Music Corp v. Harrisongs Music Ltd 139
British Leyland Motor Corp Ltd v. Armstrong Patents Co. Ltd 39
British Northrop Ltd v. Texteam Blackburn Ltd 35

xxii
British Oxygen Company Ltd v. Liquid Air Ltd 45
British Sugar Plc v. James Roberson and Sons 344, 373
British Sugar Plc v. James Robertson and Sons
British Telecommunications Plc and Others v. One in a Million and
Others 380
Brookes v. Leonard Payne 381
C.I.R. v. Muller & Co.’s Margarine Ltd 389
Cadbury Schweppes v. Pub Squash 396
Camoin v. Carco 98
Canadian Cable Television Association v. Canada Copyright Board
164
Catnic Components Limited v. Hill and Smith Limited 287, 288
CBS Songs Ltd v. Amstrad Consumer Electronics Plc 157
Chiron Corporation v. Organon Teknika Limited (No.10) 220
Claydon Architectural Metalwork Limited v. DJ Higgins and Sons
193
Coca Cola Trademark Applications
Coco v. AN Clark (Engineers) Ltd 407, 408, 419
Columbia Picture Industries v. Robinson 167
Columbia Pictures Industries, Inc. v. Aveco Inc. 163
Columbia Pictures Industries, Inc. v. Professional Real Estate
Investors Inc. 163
Community for Creative Non-Violence v. Reid 85
Compatibility Research Ltd v. Computer Psyche Co. Ltd 387
Cow (BP) and Company Limited v. Cannon Pty Limited 304
Dalrymples Application
DEMON ALE Trademark
Designer Guild Ltd v. Russell Williams (Textiles) Ltd 31
Designers Guild Ltd v. Russell Williams (Textiles) Ltd 67
Diamond, Commissioner of Patents and Trademarks v. Chakrabarty
236
Donoghue v. Allied Newspapers Ltd 32, 77
Donoghue v. Allied Newspapers Ltd
Electrolux Limited v. Hudson
Electrolux v. Hudson 268
Erven Warnik Besloten Vennootschap v. J. Townend and Sons (Hull)
Limited 384
Exchange Telegraph Co. v. Gregory & Co. 413
Express Newspapers Plc v. News (UK) Plc 63
Exxon Corporation v. Exxon Insurance Consultants International
Ltd 45
Exxon Corporation v. Exxon Insurance Consultants Ltd

xxiii
Faccenda Chcken Ltd v. Fowler 415
Falwell v. Penthouse International Ltd 63
Farman & Plantt Ltd v. I. Barget Ltd 412
Feist Publications Inc. v. Rural Telephone Service Co. Inc. 40, 49
Fomento v. Mentmore 225
Ford Motor Company Limited’s design applications
Francis, Day & Hunter v. Bron 136, 139
Franklin Mint Corp. v. National Wildlife Art Exchange Inc 135
Fraser v. Thames TV Ltd 416
Funk Brothers Seed Company v. Kalo Inoculant Company 237
Fylde Microsystems Ltd v. Key Radio Systems Ltd 80
G.A. Cramp & Sons Ltd v. Frank Smythson Ltd 39
Gartside v. Outram 421
General Tyre and Rubber Company v. Firestone Tyre and Rubber
Company Limited 227
General Tyre and Rubber v. Firestone Tyre and Rubber Company
292
George Hensher Ltd v. Restawhile Upholstery (Lancs) Ltd 48
Gillette U.K. Limited v. Edenwest Limited 397
Gould Estate v. Stoddart Publishing Co. Ltd 65
Greater Glasgow Health Board’s application
Grower v. British Broadcasting Corporation 209
H. Quennel Limited’s Application
Hager v. ECW Press Limited 144
Harris’ patent
Harrods Limited v. UK Network Services Limited and Others 380
Harvard Onco-Mouse
Harvard Onco-Mouse case
Hawkes & Son (London) Ltd v. Paramount Film Service Ltd 142
Hawkes & Son Ltd v Paramount Film Service Ltd
Hawkes & Sons (London) Ltd v. Paramount Film Service Ltd 145,
185
Hay v. Sloan 193
Hellewell v. Chief Constable of Derbyshire 423
Herbaman v. Jackel International Limited 233
Hivac Ltd v. Park Royal Scientific Instruments Ltd 414
Hoechst UK Ltd v. Chemiculture Ltd 418
Hoehling v. Universal City Studios Inc. 68
Hospital for sick children v. Walt Disney Productions Incorporation
125
Howard Florey/Relaxin
Hubbard v. Vosper 180
Hubbuck & Sons Ltd v. Wilkinson, Heywood & Clerk Ltd 399
xxiv
Hyde Park Residence Ltd v. Yelland 58, 173
Imperial Group Limited v. Phillip Morris and Company Limited
337, 343
Improver Corporation v. Remington Consumer Products Limited 288
Independent Television Publications Ltd v. Time-out Ltd 179
Interlego Ag v. Tyco Industries Incorporation 304
Interlego v. Tyco Industries 35
Jarvis v. A & M Records 146
Jennings v. Stephens 108, 110, 161, 206
John Khalil Khawan and Company v. K. Chellaram and Sons
(Nigeria) Ltd 321
John Maryon International Ltd v. New Brunswick Telephone Co.
Ltd 100
Johnathan Cape Limited v. Consolidated Press Limited 124
Kenrick & Co. v. Lawrence & Co. 77
L.B. (Plastics) Ltd v. Swish Products Ltd 40
Ladbroke (Football) Ltd v. William Hill (Football) Ltd 37, 144, 149
Lamson Industries Limited’s application
Lever v. Goodwin 421
Lion Laboratories Ltd v. Evans 174, 422
Lotus Development Corporation v. Borland International Inc. 70
Lux Traffic Signals v. Faronwise & Pike Signals 225
MacMillan v. Cooper 36
MAI Systems Corp. v. Peak Computers Inc. 151
Mail Newspapers Plc v. Express Newspapers Plc 98
Marcel v. Commissioner of Police of the Metropolis 423
Masterman’s Design
Maxim’s Ltd v Dye 387
Mellor v. Australia Broadcasting Commission 170
Merlet v. Mothercare 48
Merrell Dow Pharmaceuticals Incorporation v. HN Norton &
Company Limited 227
Mitchell Brothers Film Group v. Cinema Adult Theater 60
Monsanto Company (Brignac’s) Application 227
Moore v. News of the World Ltd 97
Mothercare (UK) Limited v. Penguin Books Limited 371
Mustad & Sons v. Dosen 408
National Football League v. McBee & Bruno’s Inc. 65
National Football League v. Primetime 24 Joint Venture 113
Netupsky v Dominion Bridge Co. Ltd 171
Newsgroup Limited v. Rocket Record Company Limited 372
Newspaper Licensing Agency Ltd v. Marks & Spencer Plc 158

xxv
Newspaper Licensing Agency Ltd v. Marks and Spencer Plc 55
NEXT Trademark
Noah v. Shuba 83
Oertli A.G. v. Bowman (London) Ltd 389
Pall Corporation v. Commercial Hydraulics (Bedford) Limited 227
Panhard et Levassor SA v. Panhard Levassor Motor Co. Ltd 387
Performing Right Society Limited v. London Theatre of Varieties
Limited 121
Performing Right Society Ltd v. Gillette Industries Ltd 208
Performing Right Society Ltd v. Harlequin Record Shops Ltd 162
Perry v. Truefitt 384
Peter Pan Manufacturing v. Corsets Silhouette 420
Pianotist Company’s Application
Plant Genetic Systems/Glutamine Synthetase Inhibitors
Plastics Ltd v. Swish Products Ltd 35
Poiret v. Jules Ltd 388
Pound Puppies Trademarks
Printers & Finishers v. Holloway 414
Prise de Parole Inc. v. Guerin, Editeur Ltee 95
Pro Sieben Media AG v. Carlton UK Television Ltd 141, 183
Profekta International Incorporation v. Lee 194
Queen Diana Trademark
R v. Department of Health
R v. Licensing Authority, ex parte Smith Kline & French Laboratories
Ltd
Radji v. Khakbaz 104
Rank Film Production Ltd v. Dodds 163
Ravescroft v. Herbert 147
Ray v. Classic FM plc 79
Re Elvis Presley Trademarks
Re H.N. Brock
Re Hallelujah Trademark
Re La Marquise Footwear Incorporation’s Application
Reckitt & Colman v. Borden 395
Reckitt and Colman Limited v. Borden Incorporation 385
Reckitt and Colman Products Limited v. Borden Incorporation 335
Reddaway v. Banham 392, 394
Robert v. BBC 423
Rosedale Manufacturers Limited v. Airfix Productions Limited 302
Rosemont Enterprises, Inc. v. Random, Inc. 68
Safemix Trademark
Salinger v. Random House Inc

xxvi
Saltman Engineering Co. Ltd v. Campbell Engineering Co. Ltd 405
Saltman v. Campbell 416
Scandecor Development AB v. Scandecor Marketing AB 386
Schroeder Music Publishing Company Limited v. Macaulay 121
Schulke & Mayr UK Ltd v. Alkapharm UK Ltd 399
Schweppes Ltd v. Wellingtons Ltd 149
Seager v. Copydex (No. 1) 417
Seager v. Copydex Ltd (No. 2) 420
Serie 5 Software Limited v. Phillip Clarke 197
Sheldon v. Metro-Goldwyn Pictures Corporation 198
Sheraton Corporation of America v. Sheraton Motels Ltd 388
Sillitoe et al. v. McGraw-Hill Book Co. Ltd 107, 166
Sillitoe v. McGraw-Hill Book Co. (UK) Ltd 182
Sillitoe v. McGraw-Hill Book Co. Ltd 181
Smith Kline and French Labs v. Sterling Winthrop Group Limited
333
Snow v. Eaton Centre Ltd 94, 96
Sony Corporation v. Universal City Studios, Inc. 156
Spalding and Brothers v. AW Gamage Limited 384
Spalding v. Gamage Ltd 394, 398
Spelling Goldberg Productions Inc. v. B.P.C. Publishing Ltd
Spencer Industries Pty Limited v. Anthony Collins 267
Springfield v. Thame 77
Stannard v. Reay
Star Industrial Company Limited v. Yap Kwee Kor 383
Stenor Limited v. Whitesides (Clitheroe) Limited 312
Stephenson Jordan & Harrison Ltd v. MacDonald 83
Stringfellow v. McCain Foods 398
Sutherland Publishing Company Limited v. Caxton Publishing
Company Limited 192
Taittinger, S. v. Allbev Ltd 396
TARZAN Trademark
Tate v. Fullbrook 47
Tele-Direct (Publications) Inc. v. America Business Information Inc.
42
Telstra Corporation Ltd v. Australasian Performing Right Association
Ltd 111
The Queen v. James Lorimer and Company Limited 196
Thermo Sensors Limited v. Hibben 190
Thomas Marshall (Exports) Ltd v. Guinle 409
Tidy v. Trustees of National History Museum 94
Tournier v. National Provincial & Union Bank of England 413

xxvii
Trade Kings Limited v. The Attorney-General 345, 350
Turner v. Performing Rights Society 109
Ty, Inc. v. GMA Accessories, Inc. 137
UMG Recordings Inc. v. MP3.COM, Inc. 152, 153
Unilever Limited’s Trademark
Unilever Plc’s Trademark
Universal Thermo Sensors Limited v. Hibben
University of London Press Ltd v. University Press Ltd 44
University of London Press Ltd v. University Tutorial Press Ltd 34,
35
University of London v. University Tutorial Press Ltd
W v. Egdell 422
Wagamama Limited v. City Centre Restaurants Plc 372
Walter v. Lane 45, 63, 77
Warner v. Gestetner 121
WHIRLPOOL Trade Mark
White v. Mellin 399, 400
William Bailey (Birmingham) Limited’s Application
William v. Nye 231
Windsurfing International Incorporation v. Tabur Marine (GB)
Limited 226
Windsurfing International Incorporation v. Tabur Marine (Great
Britain) Limited 233
Woodward v. Hutchins 422

xxviii
PART I: GENERAL OVERVIEW OF
INTELLECTUAL PROPERTY

xxix
 Chapter One

INTRODUCTION
Intellectual property is a term increasingly in use today, but is still little
understood. To many people it remains a mystery; some, obscure legal
concept of little relevance to everyday life.1 Nonetheless every activity
we do in our daily lives is in one way or another affected by intellectual
property. From the moment we wake up each morning, our lives are in
some way affected by the works, processes and products of intellectual
property.
The clothes we wear, the breakfast we eat, the newspapers which we
read, the news transmitted via satellite on our television, the car and
music on the radio as we commute to work, the correspondences, research
materials we come into contact with or refer to in the course of our study
or work, the computers, phones and the very office building or library in
which we spend most of our time, are all products of intellectual property,
as we shall see later.
Besides, many of the joys and activities of after office or school hours
equally emanate from the creativity of the human mind and are therefore
the subject of intellectual property: the movies, videos, television, cable
or radio programmes, music in the discotheques, the night clubs, bars,
the alcoholic beverages we drink, the exercise music and equipment in
the fitness centre; for others, the quiet joy of reading a book or magazine
or the excitement of surfing on the net all form part of intellectual property
creativity and protection. In case we are sick, the equipment used in
diagnosing our illness and the medicine used to treat us are all part of
intellectual property. And finally, as you lie down to sleep the designs of
your bed and beddings may well also be the subject for intellectual
property creation and protection.
Intellectual property is a term that refers to the legal rights which
result from intellectual creations in the industrial, scientific, literary and
artistic fields. Intellectual property comprises creations that result from
the mind, the human intellect.
The Convention Establishing the World Intellectual Property
Organisation (WIPO), concluded in Stockholm on 14 July 1967, defines
intellectual property to include rights relating to:
(i) literary, artistic and scientific works,
(ii) performances of performing artists, phonograms and broadcasts,
(iii) inventions in all fields of human endeavour,
1
Idris, K., Intellectual Property, A Powerful Tool for Economic Growth, WIPO Publication No. 888. p. 4
2 INTELLECTUAL PROPERTY LAW

(iv) scientific discoveries,

(v) industrial designs,
(vi) trademarks, service marks and commercial names and
designations,
(vii) protection against unfair competition; and all other rights resulting
from intellectual activity in the industrial, scientific, literary or
artistic fields.2
The above non-exhaustive definition of intellectual property is important
in that it allows member States of WIPO to add to the said list those
rights they may feel qualify to be protected as intellectual property rights.

Intellectual Property as ‘Property’

In order to appreciate and gain a fuller understanding of the term

‘intellectual property,’ it is useful to approach it in terms of the notion of
‘property’ in general. The most important feature of property is that the
owner of the property may use it as he wishes, and nobody else can
lawfully use his property without his authorisation. The owner of the
property may be a human being or a legal entity, such as a corporation.
Generally speaking one can classify property into three types. The
first type is property consisting of movable things, such as a car, a book
or furniture in a home. In our legal system this is known as ‘movable
property.’ No one except the owner of the car, book or furniture can use
these items of property. This legal right is referred to as ‘exclusive,’
because it gives the owner the ‘exclusive’ right to use his property.
Naturally, the proprietor may authorise others to use the property, but
without such authorisation, use by others is illegal.
The second type of property is immovable property, or as it is
sometimes known, real property. Land and things permanently fixed on
it, such as houses, are immovable property, as they cannot be lifted or
moved.
The third type of property is intellectual property, which protects the
creations of the human mind, the human intellect. This is why this kind
of property is called ‘intellectual’ property.3
Intellectual property establishes the property rights that give the owner
to do certain things in relation to the subject matter. For instance, if the
right is copyright and the subject matter is a piece of music, the owner of
the copyright has the exclusive right to make the copies of the sheet of
music and to control the performance of the music. In addition, the owner
also has the negative right to prevent others from doing certain things in
2
Article 2 (viii).
3
Collection of Documents on Intellectual Property compiled by WIPO Worldwide Academy, WIPO Publication
No. 782 (2003).
 INTRODUCTION 3

relation to the music such as playing it in pubs when he intended that it

should only be played in churches and homes when he wrote it. Like any
other type of property, intellectual property rights can be assigned,
mortgaged, licensed or transmitted under operation of the law.

Types of Intellectual Property

Intellectual property is traditionally divided into two branches, namely,

Copyright and Related Rights, and Industrial Property.
Literary, artistic and scientific works belong to the copyright branch
of intellectual property. Performances of performing artists, phonograms
and broadcasts are called ‘related rights,’ that is, rights related to or
neighbouring to copyright.
The industrial property branch of intellectual property covers
inventions and industrial designs. Inventions are new solutions to technical
problems, and industrial designs are aesthetic creations determining the
appearance of industrial products. Furthermore, industrial property
includes trademarks, service marks, commercial names and designations,
geographical indications (indications of source and appellations of origin),
and the protection against unfair competition.
Unlike the protection of inventions, copyright law protects only the
form of expressions of ideas, not the ideas themselves. The creativity
protected by copyright law is creativity in the choice and arrangement of
words, musical notes, colours, shapes etc. Copyright law protects the
rights of the owner in literary, musical, dramatic and artistic works against
those who ‘copy’ or otherwise take and use the form in which the original
work is expressed by the author.
Arising out of this basic difference between inventions and literary
and artistic works, the legal protection provided for each differs. Since
protection for inventions gives a monopoly right in the exploitation of
the idea, such protection is short in duration, normally twenty years,
though in Zambia it is sixteen years. The fact that the invention is protected
must also be made known to the public. There must be an official
notification that a specific, fully described invention is the property, for
a fixed number of years, of a specific owner. In other words, the protected
invention must be disclosed in an official register, open to the public and
the owner must ensure that his invention appears in the register.
By contrast, legal protection of literary and artistic works under
copyright prevents only unauthorised use of expressions of ideas. Without
protection under a patent, a person who has disclosed to the public an
idea cannot prevent third parties from using the idea. Therefore, the
duration of protection is often longer than in the case of protection of
ideas, without damage to public interest.
4 INTELLECTUAL PROPERTY LAW

Also, the law in most countries, like Zambia, grants the author of an
original work the right to prevent other persons from copying or otherwise
using his work. It is also important to note that under copyright, a public
register of works protected by copyright is not necessary, as copyright
works are automatically protected upon creation.
Another important feature of intellectual property is that it is in constant
evolution. The new advances in technology such as information
technology and biotechnology and changes in economic, social and
cultural conditions, necessitate continuous appraisal of the intellectual
property system and at times adjustment, expansion or extension. For
instance, the last few decades have seen the recognition of new forms of
intellectual property, such as a sui generis form of protection for plant
varieties (in the 1950s and 1960s), patent protection for biological
material, plants and animals (in the 1970s and 1980s), a sui generic form
of protection for layout designs (topographies) of integrated circuits
(1980), copyright protection for computer software (1980s) and protection
for databases and compilations of data (1980 and 1990s).4
It is also imperative to note that though intellectual property is divided
into two branches, more often than not a product or work of intellectual
property is protected by both branches of intellectual property or multiple
of intellectual property rights. A good example would be a mobile phone:
the innovative technical features are protected by a patent or series of
patents; the aesthetic design or the shape of the mobile phone is usually
protected as an industrial design; the brand used to market the mobile
phone is protected by trademark; and the ring tones or games on the
mobile phone are protected by copyright. In addition, the manufacturer
of the mobile phones may hold a number of trade secrets ranging from
their customer list, to some of the manufacturing processes or to other
confidential information that he would not want to disclose to its
competitors. The inventors of innovative products such as mobile phones,
can obtain exclusivity to use or prohibit others from using each of these
elements through intellectual property protection.

Copyright and Related Rights

Copyright is a right granted for the protection of original literary, dramatic,

musical and artistic works; and other works such as computer
programmes, compilations, sound recording, broadcasts and films, which
result from the author’s own intellectual creation. Copyright normally
vests, at least in the first instance, in the author of the work, unless it is
created by the employee in the course of employment.
4
Intellectual Property Needs and Expectations of Traditional Knowledge Holders: WIPO Report on Fact-
Finding Missions on Intellectual Property and Traditional Knowledge, (1998 - 1999). Geneva (April 2001),
p. 32.
 INTRODUCTION 5

The copyright owner has the exclusive right to prevent the unauthorised
reproduction, performance, broadcasting, translation and adaptation of
the work. These are known as ‘economic rights’. Apart from the economic
rights, the copyright owner is granted moral rights, which entitle him to
be identified as the author of the work and to object to any distortion,
mutilation or other modification of, or other derogatory treatment of his
work which would be prejudicial to his honour or reputation. Moral rights
cannot be assigned or licensed. The author always retains the moral rights.
For instance, if the owner sells his economic rights of a play to a theatre
company, the author still retains his right to have his name featured in the
playbill, despite the fact that he does not receive any of the proceeds of
the production.
As copyright protection arises automatically upon the work being
created provided it fulfills the criteria for copyright protection such as
the work being original, there is no need to apply for copyright registration.
It is also a requirement that for literary, dramatic, musical and artistic
works to be protected, they must be original and expressed in a fixed
form. Besides, copyright protection is not dependent on the literary, artistic
or musical quality of the work.
Copyright law protects the owner of the rights against those who use
the form in which his original form was expressed by the author or a
substantial part of that form. This exclusive right is however, tampered
with by certain exceptions; limitations and compulsory licenses such as
fair dealing provisions. Copyright work therefore, may be copied for the
personal and private use of the person who makes the reproduction.
Another example is the making of quotations from a protected work,
provided the source of the quotation, including the name of the author, is
mentioned and the extent of the quotation is compatible with fair practice.
The copyright protection, lasts for the life of the author, plus fifty years,
though some countries like the United Kingdom and the United States
have extended this term to seventy years.
Related rights also known as ‘neighbouring rights’ are rights that are
granted to persons who present creative works to the public but who are
not considered as creators of those works in their own right. Related
rights are granted to performers, phonogram and film producers,
broadcasting organisations and publishers. The purpose of related rights
is to protect the legal interests of certain persons and legal entities who
assist authors or creators to communicate their message and to disseminate
or make available their copyright works to the public. One notable
example is the singer or musician that performs a composer’s work to
the public. In addition related rights are intended to protect those people
or organisations that add substantial creative, technical or organisation
skill in the process of bringing a copyright work to the public.
6 INTELLECTUAL PROPERTY LAW

Patents
A patent is a right granted for the protection of an invention, which can
be either a product or process that offers a new technical solution to a
problem. To be protected by a patent, an invention must satisfy three
conditions, namely:
(a) It must be novel (new), that is, the invention must show some
new characteristic which is not known in the body of existing
knowledge in its technical field. This body of existing knowledge
is called the ‘prior art’;
(b) It must show an inventive step (non-obviousness), which could
not be obviously deduced by a person with average knowledge
of the relevant technical field; and
(c) It must be capable of industrial application (usefulness).
It must be noted that not all inventions are patentable. In order to be
eligible for patent protection, an invention must fall within the scope of
patentable subject matter. Examples of some of the inventions that have
been held not to fall within the patentable subject matter include
discoveries of materials or substance already existing in nature, scientific
theories or mathematical methods, methods for medical treatment of
human or animals or diagnostic methods practiced on humans or animals
(but not products for use in such methods).
A patent provides the owner with the exclusive right to use the
invention and to prevent others from using the patented invention without
the patent owner’s consent. Thus, the invention cannot be commercially
made, used, distributed, offered for sale, imported or sold without the
patent owner’s consent. A patent being a monopoly right is granted for
shorter duration as compared to copyright. The protection granted for
patents in Zambia is sixteen years though in most countries it is normally
twenty years. After that time, the knowledge becomes part of the public
domain for anybody to use or access. The patent owner is responsible
for enforcing his rights in the patent including detecting any infringement.
He can also bring legal action against those who infringe his patent rights.

Industrial Designs
An industrial design is the ornamental aspect of a useful article. It refers
only to the aesthetic aspects or outward appearance of a product.
Therefore, industrial design is only concerned with the appearance of the
product and must not be dictated solely or essentially by technical or
functional features or considerations. As a general rule, an industrial design
consists of the three-dimensional features, such as the shape of a product
or article, the two-dimensional features such as ornamentation, patterns
and lines or colour, or a combination of two or more of these.
 INTRODUCTION 7

Industrial designs are applied to a wide variety of mass produced as

well as individually crafted products; from technical and medical
instruments to watches, jewellery and other luxury items; from household
products, toys, furniture and electrical appliances to vehicles and
architectural structures; from textile designs, leisure goods to sports
equipment. Industrial design is also applied to product packaging and
containers.5 To be eligible for industrial property protection, the industrial
design must be original or novel and must be registered.

Trade marks
A trade mark is a sign which distinguishes the goods or services produced
or provided by one enterprise from those of another. Trade marks are
closely associated with business image, goodwill and reputation. Goods
or services are often requested by reference to a trade mark and the public
will rely on many marks as indicating quality, value for money or origin
of goods or services. The signs that may serve as trade marks include
words, letters, numerals, drawings, colours, pictures, shapes or devices,
labels or combinations of the above. In order to be protected, a trade
mark must fulfill two requirements, namely, first, it must be distinctive
or distinguishable among different products; and second, it must not
deceive or mislead the public, or be contrary to morality or public order.
Like a patent, a trade mark grants an exclusive right to use distinctive
signs, such as symbols, colours, letters, shapes or names to identify the
producer of a product, and protect its associated reputation. The period
of protection of a trade mark varies, but is usually seven years in Zambia
and ten years in some countries. Thereafter a trade mark can be renewed
indefinitely. The owner of the trade mark is responsible for enforcing his
trade mark and detecting any infringement as well as instituting legal
proceedings against those who infringe the trade mark.

Passing off
Passing off is a common law tort which can be used to enforce unregistered
trademark rights. Passing off is concerned with the protection of business
goodwill and reputation. Therefore, the law of passing off prevents one
person from misrepresenting his goods or services as being the goods or
services of the plaintiff, and also prevents one person from holding out
his goods or services as having some association or connection with the
plaintiff when it is not true. A cause of action for passing off is a form of
intellectual property enforcement against the unauthorised use of a mark

5
Secrets of Intellectual Property: A guide for small and medium-sized exporters; International Trade Centre
and WIPO. Geneva (2004), p. 45.
8 INTELLECTUAL PROPERTY LAW

which is considered to be similar to another party’s registered or

unregistered trademarks, especially where an action for trademark
infringement based on a registered mark is unlikely to be successful due
to the differences between the registered trade mark and unregistered
mark.
Passing off and trademark law deal with overlapping factual situations,
but deal with them in different ways. Passing off does not confer
monopoly rights to any marks or names. It does not recognise them as
property in their own right. Instead, the law of passing off is designed to
prevent misrepresentation to the public where there is some sort of
association between the plaintiff and the defendant. Where the defendant
does something so that the public is misled into thinking the activity is
associated with the plaintiff, and as a result the plaintiff suffers some
damage, under the law of passing off it may be possible for the plaintiff
to initiate action against the defendant.6

Law of Breach of Confidence

The law of breach of confidence has developed as a way of protecting
confidential information by preventing its use by persons to whom the
information has been divulged in confidence or the further disclosure of
such information by such persons. There are various types of information
that are protected which range from personal relationships, employees,
professional relationships, business and commerce, as well as industrial
or trade secrets. In the context of intellectual property, we are only
concerned with trade and industrial secrets.
Trade secrets are information of a business or technical nature that
have commercial value and have been kept confidential. They can include
secret processes, mixture of ingredients, recipes, know-how or any other
confidential information such as list of customers, which may give a
competitive edge or may otherwise be valuable. The main purpose of
the law of confidence is that it prevents a person making wrongful use of
information beyond the purpose for which it was disclosed to him. The
law of confidence, therefore, protects ideas and is a useful ally to other
intellectual property rights such as patents, often being the only form of
protection when the subject matter is still in early stages.

Rationale and Justification for Intellectual Property

There are a number of reasons that have been advanced to justify the
existence of intellectual property rights, and these include the following:

6
www.en.wikipedia.org.
 INTRODUCTION 9

(a) Creative Incentive

To develop or produce intellectual property products or works calls for

investment of money, skill and time. In order to encourage creators,
inventors or innovators to take a risk of investing their capital, skill and
time, they must be rewarded by being granted exclusive rights to control
the use or exploitation of their inventions, innovations, creations or works.
They must, therefore, be protected from free riders who might copy or
reproduce the inventions, innovation or work at minimal costs or no cost
at all.

(b) Reward for Labour

Intellectual property provides the means for the authors or inventors of

intellectual property products or works to obtain reward for the time,
skill, money and patience which they have invested in production of
intellectual property. The reward for labour is based on the participation
principle that allows the author or creator of a work to participate in all
economic benefits realised from the use of his work.

(c) Promotion of the Economy

Intellectual property encourages the publication and dissemination of

information and widens the store of available knowledge. For instance,
details of patents are published and are available for inspection. In due
course, when the patent expires, anyone is free to make the product or
use the process, as the case may be.

(d) Prevention of Piracy and Counterfeit

Piracy and counterfeit are a disincentive to the development and creation

of intellectual property products and works. It may also present a serious
danger to the public especially if the counterfeit goods are food, medicines
or cosmetic products or spare parts. Where intellectual property is weak
or not enforced so as to allow piracy and counterfeit to flourish, foreign
owners of intellectual property rights avoid investing in the country and
development of local industries is impeded. Furthermore, local intellectual
property owners or authorised dealers of intellectual property rights can
neither make a living from their work nor recoup their investment. Also
local markets are flooded with inferior illegitimate products and
technology is not incorporated in the country’s base and infrastructure.
Besides, government loses revenue as no taxes are paid where there is
rampant piracy and counterfeit.
10 INTELLECTUAL PROPERTY LAW

(e) Encourages Foreign Direct Investment

It is often argued that instituting a strong protection of intellectual property

will boost or attract foreign direct investment in those countries with
weaker intellectual property regime, especially developing countries.

Criticism of Intellectual Property Rights

There are a number of criticisms that have been advanced against the
intellectual property rights by different scholars. These include the
following:

(a) Abuse of Intellectual Property

The owner of an important item protected by intellectual property law

might be tempted to use his position to control a market to the
disadvantage of competitors and consumers alike. He can prevent or deter
potential competitors from developing products similar to his own and
he can charge a high price for the product under the guise of recouping
the money and time invested in developing the product, brand or creating
the work.7 Another way in which the owner of an intellectual property
can abuse his position is to threaten potential competitors with legal action.
In some cases the threats may be groundless, but the victim might be
prepared to cease the relevant activities or pay a royalty instead of risk
the court action and its associated costs. As litigation can be costly, this
may prevent the person threatened from challenging the validity of the
right concerned or otherwise defend the alleged infringement.

(b) Restrictions on Access to Works of the Mind

Intellectual property rights such as copyright, perpetuates unjustified

monopoly by denying the public access to information which should
otherwise be freely available. It also, through the royalty system, represents
a tax on knowledge and increases the price of the materials such as books
and music which are essential to the promotion of education and
dissemination of culture.

7
See, H. Mwakyembe and G.M. Kanja. Implications of the TRIPS Agreement on the Access to Cheaper
Pharmaceutical Drugs by Developing Countries: Case Study of South Africa v. The Pharmaceutical Companies,
Zambia Law Journal, Vol. 32 (2002), pp. 111 - 147.
 INTRODUCTION 11

(c) Intellectual Property Promotes the interests of the Developed

Countries

Intellectual property is a means used by developed countries, which are

the net exporters of patents, trademark, designs and copyright products,
to extract money from developing countries, which are the net importers
of the said intellectual property products or processes. This argument is
strengthened first by the trade threats and sanctions that have at one time
been imposed on some developing countries such as India and Brazil
(1988) which were considered to deny adequate and effective protection
of intellectual property rights of United States companies, in particular
pharmaceutical patents.8 Secondly, developed countries refuse to allow
traditional-based innovations or traditional knowledge from being
protected by intellectual property thereby denying income or royalties to
developing countries that may result from the exploitation of traditional
knowledge by the developed countries.

8
Under Special 301 the United States Trade Representative (USTR) is required annually to identify ‘priority
foreign countries’ which are trading partners with USA, which deny ‘adequate and effective protection of
intellectual property rights’ or which ‘deny fair and equitable market access’ to USA traders. The USTR is then
obliged to place those countries on its watch list or priority watch list, with a view to a fast track investigation,
followed by trade retaliation in the form of increased duties or import restrictions.
12 INTELLECTUAL PROPERTY LAW
 13

PART II: COPYRIGHT AND RELATED RIGHTS

14 INTELLECTUAL PROPERTY LAW
 15

Chapter Two

INTRODUCTION TO COPYRIGHT

What is copyright?

Like all fields of intellectual property, copyright is concerned with

protecting the work of human intellect. The domain of copyright is
concerned with the protection of literary, musical, dramatic and artistic
works. These include books, writings, music, works of fine arts, such as
paintings and sculptures and technology based works such as computer
programmes.
Copyright is a right granted for the protection of literary, dramatic,
musical and artistic works and other works resulting from the author’s
own intellectual creation. The Copyright and Performances Rights Act9
defines copyright as a property right which subsists in original literary,
musical, dramatic, artistic works and computer programmes;
compilations; audiovisual works; sound recordings; broadcasts; cable
programme; and typographical arrangements of published editions of
literary works. The owner of the copyright subsisting in a work has the
exclusive rights to do certain acts in relation to the work, such as making
a copy, broadcasting or selling copies to the public.
Similarly, the owner of the copyright work can control the exploitation
of the work, for instance, by making or selling copies to the public or by
giving permission to another person to do this in return for a payment.
For example, the owner of the copyright in a work of literature may
permit a publishing company to print and sell copies of the work in book
form in return for royalty payments; usually an agreed percentage of the
price the publisher obtains for the books.
If a person performs one of the acts restricted by copyright without
the permission or licence of the copyright owner, the latter can sue for
copyright infringement and obtain remedies such as damages, injunction
or seizure of the infringing copies. However, there are limitations the
copyright law places on the exclusive rights of the owner of the copyright,
such as fair dealing or fair use of the work. An example would be where
a person makes a single copy of a few pages of a book for the purpose of
private study or research.
While certain works of copyright such as literary, dramatic, musical
and artistic works are required to be original if they have to be protected,
works such as films, sound recording, broadcasts, cable programmes
9
Section 7, Cap 406 of the Laws of Zambia.
16 INTELLECTUAL PROPERTY LAW

and typographical arrangements, which are described as derivative or

entrepreneurial works, need not be original in order to qualify for
copyright protection.
Copyright law does not give rise to monopolies and it is permissible
for any person to produce a work that is similar to a pre-existing work, as
long as the later work is not taken from the first. It is possible to have two
persons independently produce identical works and each will be
considered to be the author of his work for copyright purposes. A good
example would be where two photographers take a photograph of the
University of Zambia Chancellor’s procession during graduation within
minutes of each other from the same spot using similar cameras, lenses
and films after selecting the same exposure times and aperture settings.
The two photographs might be indistinguishable from each other, but
copyright will, nevertheless, subsist in both photographs, separately. The
logical reason for this situation is that both photographers have used skill
and judgment independently in taking their photographs and both should
be able to prevent other persons from printing copies of their respective
photographs.10
Another important feature of copyright law is that it does not protect
ideas; it merely protects the expression of an idea. For example, Barbara
Cartland does not have a monopoly in romantic novels. Anyone else is
free to write a romantic novel since the concept of a romantic novel is an
idea and is not protected by copyright. However, writing a romantic novel
by taking parts of Barbara Cartland novel infringes copyright, because
the actual novel is the expression of the idea.11
Copyright does not continue indefinitely. The law provides for
copyright protection a period of time, a duration during which the rights
of the copyright owner exist. The period or duration of copyright begins
from the moment when the work has been created or in some jurisdiction
when it is expressed in a tangible form. For example, the duration of
copyright in a literary and artistic work is life of the author plus fifty
years after his death. The period of copyright continues for a period of
time, some time after the death of the author in order to enable the author’s
successors to benefit economically from the exploitation of the work.
Ownership of the copyright in a work will often remain with the author
of the work, the author being the person who created it or made the
arrangements necessary for its creation, depending on the nature of the
work. However, if a copyright work is created by an employee in the
course of employment his employer will own the copyright. In addition,
copyright like most other forms of property rights can be assigned, it
may pass under a will or intestacy or by operation of the law and licences
may be granted in respect of it.
rd
10
Bainbridge, D. Intellectual Property (3 ed.). London: Pitman Publishing (1996) p. 24.
11
Ibid., p. 26.
 INTRODUCTION TO COPYRIGHT 17

There are two types of rights under copyright, namely, economic and
moral rights. While economic rights, such as reproduction and translation,
allow the owner of the rights to derive financial reward from the use of
his works by others, moral rights, such as the right to be identified as the
author of a work, allow the author to take certain actions to preserve the
personal link between him and the work.

History of copyright
Copyright law12 has a relatively long history and its roots can be traced
back to the period before the advent of printing technology, which
permitted the printing of a large number of copies faster and at relatively
little expense. Before the late fifteenth century, there was little importance
attached to the protection of literary works because the works of literature
were mainly religious and were written by scholarly monks who would
work painstakingly for considerable periods of time preparing their
gloriously illuminated books. The massive human labour and skill that
was required to produce such works rendered copying or plagiarism of
books unattractive. In addition to the human labour and skill needed to
produce books, there was not a market for books due to high illiteracy of
the population at large. Besides, only privileged members of society had
access to the books. The religious books that were produced were made
mainly for the use within the monastery or churches and royal courts of
Europe.
However, two inventions developed in relation to printing press, in
the late fifteenth century changed everything. Johannes Gutenberg
invented movable type machine, first used in 1455, and Caxton developed
the printing press. The movable type machine had metal pieces made
separately for each letter which could be used over and over to print
copies of various books. Thus, the advent of printing led to books to be
printed at great speed and in large quantities and sold across countries. It
also led to some countries to restrict and control certain literature,
especially religious and political books. Besides, it enabled piracy to
flourish as books could be printed faster and in large quantities.

Licensing Act 1662

The ability to print books easily and cheaply raised the issue of piracy.
As the number of printers increased in England, the King exercised the
royal prerogative to regulate the book trade and protect printers against
piracy. This was the first of many decrees to control what was being
printed. It was the Licensing Act of 1662 which established a register of
licensed books, along with the requirement to deposit a copy of the book
12
For Zambia like many other Common Law countries (whose legal system is founded on the United Kingdom
(UK) or English Legal System due to colonial history) the history of copyright law traces its roots or origin
from the UK Copyright System.
18 INTELLECTUAL PROPERTY LAW

to be licensed. Deposit of books was administered by the Stationers’

Company who were given powers to seize books suspected of containing
matters hostile or critical to the Church or Government. By 1681, the
Licensing Act had been repealed and the Stationers’ Company had passed
a by-law that established rights of ownership for books registered to a
number of its members, so as to continue regulating the printing trade
themselves.

Statute of Anne

The 1709 Statute of Anne which was passed into law on 10 April 1710,
for the first time, provided for the protection of copyright in books and
other writings by an Act of Parliament. The Statute of Anne as the first
Copyright Act in the world to deal with copyright introduced two new
concepts namely the author being the owner of copyright and the principle
of a fixed term of protection for published works. The Act also brought
about the depositing of nine copies of a book to certain libraries throughout
the country.
The opening words of the Statute of Anne read as follows:

Whereas printers, book sellers, and other persons have of

late frequently taken the liberty of printing… or causing
to be printed …, books and other writings without the
consent of the authors or proprietors of such books and
writings, to the very great detriment, and too often to the
ruin of them and their families; for preventing therefore
such practices for the future, and for the encouragement
of learned men to compose and write useful books; may it
please your Majesty….

The key features of the Statute of Anne were:

(i) books in publication before the Statute were protected from
‘printing or disposal’ for twenty-one years from 10 April 1710;
(ii) other works were protected for fourteen years from first
publication;
(iii) if the author was alive at the end of the first fourteen year-
period the protection extended for a further fourteen years;
(iv) the price of books was subject to review and price capping;
(v) nine copies of each book printed upon the best paper were to
be sent to the Company of Stationers for the use of the Royal
Library, the libraries of Oxford and Cambridge and a number
of other libraries;
(vi) the Statute did not apply to books in Greek, Latin or any other
foreign language.
 INTRODUCTION TO COPYRIGHT 19

International Copyright Act, 1884

In order to prevent the reprinting of the United Kingdom’s copyright

works which were in demand and being reprinted in large numbers around
the world without the consent of the authors, the United Kingdom
Parliament passed the International Copyright Act of 1844.13 The
International Copyright Act established a system under which foreign
authors would be entitled to protection under English copyright law, if
English authors were protected by the copyright laws of that author’s
country. Through this way, the UK began to establish a network of
bilateral agreements protecting the copyright of its authors in foreign
jurisdictions.

The Berne Convention for Protection of Literary and Artistic Works

1886

In 1878 the International Literary Association was established. Its 1883

meeting in Berne produced a draft International Copyright Agreement.
The 1883 Berne meeting was followed by a convention in Berne in 1886,
which adopted the international convention on copyright called the Berne
Convention for the Protection of Literary and Artistic Works, 1886. Under
the Berne Convention, member countries were required to provide the
same protection to authors from other member countries as it provided
to its own authors and also put in place certain minimum levels of
copyright protection, including fixing the period of copyright protection
at the life of the author, plus fifty years.
Soon thereafter, the United Kingdom passed the second International
Copyright Act in 1886, unifying copyright throughout its colonies and
dominions and ratifying the Berne Convention. It should be stated that
the Berne Convention helped the reconciliation of the fundamentally
different nature of the United Kingdom copyright law, with the French
tradition of droit d’auteur, that is, authors’ rights.

Copyright Act, 1911

On 1 July 1912, the Copyright Act of 1911 came into force. The 1911
Copyright Act introduced a number of major changes to the United
Kingdom copyright law, which were influenced by the Berlin revision of
the Berne Convention. It brought provisions on copyright into one Act
for the first time by revising and repealing most of the earlier Acts.
Amendments included the introduction of further extension of the term
13
In 1837 one Parliamentarian remarked that ‘every work written by a popular author is almost co-instantaneously
reprinted in large numbers both in France, Germany and in America’. www.intellectual-property.gov.uk
20 INTELLECTUAL PROPERTY LAW

of protection, together with a new arrangement for calculating the term

of copyright. Sound recording, records, perforated rolls and works of
architecture also gained copyright protection. In addition, the Act
abolished the requirement to register copyright with Stationers Hall, a
fundamental principle of the Berne Convention. The Act also abolished
common law copyright protection in unpublished works, apart from
unpublished paintings, drawings and photographs.
It must be stated that the Copyright Act of 1911 formed the basis of
the Copyright Act law throughout the British Empire and accounts for
the similarities in Copyright law between the United Kingdom and
countries such as Zambia and South Africa.

Copyright Act, 1956

The Copyright Act of 1956 came into force on 1 June 1957. It took into
account further amendments to the Berne Convention and the United
Kingdom’s accession to the Universal Copyright Convention. Other
amendments included cinematograph films, broadcasts and typographical
arrangement of published editions. The Performing Right Tribunal, the
predecessor of the current Copyright Tribunal was also established.
The Copyright Act of 1956 classified works as being either original
works, namely, literary, dramatic, musical and artistic works; and
derivative or entrepreneurial works, sound recordings, cinematograph
films, broadcasts and the typographical arrangement of published editions.
In 1971 Zambia enacted its own copyright legislation, which was similar
to the Copyright Act of 1956.

Copyright Act, 1994

On 31 December 1994 the Copyright and Performance Rights Act, chapter

406 of the Laws of Zambia entered into force. The Act provides for
copyright protection in literary, dramatic, musical, artistic works,
computer programmes, audiovisual works, sound recordings, broadcasts
and cable programmes. It also provides for the rights of performers and
the repeal of the Copyright Act of 1971.

Rationale of Copyright Protection

Protection of copyright and related rights is justified for the following
reasons which include14:

14
See George Mpundu Kanja, ‘Role of Copyright in the Promotion of Economic, Social and Cultural Development’,
paper presented at a Colloquium on Protection and Enforcement of Intellectual Property organised by WIPO in
cooperation with the Government of Zambia, Lusaka, 31 March to 2 April 2004.
 INTRODUCTION TO COPYRIGHT 21

(a) Creative Incentive

The author or creator of work knowing that the work will be protected
against unauthorised use is thus given the incentive to write and compose.
Creation of works involves investment of time, patience, skill, creative
endeavour and money. If such investment is not protected, the author
loses the incentive to undertake the project. Production of works benefits
society. Consequently, it is necessary to give authors the incentive to
carry on their work by providing, through copyright and related rights,
the means to ensure their livelihood and recoup their investment. The
incentive will be increased if the author knows that after his death, royalties
will continue to be paid to heirs or in accordance with testamentary
dispositions.

(b) Reward for Labour

Copyright and related rights provide the means for the author or creator
of a work to obtain reward for his production. The reward for labour is
based on the participation principle that allows the author or creator of a
work to participate in all economic benefits realised from the use of his
work.

(c) Encouragement of Learning

Copyright and related rights encourage authors to create works and release
them to the public for the good of society as a whole, by providing them
with an incentive to create. Furthermore, it encourages others to build
freely upon the ideas and information conveyed by a work, thereby
providing the environment for the advancement of learning.

(d) Promotion of the Economy

The law of copyright and related rights is concerned, in the main, with
the use of produced material consisting of authors’ works, performances,
recordings and broadcasts. The main types of use of protected material
are (i) reproduction and distribution of ‘hard copies’ through printing,
sound records, films and in electronic formats, and (ii) communication
in the form of radiophonic or electronic transmission. The publishing
and printing, record producing, film making and broadcasting industries
call for huge investment. Publishers, producers and broadcasters,
disseminate works because they believe that they will thereby make
money.
22 INTELLECTUAL PROPERTY LAW

Copyright enables publishers, producers and broadcasters to protect

their investment by providing protection against piracy and by allowing
the initial expenses to be recouped through sales, licensing, performance
and other uses. Publishers, producers and broadcasters will not invest in
the production of books, sound recordings, films, or broadcasts if the
moment the product is on the market it can be freely copied or otherwise
used. If piracy flourishes, the public loses, for the incentive to make new
material available will disappear. Conversely, protection of investment
provides a major economic incentive and benefits to the author, industry
and commerce, and society as a whole. These benefits include, the amount
of royalties and other payments by users; employment provision in user
industries (publishing and printing, record producing, film making and
broadcasting, electronic dissemination) and collecting societies; value
of sales of products and services and consequent benefits; exporting of
copyright products and works and revenues generated from such exports;
licensing the use of produced material in other countries; encouragement
of further expenditure or investment in creation of works; value added to
gross domestic product; and enjoyment and promotion of culture.

(e) Cultural Importance

Clearly, laws which encourage the production of literary, musical and

artistic works may be said to contribute to the development of culture.
The question then is whether copyright and related rights laws do in fact
make such a contribution. As copyright products and works such as
satellite broadcasts, telecommunications, data networks, multimedia and
internet come to rule our lives, the issue of copyright protection and its
economic importance have become even more important.
Culture is defined as the customs and civilisation of a particular people.
Culture reflects the common meanings of a society, whether presented as
a common language, visual images, or traditional forms of performance.
Its music, drama, plays, ancient and modern architecture, philosophical
and political thought espoused through the mass media of television and
radio, books and magazines. All these help shape our thinking, thought
processes, knowledge and understanding. Culture also moulds each of
our cultures. Every single item which has been identified, as a constituent
of a people’s culture is a subject matter protected by copyright and related
rights. It should be noted that the composers, writers, musicians, singers,
performers and other talented individuals are among society’s most
valuable assets. The fabric of our cultural lives is enriched by their creative
genius. In order to develop their talent and encourage them to create, we
have to give them those individual incentives, namely remuneration in
return of permission to make use of their works.
 INTRODUCTION TO COPYRIGHT 23

(f) Protection of Human Rights

The author’s work is an emanation of his personality and consequently

should be protected. Article 27 of the Universal Declaration of Human
Rights provides that everyone has the right to protection of moral and
material interests resulting from any scientific, literary or artistic
production of which he is the author.

(g) Prevention of Piracy and Counterfeit

Piracy and counterfeit are a disincentive to creation of copyright work.

Where intellectual property protection is weak or not enforced, so as to
allow piracy and counterfeit to flourish foreign owners of intellectual
property rights stay out of the country and development of local industries
is impeded. Furthermore, local authors and creators of copyright products
and works cannot make a living from their work nor recoup their
investment. Also local markets are flooded with inferior illegitimate
products and technology is not incorporated in the country’s base and
infrastructure. Besides, government loses revenue as no taxes are paid
where there is rampant piracy and counterfeit.

Criticism to Copyright Protection

There are contrary arguments which have been raised against the rights
granted by copyright to authors or their proprietors, and these include
the following:
(a) Copyright restricts access to information which should, in the
public interest, be freely available.
(b) Copyright royalties represent a tax on knowledge, and increase
the price of books and other material essential for the
dissemination of culture and the promotion of education.
(c) Copyright is a disguised means of ensuring profits to industrial
and commercial enterprises which exploit the work of creative
individuals.
(d) Authors would create work whether or not they are granted
copyright. Thus the author of a work can make a contract with
the publisher if he wants remuneration for his work. Many authors
are happy to have their works disseminated without payment,
and commercial enterprises should not profit from the
establishment and maintenance of a right which many creators
do not want to exercise.
(e) Copyright should not last beyond the life of the author. When it
does, it benefits persons who have not made a contribution to
24 INTELLECTUAL PROPERTY LAW

the production of the work, particularly commercial and industrial

entities, which have not helped the author in his lifetime and
which after his death, trade in the rights like any other article in
the market place.15

15
Sterling, J.A.L. World Copyright Law. London: Sweet & Maxwell (1998) pp. 61-62.
 25

Chapter Three

RELATED RIGHTS

Introduction

Related rights also known as ‘neighbouring rights’, are rights that are
granted to persons who present creative works to the public but who are
not considered as creators of works in their own right. Related rights in
certain respects are similar to copyright. They are derived from the work
protected by copyright. Related rights are granted to performers,
phonogram and film producers, broadcasting organisations and
publishers.
The purpose of related rights is to protect the legal interests of certain
persons and legal entities who assist authors or creators to communicate
their message and to disseminate or make available their copyright works
to the public. One notable example is the singer or musician who performs
a composer’s work to the public. In addition, related rights are intended
to protect those people or organisations that add substantial creative,
technical or organisation skill in the process of bringing a copyright work
to the public.
Intellectual creations are created in order to be disseminated to as
many people as possible. This cannot be done by the author himself, for
it requires intermediaries whose professional capability gives to the works
of the mind those forms of presentation that are appropriate to make
them accessible to a wide public. For instance, a play needs to be presented
on the stage, a song needs to be performed by artists, reproduced in the
form of records or broadcast by means of radio facilities. All persons
who make use of literary, artistic, musical, or dramatic works in order to
make them publicly accessible to others, require their own protection
against illegal or unauthorised use of their contribution in the process of
communicating the work to the public.16 This protection of related rights
has become even more important in the wake of technological
developments which make it relatively easy and cheap to copy protected
works and distribute it faster on the global scale, such as through the
Internet.

16
WIPO Intellectual Property Handbook, WIPO Publication No. 489 (E), Geneva: WIPO (2001).
26 INTELLECTUAL PROPERTY LAW

Types of Related Rights

Related rights are granted to performers, phonogram and film producers,

broadcasting organisations and publishers.

Performers’ Rights

The performer stands in the middle between the author of the creative
work and the person who records the performance or presents it to the
public through film or broadcasting. Though the Copyright and
Performance Rights Act does not define a performer, performers are
considered to be actors, singers, musicians, dancers, and other persons
who act, sing, deliver, declaim, or otherwise perform literary or artistic
works.17
The Copyright and Performance Rights Act grants the performer the
following rights:
(i) reproduction right18;
(ii) broadcasting live performance or inclusion in a live broadcast in
a cable programme service19;
(iii) distribution right20; and
(iv) public performance right21
The Rome Convention, to which Zambia is party, grants protection to a
performer. Article 7 of the Rome Convention provides that the protection
provided for performers shall include the possibility of preventing:
(a) The broadcasting and the communication of the work to the
public, without their consent, of their performance, except where
the performance used in the broadcasting or the public
communication is itself already a broadcast performance or is
made from a fixation.
(b) The fixation, without their consent, of their unfixed performance.
(c) The reproduction, without their consent, of a fixation of their
performance:
(i) if the original fixation itself was made without their consent;
(ii) if the reproduction is made for purposes different from those
for which the performers gave their consent;
(iii) if the original fixation was made in accordance with the
provisions of article 15, and the reproduction is made for
purposes different from those referred to in those provisions.
For rights in performances to exist, certain conditions must be satisfied.
The performance must take place in a qualifying country or given by a
person of or habitual residence in a qualifying country.22 The qualifying
17
Article 3(a), Rome Convention; Article 2(a), WIPO Performances and Phonograms Treaty.
18
S. 48 (1)(a), Copyright and Performance Rights Act.
19
S. 48 (1)(b), Copyright and Performance Rights Act.
20
S. 48 (3), Copyright and Performance Rights Act.
21
S. 48 (2), Copyright and Performance Rights Act.
22
S. 44, Copyright and Performance Rights Act.
 RELATED RIGHTS 27

country is Zambia or any country which is a member of the Rome

Convention. The term of protection for the performer’s right is fifty years
from the end of the calendar year in which the performance takes place.23

Phonogram Producers’ Rights

Phonogram producers or sound recording have had their rights recognised

earlier than other related rights. Phonogram means any exclusively aural
fixation of sounds of a performance or of other sounds.24 In Zambia,
protection of sound recording traces its origin from the UK Copyright
Act, 1911, which stated in section 19 (1) that copyright subsisted in records
as if they were musical works. This has been carried through to the current
Copyright and Performance Rights Act. For copyright to subsist in a
sound recording it need not be original.25 Sound recording can incorporate
music alone, words alone or both music and words.
Section 2 of the Copyright and Performance Rights Act, defines sound
recording as a recording of sounds, from which the sounds may be
reproduced; or a recording of the whole or any part of a literary or musical
work, from which sounds reproducing the work may be produced,
regardless of the medium on which the recording is made or the method
by which the sounds are reproduced or produced. The sound recording
or phonogram producer is the person who, or the legal entity which, first
fixes the sounds of a performance or other sounds.26 To qualify for
protection, the sound recording, the author must be a citizen of or
habitually resident in, Zambia or a Berne convention country; or a body
corporate incorporated in Zambia or a Berne Convention country.27
The Copyright and Performance Rights Act grants the sound recording
or phonogram producer the following rights:
(i) Adaptation right28;
(ii) Reproduction right29;
(iii) Publication right30;
(iv) Broadcasting or inclusion in a cable programme31;
(v) Communication to the public by any other means32;
(vi) Prohibition of importation of sound recording copies into
Zambia33.
Similarly, the Rome Convention grants the producers of phonograms the
right to authorise or prohibit the direct and indirect reproduction of their
23
S. 47, Copyright and Performance Rights Act.
24
Article 3, Rome Convention.
25
S. 8 (1)(d), Copyright and Performance Rights Act.
26
Article 3, Rome Convention.
27
S. 9 (1)(a), Copyright and Performance Rights Act.
28
S. 17 (4)(a), Copyright and Performance Rights Act.
29
S. 17 (4)(b), Copyright and Performance Rights Act.
30
S. 17 (4)(c), Copyright and Performance Rights Act.
31
S. 17 (4)(d), Copyright and Performance Rights Act.
32
S. 17 (4)(e), Copyright and Performance Rights Act.
33
S. 17 (4)(f), Copyright and Performance Rights Act.
28 INTELLECTUAL PROPERTY LAW

phonograms.34 If a phonogram published for commercial purposes, or

reproduction of such phonogram, is used directly for broadcasting or for
any communication to the public, a single equitable remuneration shall
be paid by the user to the performers, or to the producers of the
phonograms, or to both.35
The term of protection for sound recording is fifty years from the end
of the calendar year in which the sound recording was made, or the end
of the period of fifty years from the end of the calendar year in which the
sound recording was first published.36

Broadcasters’ Right

Broadcasting is the transmission by wireless means of public reception

of sounds, or of images and sounds.37 The copyright and performance
Rights Act restricts broadcasting of works and communicating works to
the public by means of wires or cables. When a work is broadcast, a
wireless signal is emitted into the air which can be received by any person,
within the range of the signal, who possesses the equipment, such as a
radio or television receiver, necessary to convert the signal into sounds
or sounds and images.38 When a work is communicated to the public by
cable, a signal is diffused which can be received only by persons who
possess such equipment, such as a decoder, linked to the cables used to
diffuse the signal.39
Like Sound recording, the Copyright and Performance Rights Act
does not require that the broadcast must be original in order to attract
copyright protection. 40 A broadcast will only qualify for copyright
protection if it was first transmitted from a place in Zambia or a Berne
Convention country.41 Likewise for cable programme service to be
protected, it must first be transmitted from a place in Zambia or a Berne
Convention country.42
The Copyright and Performance Rights Act grants to the broadcaster
the following rights:
(i) Reproduction right43;
(ii) Re-broadcasting, or inclusion in the cable programme44;
(iii) Broadcasting or the inclusion in another cable programme45;

34
Article 10, Rome Convention.
35
Article 12, Rome Convention.
36
S. 13, Copyright and Performance Rights Act.
37
Article 3, Rome Convention.
38
S. 2, Copyright and Performance Rights Act.
39
Ibid.
40
S. 8 (1)(e), Copyright and Performance Rights Act.
41
S. 9 (1)(d), Copyright and Performance Rights Act.
42
S. 9 (1)(e), Copyright and Performance Rights Act.
43
S. 17 (5)(a), Copyright and Performance Rights Act.
44
S. 17 (5)(b), Copyright and Performance Rights Act.
45
S. 17 (5)(c), Copyright and Performance Rights Act.
 RELATED RIGHTS 29

(iv) Communication to the public by any other means46; of the

broadcast or cable programme.
In addition, article 13 of the Rome Convention grants the broadcasting
organisations the right to authorise or prohibit:
(a) the rebroadcasting of their broadcasts;
(b) the fixation of their broadcasts;
(c) the communication to the public of their television broadcasts if
such communication is made in places accessible to the public
against payment of an entrance fee;
(d) the reproduction:
(i) of fixations, made without their consent, of their broadcasts;
(ii) of fixation, made in accordance with the provisions of article
15, of their broadcasts, if the reproduction is made for
purposes different from those referred to in those provisions.
Copyright in a broadcast or cable programme expires at the end of the
period of fifty years from the end of the calendar year in which the
broadcast or cable programme was first transmitted.47

Film Producers’ Rights

The Copyright and Performance Rights Act provides for the protection
of film producers. 48 A film, also known as a ‘motion picture’,
‘cinematographic work’ or an ‘audiovisual work’ is a visual recording,
giving to the viewers an impression of motion. Section 2 of the Copyright
and Performance Rights Act defines ‘audiovisual work’ as the aggregate
of a series of related visual images, together with accompanying sounds,
if any, which is capable of being shown as a moving picture by means of
a mechanical, electronic or other device and irrespective of the nature of
the material support on which the visual images and sounds are carried,
but does not include broadcast. For an audiovisual work to qualify for
copyright protection, it must be made or first published in Zambia or a
Berne Convention country.49
The Copyright and Performance Rights Act grants to the film producer
the following rights:
(i) Adaptation right50;
(ii) Reproduction right51;
(iii) Publication right52;
(iv) Broadcasting or inclusion in a cable programme53;
(v) Communication to the public by any other means54;
46
S. 17 (5)(d), Copyright and Performance Rights Act.
47
S. 14, Copyright and Performance Rights Act.
48
S. 8 (1)(c), Copyright and Performance Rights Act.
49
S. 99 (1)(b), Copyright and Performance Rights Act.
50
S. 17 (4)(a), Copyright and Performance Rights Act.
51
S. 17 (4)(b), Copyright and Performance Rights.
52
S. 17 (4)(c), Copyright and Performance Rights.
53
S. 17 (4)(d), Copyright and Performance Rights Act.
30 INTELLECTUAL PROPERTY LAW

(vi) Prohibition of importation of sound recording copies into

Zambia.
The term of protection for sound recording is fifty years from the end of
the calendar year in which the sound recording was made, or the end of
the period of fifty years from the end of the calendar year in which the
sound recording was first published.55

Publisher’s Rights

Publishers may be beneficiaries of the following rights:

(a) Author’s rights

Where the publisher has made creative contribution to a publication, of

such a level that the contribution itself constitutes a creative work protected
by copyright or author’s right; in such a case the publisher will be entitled
to copyright or author’s right as an author.

(b) Publisher’s Right

The Copyright and Performance Rights provide for the protection of

typographical arrangements of published editions of a literary work.56
The topographical arrangements of published editions need not be original
in order to be protected.57 For typographical arrangements of published
editions to attract copyright protection the author must at the time of
completion of the work be a citizen of, or habitually resident in, Zambia
or a convention country; or a body corporate incorporated in Zambia or
a Berne Convention country.58 Alternatively, where the typographical
arrangements of published editions, is made or first published in Zambia
or Berne Convention country.59

(c) Publishing Right

Publishing right is a right acquired by a publisher from the author to

publish the work. Where this is an assignment the publisher stands in the
shoes of the author as far as economic rights are concerned. In case of an
exclusive licence the publisher will be entitled to exercise the economic
rights of the author in respect of the material covered by the licence.60

54
Supra note 32.
55
Supra note 36.
56
Section 8 (1)(g), Copyright and Performance Rights Act.
57
Ibid.
58
Supra note 27.
59
S. 9 (1)(b), Copyright and Performance Rights Act.
60
Supra note 15, at pp. 181-182.
 31

Chapter Four

SUBSISTENCE OF COPYRIGHT

Introduction

Copyright can subsist only in specified descriptions of works. Copyright

and Performance Rights Act61 lists the works in which copyright subsists,
subject to the qualifications requirements, as being:
(i) original literary, musical, artistic works or computer programs;
(ii) compilations;
(iii) audiovisual works;
(iv) sound recordings;
(v) broadcasts;
(vi) cable programme; and
(vii) typographical arrangements of published editions of literary
works.

Ideas/Expression Dichotomy

The idea/expression concept propounds that the mere idea of the author
is not protected, only the expression of the idea. In other words copyright
law protects only the form of expressions of ideas, not the ideas
themselves. This long-standing principle of copyright law is affirmed by
article 9 (2) of Trade Related Aspects of Intellectual Property Agreement
(TRIPS) which states that copyright protection shall extend to expressions
and not to ideas, procedures, methods of operation or mathematical
concepts as such.
In the case of Designer Guild Ltd v. Russell Williams (Textiles) Ltd62,
the plaintiff’s employee created an original design for a dress fabric. The
design consisted of vertical stripes, with flowers and leaves scattered
between the stripes, all painted in an impressionistic style. The plaintiff
successfully marketed the fabric. The defendant, having seen the plaintiff’s
fabric, then produced a very similar design for its fabric and claimed that
it had copied merely the ‘idea’ of A’s design, not its ‘expression’. The
plaintiff successfully sued for copyright infringement.
In making the distinction between expression and ideas, Lord Hoffman
stated that

plainly there can be no copyright in an idea which is merely

in the head, which has not been expressed in copyrightable
61
S. 8 (1).
62
[2000] 1 WLR 2416, HL.
32 INTELLECTUAL PROPERTY LAW

form, as a literary, dramatic, musical or artistic work. But

the distinction between ideas and expression cannot mean
anything so trivial as that. On the other hand, every element
in the expression of an artistic work is the expression of
an idea on the part of the author. It represents her choice to
paint stripes rather than polka dots, flowers rather than
tadpoles, use one colour and brush technique rather than
another, and so on. The expression of these ideas are
protected.

Similarly, in the case of Donoghue v. Allied Newspapers Ltd63, Donoghue,

a well-known jockey, agreed to give exclusive interviews to the News of
the World newspaper for a series of articles dealing with his horse-racing
career. The newspaper’s journalist, Felstead, wrote up drafts of the articles
from notes he took at the interviews. He showed the drafts to Donoghue
and sometimes changed them as a result of comments Donoghue made.
The articles were duly published, partly as though they were actual
dialogues between Donoghue and Felstead. Felstead later wished to
republish the articles in another paper called Guide and Ideas. The News
of the World consented but Donoghue objected, claiming that he was the
author and copyright owner of the interviews. He sued for an injunction
and damages after one of the articles were published against his wishes.
In explaining the copyright law principle that copyright does not protect
ideas but the expression of the ideas Farwell, J. stated:

There is no copyright in an idea, or in ideas. A person may

have a brilliant idea for a story, or for a picture, or for a
play, and one which appears to him to be original; but if
he communicates that idea to an author or an artist or a
playwright, the production which is the result of
communication of the idea to the author or the artist or the
playwright is the copyright of the person who has clothed
the idea in form, whether by means of a picture, a play, or
a book, and the owner of the idea has no rights in that
product.
On the other hand,… if an author employs a shorthand
writer to take down a story which the author is composing,
word for word, in shorthand, and the shorthand writer then
transcribes it, and the author has it published, the author is
the owner of the copyright and not the short hand writer. A
mere amanuensis does not, by taking down word for word
the language of the author, become in any sense the owner
of the copyright. That is the property of the author.
63
[1938] Ch. 106.
 SUBSISTENCE OF COPYRIGHT 33

The explanation of that is this, that in which copyright

exists is the particular form of language by which the
information which is to be conveyed is conveyed. If the
idea, however, original, is nothing more than an idea, and
is not put into any form of words, or any form of expression
such as a picture, then there is no such thing as copyright
at all. It is not until it is reduced into writing or into some
tangible form that there is any copyright, and the copyright
exists in the particular form of language in which, or in
the case of a picture the particular form of the picture by
which, the information or the idea is conveyed to those
who are intended to read it or to look at it.
In the present case, the ideas of all these stories, apart
altogether from what one may call merely the
embellishments which were undoubtedly supplied wholly
by Mr Felstead; the ideas of all these stories, and in fact
the stories themselves, were supplied by the plaintiff; but
in my judgment, upon the evidence it is plain that the
particular form of language by which those stories were
conveyed was the language of Mr Felstead and not of the
plaintiff. The plaintiff was not the author, or even the joint
author, of the articles in the News of the World. If that be
so, it must necessarily follow that he cannot maintain this
action.

Originality

Most copyright laws insist that a work has to be ‘original’ before it can
qualify for copyright protection. ‘Unoriginal’ works do not have copyright.
Therefore, for literary, dramatic, musical or artistic works they and a
computer programme must be original in order to be protected, but the
originality does not extend to the works outline under (b) to (g).64
As a general rule, national laws do not define originality and the
meaning of this term has been largely left to judicial interpretation and
the analysis of learned authors. Though a number of interpretations have
been given to the term, there are certain points on which agreement seems
to have been firmly established. Primary among these points are the two
basic concepts, namely:
(i) that the work must not be merely a copy of a previous work; and
(ii) that the work is a result of the investment of individual skill,
labour or judgment.
64
S. 8 of Copyright and Performances Rights Act, Cap 406.
34 INTELLECTUAL PROPERTY LAW

(i) ‘Not a Copy’

There are a number of decided cases, examined below, that explain well
the concept that a work must not be merely a copy of a previous work.
In the case of University of London Press Ltd v. University Tutorial
Press Ltd,65 the plaintiff published a compilation of examination papers
of the University of London, with the consent of the University and the
examiners who had set the papers. The defendant induced some University
of London mathematics students to hand over copies of their examination
papers, and published its own compilation, together with answers and
criticism. The plaintiff sued the defendant for copyright infringement.
Under the Copyright Act, only ‘original’ literary works were protected;
so the defendant argued that the examination papers lacked originality
and so could be copied by all. The court rejected this argument.
Peterson, J. had the following to say concerning the term ‘originality’:

The word ‘original’ does not in this connection mean the

work must be expression of original or inventive thought.
Copyright Acts are not concerned with the originality of
ideas, but with the expression of thought, and, in the case
of ‘literary work’, with the expression of thought in print
or writing. The originality which is required relates to the
expression of thought. But the Act does not require that
the expression must be in an original or novel form, but
that the work must not be copied from another work; that
it should originate from the author.
In the present case it was suggested that any of the
papers were copies. The examiners proved that they had
thought out the questions which they set, and that they
made notes or memoranda for future questions and drew
on those notes for the purposes of the questions which
they set. The papers which they prepared originated from
themselves, and were, within the meaning of the Act,
original. It was said, however, that they drew upon the
stock of knowledge common to mathematicians, and that
the time spent in producing the questions was small. These
cannot be tests for determining whether copyright exists.
If an author, for purposes of copyright, must not draw on
the stock of knowledge which is common to himself and
others who are students of the same branch of learning,
only those historians who discovered fresh historical facts
65
[1916] 2 Ch. 601.
 SUBSISTENCE OF COPYRIGHT 35

could acquire copyright for their works. If time expended

is to be the test, the rapidity of an author like Lord Byron
in producing a short poem might be an impediment in the
way of acquiring copyright, and, the completer his mastery
of his subject, the smaller would be the prospect of the
author’s success in maintaining his claim to copyright.
I suppose that the most elementary books on
mathematics may be said to be of common type, but that
fact would not give impunity to a predatory
infringer…After all, there remains the rough practical test
that what is worth copying is prima facie worth protecting.

In Interlego v. Tyco Industries,66 technical drawings which were out of

copyright were meticulously copied, with great skill, but the court held
that there was no copyright in the new drawings, since these were merely
copies and nothing different or visually significant had been achieved.
In British Northrop Ltd v. Texteam Blackburn Ltd,67 Megarry, J.
observed as follows:

Copyright is concerned not with any originality of ideas

but with their form of expression, and it is in that expression
that originality is requisite. That expression need not be
original or novel in form, but it must originate with the
author and not be copied from another work…. A drawing
which is simply traced from another drawing is not an
original artistic work: a drawing which is made without
any copying from anything originates from the artist.

In the case of Plastics Ltd v. Swish Products Ltd,68 Whitford, J. observed

that a drawing of a three-dimensional prototype, not itself produced from
the drawing and not being a work of artistic craftsmanship, would qualify
as an original work. That may well be right, for there is no more reason
for denying originality.
It must be stated that though the court held that ‘what is worth copying
is prima facie worth protecting’ in the case of University of London v.
University Tutorial Press Ltd,69 English courts have in some cases, denied
the existence of originality in some literary works. Thus, in Exxon
Corporation v. Exxon Insurance Consultants Ltd,70 where the oil
company Exxon Corporation sued the defendant for passing off and
66
[1988] RPC 343, JC; [1989] 1 AC 217.
67
[1974] RPC 57 at 68.
68
[1979] RPC 551; [1979] FSR 145, HL.
69
[1916] 2 Ch. 601.
70
[1982] Ch. 119.
36 INTELLECTUAL PROPERTY LAW

infringing copyright in the word ‘Exxon’ by using that word as part of its
corporate name. The passing-off claim succeeded and an injunction issued
against the defendant’s use of the word in its name.
On the copyright claim, the plaintiff claimed that the word ‘Exxon’
was ‘original’: its staff had dreamed up the word themselves and the
corporation had spent much time and money making; sure it was a good
word to use all over the world as a trademark and trade name. If the
University examiners could get copyright for their ‘creations’, why not
Exxon? The Court of Appeal held that the word ‘Exxon’ had no copyright.

Lord Justice Oliver said:

‘Original literary work’, as used in the statute, is a

composite expression, and for my part I do not think that
the right way to apply a composite expression is, or at any
rate is necessary, to ascertain whether a particular subject
matter falls within the meaning of each of the constituent
parts, and then to say that the whole expression is merely
the sum total of the constituent parts. In my judgment it is
not necessary, in construing a statutory expression, to take
leave of one’s common sense… That for which protection
is sought in the instant case does not appear to me to have
any of the qualities which commonsense would demand.

(ii) Investment of Skill, Labour or Judgment

There are two aspects to the contribution that must be made for the
production of protected work, namely that there must be an investment
of skill, labour or judgment, and that investment must reach a certain
degree. The skill, labour or judgment must have relevance to the literary,
dramatic, musical or artistic work. The degree or sufficiency of skill,
labour or judgment that is required is a matter which can only be
determined from case to case.
The cases examined below show how the English courts have dealt
with the principle that for the work to be original the work must result
from the investment of individual skill, labour or judgment.
In MacMillan v. Cooper,71 Lord Atkinson made the following
observation on the meaning of the term originality:

… it is the product of the labour, skill, and capital of one

man which must not be appropriated by another, not the
71
(1923) 93 LJPC 113; (1923) 40 TLR 186 at p.188
 SUBSISTENCE OF COPYRIGHT 37

elements, the raw material, if one may use the expression,

upon which the labour and skill and capital of the first
have been expended. To secure copyright for this product
it is necessary that the labour, skill and capital should be
expended sufficiently to impart to the product some quality
or character which the raw material did not possess, and
which differentiates the product from the raw material.

Lord Atkinson continued:

This decision is, of course, not binding on this tribunal,

but it is, in the opinion of the Board, sound, able,
convincing and helpful. It brings out clearly the distinction
between the materials upon which one claiming copyright
has worked and the product of the application of his skill,
judgment, labour and learning to those materials; which
product, though it may be neither novel or ingenious, is
the claimant’s original work in that it is originated by him,
emanates from him, and is not copied.
In Ladbroke (Football) Ltd v. William Hill (Football)
Ltd,72 the plaintiff devised a popular football betting
coupon. The defendant copied the format and bets from
the plaintiff’s coupon, but gave some bets new names and
worked out the odds independently. The plaintiff sued for
copyright infringement of its work as a compilation. The
defendant denied that the plaintiff’s work was ‘original’.

Lord Pearce had the following to say concerning ‘originality’:

In deciding… whether a work in the nature of a compilation

is original, it is wrong to start by considering individual
parts of it apart from the whole, as the appellants in their
argument sought to do. For many compilations have
nothing original in their parts, yet the sum total of the
compilation may be original…. In such cases the courts
have looked to see whether the compilation of the
unoriginal material called for work or skill or expense. If
it did, it is entitled to be considered original and to be
protected against those who wish to steal the fruits of the
work or skill or expense by copying it without taking the
trouble to compile it themselves. So the protection given
72
[1964] 1 WLR 273.
38 INTELLECTUAL PROPERTY LAW

by such copyright is in no sense a monopoly, for it is open

to a rival to produce the same result if he chooses to evolve
it by his own labours…
Thus, directories, catalogues, and the like have been
held to be original and to acquire copyright if the work
that goes to their making has been sufficient. Where,
however, the work of compilation was not ‘substantial’
but was “negligible” it was held to have no copyright …The
arrangement of the material is one of the factors to be
considered… So in each case it is a question of degree
whether the labour or skill or ingenuity or expense involved
in the compilation is sufficient to warrant a claim to
originality in compilation.
Applying those principles to the present case, I feel little
doubt that the respondents’ coupon is entitled to copyright.
The respondents have been pioneers in this field and have
invented various bets and nomenclatures, some of which
have been adopted by their rivals. A study of the coupons
of twenty-three principal firms engaged in the fixed odds
betting business shows that a large proportion of the bets
in the respondents’ coupon are also offered by their rivals,
and much similarity of language, arrangement and
substance will be found in their coupons. It emerges clearly
that the arrangement and contents of the coupon are the
central point of the business; what one witness called the
heart of business. The coupon must contain an assorted
selection of the bets that will attract a customer and induce
him to fill up the coupon in preference to rival coupons.
To this end, the respondents have devoted much work and
money and ingenuity. Out of the vast number of the bets
that can be offered, they select and devise those which,
while being profitable to them, will fill the coupon with
the greatest allure.

Lord Reid, in determining whether there was copyright in coupon

observed that:

…indeed it has often been recognised that if sufficient skill

and judgment have been exercised in devising the
arrangements of the whole work, that can be an important
or even decisive element in deciding whether the work as
a whole is protected by copyright. …n the present case, if
it is permissible to take into account all the skill, judgment
 SUBSISTENCE OF COPYRIGHT 39

and labour expended in producing the respondents’ coupon,

there can be no doubt that it is ‘original.’
Similarly in British Leyland Motor Corp Ltd v.
Armstrong Patents Co. Ltd73 the Court emphasised the
need for skill and labour as a condition for work to attract
copyright. In Bookmakers Afternoon Greyhound Services
Ltd v. Wilf Gilbert (Staffordshire) Ltd74 Aldous, J. said
that once a formula has been derived, he did not consider
that sufficient skill, labour and judgment is used when
calculating, in this case, dividends from starting prices in
greyhound. Aldous, J. also considered that there was no
copyright in a list of 12 such dividends as it amounted to a
mere collocation and not a copyright compilation. There
was no skill or judgment and minimal labour in writing
them down.
Originality in the context of literary copyright depends
on the degree of skill, labour and judgment involved in
the creation or preparation of the work. In G.A. Cramp &
Sons Ltd v. Frank Smythson Ltd,75 the plaintiff published
pocket diaries containing calendars, postal information,
important dates, tables of weights and measures, and other
information of the type usually found in such diaries. The
plaintiff published diaries containing copies of the tables
in the plaintiff’s diaries. The question that arose was
whether the selection of the lists and tables and the
arrangement of the plaintiff’s diaries constituted an original
work in the sense that there was a real exercise of
‘knowledge, labour, judgment or skill’.
The trial judge found that the material was not
sufficiently original. A majority of the Court of Appeal
held that there was sufficient originality. The House of
Lords decided that the selection of the lists and tables was
nothing more ‘than commonplace selection of gobbets of
information and a commonplace arrangement, neither of
which involved any real exercise of knowledge, labour,
judgment or skill.

Lord Porter, in particular, observed that compilations are susceptible of

copyright even though the matter compiled of itself contains nothing
new: if the work, labour and skill required to make the selection is
negligible, no copyright will subsist.76
73
[1986] 2 WLR 400 at p. 419.
74
[1994] FRS 723.
75
[1944] AC 329.
76
Ibid., at p. 340.
40 INTELLECTUAL PROPERTY LAW

It is imperative to state that though the amount of skill, labour or

judgment can be crucial and decisive in determining whether or not a
work qualifies to be original, where, however, a work is merely a copy
of another work no originality shall be conferred on the copied work
despite the amount of skill, labour or judgment expended on creating or
producing the work. Thus, in L.B. (Plastics) Ltd v. Swish Products Ltd77
Whitford J. stated that:

… a drawing of a three-dimensional prototype, not itself

produced from the drawing and not being a work of
craftsmanship, would qualify as an original work. That
may well be right, for there is no more reason for denying
originality to the depiction of a three-dimensional form of
any other physical object. It by no means follows, however,
that that which is an exact and literal reproduction in two-
dimensional form of an existing two-dimensional work
becomes an original work simply because the process of
copying it involves the application of skill and labour. There
must be some element of material alteration or
embellishment which suffices to make the totality of the
work an original work. Of course, even a relatively small
alteration or addition quantitatively may, if material, suffice
to convert that which is substantially copied from an earlier
work into an original work. Whether it does so or not is a
question of degree having regard to the quality rather than
the quantity of the addition. But copying, per se, however
much skill or labour may be devoted to the process, cannot
make an original work. A well executed tracing is the result
of much labour and skill but remains what it is, a tracing.

It is worth noting that whilst, as has been observed in the cases cited
above, the United Kingdom and systems of law derived from it consider
a work to be original if it involves skill, labour or judgment, the USA,
Canada and civil law countries require the work to possess some degree
of creativity for it to attract copyright protection.
In the United States before the Supreme Court’s decision in the case
of Feist Publications Inc. v. Rural Telephone Service Co. Inc,78 courts
tended to apply tests of invested labour (‘sweat of the brow’) or creativity
in order to assess fulfilment of the originality criterion. In Feist, however,
the ‘sweat of the brow’ criterion of assessing originality was rejected, the
Court holding that labour alone could not constitute originality, and the
investment of a ‘modicum of creativity’ was necessary.
77
[1979] RPC 551 at pp. 568 - 569.
78
499 US 340; US Supreme Court, 1991.
 SUBSISTENCE OF COPYRIGHT 41

In Feist, the plaintiff, Rural compiled a white pages telephone book,

information given to it by subscribers when they applied for a telephone.
Rural was obliged by law to produce such a phone book annually. Feist
wanted to publish a telephone directory for a large region (47 000 listings)
that included Rural’s subscribers (7 700 listings). Feist used about 1, 300
of Rural’s listings in defiance of Rural’s expressed wishes, claiming that
Rural’s work was unoriginal.
The Court held that the listings were not entitled to copyright. The
Court stated that while facts are not copyrightable, compilations of facts
are within the subject matter of copyright. The court noted the tension
between these two propositions, and pointed out that facts do not owe
their origin to an act of authorship, but factual compilations may possess
the requisite originality.
Justice O’Connor for the Court stated that:

The key to resolving the tension lies in understanding why

facts are not copyrightable. The sine qua non of copyright
is originality. To qualify for copyright protection, a work
must be original to the author. … Original, as the term is
used in copyright, means only that the work was
independently created by the author (as opposed to copied
from other works) and it possesses at least some minimal
degree of creativity. To be sure, the requisite level of
creativity is extremely low; even a slight amount will
suffice. The vast majority of the works make the grade
quite easily, as they possess some creative spark, ‘no matter
how crude, humble or obvious’ it might be. … Originality
does not signify novelty; a work may be original even
though it closely resembles other works, so long as the
similarity is fortuitous, not the result of copying. To
illustrate, assume that two poets, each ignorant of the other,
compose identical poems. Neither work is novel, yet both
are original and hence, copyrightable.
…Known as alternatively as ‘sweat of the brow’ or
‘industrious collection,’ the underlying notion was that
copyright was a reward for the hard work that went into
compiling facts. … The ‘sweat of the brow’ doctrine had
numerous flaws; the most glaring being that it extended
copyright protection in a compilation beyond selection and
arrangement; the compiler’s original contributions; to the
facts themselves. … ‘Sweat of the brow’ courts thereby
eschewed the most fundamental axiom of copyright law;
that no one may copyright facts or ideas.
42 INTELLECTUAL PROPERTY LAW

The Court, therefore, rejected the view that mere ‘sweat

of the brow’ (‘industrious collection’) could of itself fulfil
the creativity test. The Court found that the plaintiff’s
selection, co-ordination and arrangement of its listings did
not satisfy the minimum constitutional requirements for
copyright protection, lacking ‘the modicum of creativity
necessary to transform mere selection into copyrightable
expression.’
Similarly, in the case of Tele-Direct (Publications) Inc.
v. America Business Information Inc.,79 the Canadian
Federal Court of Appeal held that ‘sweat of the brow’ alone
is not sufficient to constitute originality: there must be an
element of creativity. The Court held that the plaintiff’s
contribution to the compilation of directories was
commonplace and mechanical, lacking creative element.

The Court said:

The use of the word ‘copyright’ in the English version of

the Canadian Copyright Act has obscured the fact that what
the Act seeks to protect is ‘le droit d’auter’. While not
defined in the Act, the word ‘author’ conveys a sense of
creativity and ingenuity. I do not read these cases which
have adopted the ‘sweat of the brow’ approach in matters
of compilations of data as having asserted that the amount
of labour would in itself be a determinative source of
originality.

By analysing the cases which have been discussed above, it can safely be
concluded that the traditional approach taken by the United Kingdom
and systems of law derived from it, for example, Zambia in assessing
‘originality’ is to refer to ‘skill, labour or judgment.’ On the other hand,
countries like USA, Canada and civil law countries like France regard
‘originality’ as involving creativity. Besides the United Kingdom and
systems of law derived from it generally require a lower standard of
originality than the civil law countries which often require creativity.

Meaning of ‘work’

For copyright to subsist in, for example literary, dramatic, musical or

artistic work, it must qualify as a work. Considered in relation to the
production of the human mind, a work may in the context of copyright
be defined as the ordered expression of thought. The Copyright and
79
76 CPR (3d) 296; [1998] EIPR N-17
 SUBSISTENCE OF COPYRIGHT 43

Performances Rights Act80 defines a work as a product of creativity in

original literary, musical, dramatic, artistic works or computer
programmes; compilations; audiovisual works; sound recordings;
broadcasts; cable programme; and typographical arrangements of
published editions of literary works.

Protected Works

As noted above copyright subsists in products of creativity in the following

categories of work namely, original literary, musical, dramatic, artistic
works or computer programmes; compilations; audiovisual works; sound
recordings; broadcasts; cable programme; and typographical arrangements
of published editions of literary works.81
It is important to state that the Copyright and Performances Rights
Act and many laws of the Commonwealth such as the United Kingdom’s
Copyright, Designs and Patents Act of 1988, provides for an ‘exhaustive
list’ of works to be protected. The question that one may ask is what
happens to the works that may fall outside the definition of the works to
be protected? One would safely state that if a particular work does not
fall within the respective definitions then it cannot be protected under
the Act.82
Some countries such as the United States have a ‘non-exhaustive’
approach to define the works that should be protected by copyright. For
instance, section 102 (a) of the United States Copyright Act of 1976,
provides that copyright protection subsists ‘in original works of authorship
fixed in any tangible medium of expression’, and then proceeds to give a
list of works which fall within the scope of the Act, including the traditional
categories, choreographic works, audiovisual works, and sound
recordings. Therefore, under the United States Act, it is possible for one
to argue that a production or work which does not appear in the list in
section 102 (2) is nonetheless entitled to copyright protection.

Literary works

The Berne Convention uses the term ‘literary and artistic works’ to denote
a large number of items which include both literary and non-literary
materials. Article 2 of the Berne Convention, therefore, defines ‘literary
and artistic works’ to

include every production of literary, scientific and artistic

domain, whatever may be the mode or form of its
expression, such as books, pamphlets and other writings;
80
Supra note 38.
81
Supra note 64.
82
See Creation Records Ltd v. News Group Newspapers Ltd [1997] EMLR 444, Ch. D.
44 INTELLECTUAL PROPERTY LAW

lectures, addresses, sermons and other works of the same

nature; dramatic or dramatico-musical works;
choreographic works and entertainment in dumb show;
musical compositions with or without words;
cinematographic works to which are assimilated works
expressed by a process analogous to cinematography;
works of drawing, painting, architecture, sculpture,
engraving and lithography; photographic works to which
are assimilated works expressed by a process analogous
to photography; works of applied art; illustrations, maps,
plans, sketches and three-dimensional works relative to
geography, topography, architecture or science.
Translations, adaptations, arrangements of music and other
alterations of a literary or artistic work shall be protected
as original works without prejudice to the copyright in the
original work. Collections of literary or artistic works such
as encyclopaedias and anthologies which, by reason of the
selection and arrangement of their contents, constitute
intellectual creations shall be protected as such, without
prejudice to the copyright in each of the works forming
part of such collections.

The copyright and Performances Rights Act83 defines literary work as

including a dramatic work or an arrangement of information in a tabular
form. Besides the statutory definition of the term literary work, case law
has also made an attempt to define what constitutes literary work. In the
University of London Press Ltd v. University Press Ltd,84 Peterson, J
said:

It may be difficult to define ‘literary work’ as used in this

Act [Copyright Act, 1911], but it seems to be plain that it
is not confined to ‘literary work’ in the sense in which that
phrase is applied, for instance, to Meredith’s novels and
the writings of Robert Louis Stevenson … In my view the
words ‘literary work’ cover work which is expressed in
print or writing, irrespective of the question of whether
the quality or style is high. The word ‘literary’ seems to be
used in a sense somewhat similar to the use of the word
‘literature’ in political or electioneering literature and refers
to written or printed matter.85

83
Supra note 38.
84
Supra note 69.
85
Ibid., 1 at p. 608.
 SUBSISTENCE OF COPYRIGHT 45

Similarly, in the case of Walter v. Lane,86 the Lord Chancellor said that
copyright arose in a book ‘whether that book be wise or foolish, accurate
or inaccurate, of literary merit or of no merit whatever.’
As already discussed above, for literary work to be protected by
copyright it must be original. Examples of literary works in which courts
have held that copyright subsists include tables and compilations,87
examination papers,88 timetable indexes,89 football fixtures lists,90 football
coupons,91 a listing of programmes to be broadcast.92
An ordinary private or business letter is protected as a literary work.
The receiver may own the paper on which the letter is written, but the
writer owns the copyright and can stop the receiver from making copies
of it. Thus, in British Oxygen Company Ltd v. Liquid Air Ltd,93 a firm
which wanted to expose a competitor’s business practices was stopped
from sending to stockbrokers copies of a letter the competitor had written
to the firm’s customers. Similarly in Salinger v. Random House Inc.,94
the reclusive American novelist J.D. Sallinger stopped a biographer from
including in an unauthorised biography expression copied from letters
that were written by Salinger to various people and that had been deposited
by them in a university library archive. The biographer had to rewrite the
book, using his own words to express Salinger’s thoughts and ideas.
The courts, however, have refused to protect some literary works for
being too simple and lacking originality. Therefore, in Exxon Corporation
v. Exxon Insurance Consultants International Ltd,95 the plaintiff, the
multinational oil company Exxon Corporation sued the defendants for
passing off and infringing copyright in the word ‘Exxon’ by using it as
part of their corporate name. The passing off claim succeeded and an
injunction issued against the defendant’s use of the word in its name. The
copyright claim, however, failed. The High Court’s judgment on copyright
was affirmed by the Court of Appeal.
Graham, J. stated:

The question that I have to decide is, shortly stated, whether

Exxon is an ‘original literary work’ within section 2? I do
not think it is. What then is it? One may ask. It is a word
which, though invented and therefore original, has no
meaning and suggests nothing in itself. To give substance
86
[1900] AC 539.
87
Supra note 38.
88
University of London Press v. University Tutorial Press [1916] 2 Ch. 601.
89
Blacklock (H) & Co Ltd v. Pearson [1915] 2 Ch. 376.
90
Football League v. Littlewoods [1959] Ch. 637; [1959] 2 All ER 546.
91
Ladbroke (Football) Ltd v. William Hill (football) [1964] 1 All ER 465 [1964], 1 WLR 273.
92
Independent Television Publications v. Time Out Ltd [1984] FSR 64.
93
[1925] Ch. 383.
94
Salinger v. Random House Inc. 811 F.2d 90: US Court of Appeals, 2nd Circuit, 1987.
95
[1982] Ch. 119.
46 INTELLECTUAL PROPERTY LAW

and meaning, it must be accompanied by other words or

used in a particular context or juxtaposition. When used
as part of the plaintiff’s corporate names, it clearly has a
denominative characteristic as denoting the company in
question. When used, as I assume it is, with the plaintiff’s
goods, it would clearly have the effect of denoting origin
or quality. It is in fact an invented word with no meaning,
which is a typical subject of trade mark registration, and
which no doubt, with adequate user, is capable also of
becoming distinctive of the plaintiffs and their goods at
common law. … I consider that the mere fact that a single
word is invented and that research or labour was involved
in its invention does not in itself, in my judgment,
necessarily enable it to qualify as an original literary work
within section 2 of the Act.

In confirming the High Court judgment Lord Oliver stated:

… The word EXXON conveys no information; it provides

no instruction and gives no pleasure that I can conceive. It
is simply an artificial combination of four letters of the
alphabet which serves a purpose only when it is used in
juxtaposition with other English words to identify one or
other of the companies in the plaintiff’s group. There was,
therefore, no copyright in the word ‘Exxon’.

It should be noted that literary works also cover secondary works. A

literary work based on existing sources can be seen as a different
expression of the same idea if no substantial amount of copying is involved
and skill and labour has been invested in the new work. As the idea is not
protected, no infringement problem arises and the new work can attract
copyright protection as a literary work. Examples of secondary works
include, translations, 96 compilation, 97 editorial works that involve
amendments,98 critical annotation and explanation99 and selection and
abridgment.100

Dramatic works

The Copyright and Performance Rights Act defines ‘dramatic work’ to

include a work of dance or mine, whether recorded in writing or other
notation, or in an audiovisual work.101 Dramatic work, like literary, artistic
96
Byrne v. Statist Co. [1914] 1 KB 622.
97
Portway Press v. Hague [1957] RPC 426; Football League v. Littlewoods [1959] Ch. 637.
98
Warwick Film Productions Ltd v. Eisinger [1969] 1 Ch. 508; [1967] 3 All ER 367.
99
Macmillan v. Cooper (1923) 93 LJPC 113.
100
Ibid.
101
Supra note 38.
 SUBSISTENCE OF COPYRIGHT 47

and musical works, must be original in order to qualify for copyright

protection. Dramatic work must also be recorded for copyright to subsist
in it. In Tate v. Fullbrook,102 it was held that a visual skit for a music hall
sketch involving the use of a firework was not the subject matter of
copyright because it has not been reduced to writing.

Musical works

A musical work is one consisting of music, exclusive of any words or

action intended to be sung, spoken or performed with the music.103
Therefore, a song may have two copyrights, one in the music and one in
the words of the song, the latter being a literary work. This is important
especially where the writer of the music is different from the writer of
lyrics. The general rules governing the two previous categories of works,
namely literary and dramatic works, equally apply to musical works.
Making an arrangement of an existing piece of music may attract its
own copyright in addition to, and running alongside, the copyright
subsisting in the prior work. For instance, a musician who expends a
reasonable amount of skill in arranging and adapting a piece of music
originally written for a rock group so that it is suitable for a traditional
orchestra will have a copyright in the orchestral work.104 However, if he
makes the arrangement without the permission of the copyright owner,
he will be guilty of infringing the earlier piece of music.

Artistic Work

Artistic work comprises different types of works. The Copyright and

Performance Rights Act105 defines ‘artistic works’ to include works of
artistic craftsmanship, including designs for fabrics, carpets and tapestry,
and irrespective of artistic quality:
(a) paintings, drawings, etchings, lithographs, wood cuts, engravings
and prints;
(b) maps, plans, charts, diagram, illustrations and sketches;
(c) works of sculpture;
(d) works of architecture in the form of either buildings or models;
and
(e) photographs.
It must be emphasised that for the first category of artistic work, that is,
artistic craftsmanship protection will depend on their quality. However,
for the second category (outlined from (a) to (e)) copyright will subsist
in them irrespective of their quality. Like other works, for artistic work
to qualify for copyright protection it must be original.
102
[1908] 1 KB 821.
103
Supra note 10, at pp. 44-45.
104
Wood v. Boosey (1968) LR 3 QB 223.
105
Supra note 38.
48 INTELLECTUAL PROPERTY LAW

Works of Artistic Craftsmanship

The Act does not define the works of craftsmanship but states that they
include designs of fabrics, carpets and tapestry. The determination of
whether or not a work qualifies as a work of artistic craftsmanship and
thus protected by copyright has not been easy for the courts. In the case
of George Hensher Ltd v. Restawhile Upholstery (Lancs) Ltd,106 the House
of Lords was given an opportunity to consider the issues raised by the
question of works of artistic craftsmanship. This case was concerned
with a prototype for a suite of furniture whose boat shape was described
by the House of Lords to have given it a particular low-brow appeal. On
the issue of whether artistic quality is required and what level must be
attempted or reached, the House of Lords disagreed with the lower court
which had held that the work qualified for copyright. The House of Lords
makes it clear that some artistic quality is required.
As to the issue of whether one should look at the craftsman’s intention
to create something artistic whether one should focus on the public’s
perception of artistic quality, the House of Lords rejected the Court of
Appeal’s suggestion that one should ask whether the public would
purchase the thing for its aesthetic appeal rather than for its functional
utility.
In Merlet v. Mothercare,107 the first plaintiff, a cloth designer and
marker, designed a baby’s cape, the ‘Raincosy’, originally for her own
child. Later, she arranged for its manufacture by the second plaintiff.
The defendant copied the cape and sold its version in its chain-stores.
One of the claims was against infringement of copyright in the prototype
cape as a ‘work of artistic craftsmanship’. It was held that the prototype
cape did not constitute a work of artistic craftsmanship.

Computer Programmes

According section 8 of Copyright and Performance Rights Act, copyright

subsists in original computer programmes. The Act defines computer
programmes as a set of instructions, whether expressed in words or in
schematic or other form, which is capable, when incorporated in a machine
readable medium, of causing an electronic or other device having
information-processing capabilities to indicate, perform or achieve a
particular function, task or result.108 Copyright shall not subsist in a
computer programme unless and until it is recorded in writing or some
other form.109
It is worth stating that whilst in Zambia a computer programme is
protected as an independent category of a work in most jurisdiction
106
[1976] AC 64.
107
[1986] RPC 15.
108
Supra note 38.
109
S. 8 (3), Copyright and Performance Rights Act.
 SUBSISTENCE OF COPYRIGHT 49

computer programme is protected as a literary work. Like other works,

computer programmes in order to attract copyright protection must be
original. Hence, a computer programmes should not be copied, but must
originate from the author and its creation should involve the minimal
amount of skill and labour.

Compilations

Compilations are subject to copyright protection.110 However, to attract

copyright the compilation must not be original. Article 10 (2) of the
TRIPS states that compilation of data or other material, whether in
machine, readable or other form, which by reason of their selection or
arrangement of their contents constitute intellectual creations shall be
protected as such. Such protection, which shall not extend to the data or
material itself, shall be without prejudice to any copyright subsisting in
the data or material itself.
The Copyright and Performance Rights Act defines ‘compilation’ as
a collection or assembly of works or other material or data which by
reason of selection or arrangement of the contents of the collection or
assembly constitutes a product of creativity.111 Copyright protection of
the compilation focuses on the second requirement dealing with the
manner in which the collected materials or facts have been selected or
arranged. Thus, the Copyright and Performance Rights Act’s principal
focus is on whether the selection or arrangement of the materials or facts
is sufficiently original to merit protection.
In the case of Feist Publications Inc. v. Rural Telephone Service Co.
Inc.112, Justice O’Connor stated for the Court as follows:

This case concerns the interaction of two well-established

propositions. The first is that facts are not copyrightable;
the other, that compilations of facts generally are… There
is an undeniable tension between these two propositions.
Many compilations consist of nothing but raw data; that
is, wholly factual information not accompanied by any
original written expression. On what basis may one claim
a copyright in such a work? Common sense tells us that
100 uncopyrightable facts do not magically change their
status when gathered together in one place. Yet copyright
law seems to contemplate that compilations that consist
exclusively of facts are potentially within the scope.
110
S. 8 (1)(b), Copyright and Performance Rights Act.
111
Supra note 38.
112
499 US 240; US Supreme Court, 1991.
50 INTELLECTUAL PROPERTY LAW

The key to resolving the tension lies in understanding

why facts are not copyrightable. The sine qua non of
copyright is originality. To qualify for copyright protection,
a work must be original to the author. … Original, as the
term is used in copyright, means only that the work was
independently created by the author, as opposed to copied
from other works, and that it possesses at least some
minimal degree of creativity. …To be sure, the requisite
level of creativity is extremely low; even a slight amount
will suffice. The vast majority of works make the grade
quite easily, as they some creative spark, ‘no matter how
crude, humble or obvious’ it might be. …Originality does
not signify novelty; a work may be original even though it
closely resembles other works, so long as similarity is
fortuitous, not the result of copying. To illustrate, assume
that two poets, each ignorant of the other, compose identical
poems. Neither work is novel, yet both are original and
hence copyrightable.
...Factual compilations may possess the requisite
originality. The compilation author typically chooses which
facts to include, in what order to place them, and how to
arrange the collected data so that they may be used
effectively by readers. These choices as to selection and
arrangement, so long as they may be used effectively by
readers. These choices as to selection and arrangement, so
long as they are made independently by the compiler and
entail a minimal degree of creativity, are sufficiently
original that Congress may protect such compilations
through the copyright laws… Thus, even a directory that
contains absolutely no protectible written expression, only
facts, meets the constitutional minimum for copyright
protection if it features an original selection or
arrangement…
This protection is subject to an important limitation.
The mere fact that a work is copyrighted does not mean
that every element of the work may be protected.
Originality remains the sine qua non of copyright;
accordingly, copyright protection may extend only to those
components of a work that are original to the author. Thus,
if the compilation by author clothes facts with an original
collocation of words, he or she may be able to claim a
copyright in this written expression.
 SUBSISTENCE OF COPYRIGHT 51

Section 101 defines a ‘compilation’ as ‘a work formed

by the collection and assembly of pre-existing materials
or of data that are selected, coordinated, or arranged in
such a way that the resulting work, as a whole, constitutes
an original work of authorship.’ …Did Feist, by taking
1,309 names, towns, and telephone numbers from Rural’s
white pages, copy anything that was ‘original’ to Rural?
Certainly, the raw data does not satisfy the originality
requirement. Rural may have been first to discover and
report the names, towns, and telephone numbers of its
subscribers, but this data does not owe its origin to Rural.
Rather, these bits of information are uncopyrightable facts,
they existed before Rural reported them, and would have
continued to exist if Rural had never published a telephone
directory. The originality requirement rules out protecting
names, addresses, and telephone numbers of which the
plaintiff, by no stretch of the imagination, could be called
the author.
The question that remains is whether Rural selected,
coordinated, or arranged these uncopyrightable facts in an
original way. As mentioned, originality is not a stringent
standard; it does not require that facts be presented in an
innovative or surprising way. It is equally true, however,
that the selection and arrangement of facts cannot be so
mechanical or routine as to require no creativity
whatsoever. The standard of originality is low, but it does
exist.
Rural’s selection of listings could not be more obvious:
it publishes the most basic information; name, town, and
telephone number; about each person who applies to it for
telephone service. This is ‘selection’ of a sort, but it lacks
the modicum of creativity necessary to transform mere
selection into copyrightable expression. Rural expended
sufficient effort to make the white pages directory useful,
but insufficient to make it original. Nor can Rural claim
originality in its coordination and arrangement of facts.
The white pages do nothing more than list Rural’s
subscribers in alphabetical order. This arrangement may,
technically speaking, owe its origin to Rural; no one
disputes that Rural undertook the task of alphabetising the
names itself. But there is nothing remotely creative about
arranging names alphabetically in a white pages directory.
It is an age-old practice, firmly rooted in tradition and so
52 INTELLECTUAL PROPERTY LAW

commonplace that it has come to be expected as a matter

of course. …It is not only unoriginal, it is practically
inevitable. This time-honored tradition does not possess
the minimal creative spark required by the Copyright Act
and the Constitution.113

Derivative Works

Generally speaking, derivative works may be defined as works that are

based on prior works such as a translation, musical arrangement, motion
picture version, sound recording or any other form in which a work may
be recast, transformed or adapted. The Berne Convention114 mentions
five categories of production which may be classified as derivative works,
namely translations, adaptations, arrangements of music, other alterations
of a literary or artistic work and collections of literary or artistic works.
Though derivative works are based on original literary, dramatic,
musical and artistic works, sometimes, a derivative work is not based on
any one of the ‘original’ works. If, for example, one records the noise of
bird, the recording is a sound recording and will attract copyright.
Derivative or entrepreneurial works consists of sound recordings, films
or audiovisual, broadcasts or cable programmes. Copyright law extends
protection to derivative works in order to promote and protect the
commercial exploitation of these works. Derivative rights give investors
and entrepreneurs protection for their financial investment in copyright
exploitation. Besides, derivative rights grant investors and entrepreneurs
involved in derivative works protection to take direct action in case of
infringement. If we take an example of a film, it may have separate
copyrights in the music, the lyrics to the songs and the dramatic parts of
the film, belonging to different persons. If a part of the film is copied
without authorisation, the owner of the copyright in the film can sue,
otherwise it would be necessary to identify which rights were affected
and who owned those rights and what relationships existed between those
persons and the owner of the film. The situation could become complex
and this could work to the detriment of the film industry in that the ensuing
confusion could make it easier for the film piracy to flourish. If, however,
the owner of the copyright in a film successfully sues for infringement of
copyright, he may distribute part of the award in damages to the various
copyright owners in accordance with the pre-existing contractual
arrangements.
It should be submitted that compared to other ‘original’ works of
copyright, derivative works give rise to far fewer problems concerning
113
Vaver, D., Principles of Copyright: Cases and Materials. Geneva: WIPO & UNDP (2002), pp. 41-43.
114
Article 2 (3)(5).
 SUBSISTENCE OF COPYRIGHT 53

the question of copyright subsistence. There is no requirement under the

Copyright and Performance Rights Act that these works be original in
order to qualify for copyright protection.115

Sound Recordings

Under the Copyright and Performance Rights Act, sound recording is

defined as a recording of sounds, from which the sounds may be
reproduced; or a recording of the whole or any part of a literary or musical
work, from which sounds reproducing the work may be produced,
regardless of the medium on which the recording is made or the method
by which the sounds are reproduced or produced.116 It is important to
note that the Act deliberately uses the word ‘sound’ and not ‘music’, so
that recording of non-musical sounds, such as a person reciting a passage
from a book or a poem, falls within the definition of sound recording.
It is obvious that the sound which is recorded may include the whole
or part of a literary, musical or dramatic work, but copyright will not
subsist in a sound recording to the extent that it is from a previous
recording.117 In the music industry, the copyright will subsist in the master
copy of the recording. The master copy is used to produce the copies on
sale to the public. CDs and cassettes do not attract their own copyright,
but are nevertheless protected indirectly through the copyright in the
master copy.
It is worth noting that each recording made independently will attract
its own copyright. Therefore, several persons making recordings of the
same thing at the same time will each acquire his own copyright in his
recording, and can sue for infringement if someone makes a copy of
their recording without permission.

Films

The Copyright and Performance Rights Act does not define the term
‘film’. However, the term ‘film’ is included in the definition of audiovisual
work. ‘Audiovisual work’ is defined as the aggregate of a series of related
visual images, together with accompanying sounds, if any, which is
capable of being shown as a moving picture by means of a mechanical,
electronic or other device and irrespective of the nature of the material
support on which the visual images and sounds are carried, but does not
include broadcast.118
Like sound recordings, merely copying an old film does not bring
about new copyright, as copyright is held not to subsist in film that is, or
115
Supra note 64.
116
Supra note 38.
117
Supra note 17.
118
Supra note 38.
54 INTELLECTUAL PROPERTY LAW

to the extent that it is, a copy taken from a previous film.119 It should be
noted that only the master copy of a film will attract copyright protection.
This rule is based on the same principle as the protection of the master
copy under sound recordings.

Broadcasts

Copyright and Performance Rights Act grants copyright protection to

broadcasts and cable programmes. It defines broadcasts as follows:
(a) Used as a noun, it means an aggregate of sounds, or of sounds
and visual images, or other information, embodied in a programme
as transmitted by broadcasting; and
(b) Used as a verb, it means to transmit, by the emission of electro-
magnetic energy otherwise than over a path that is provided by a
material substance, for reception by members of the public, visual
images or sounds, or both, capable of being received by members
of the public in possession of suitable apparatus, regardless of
whether:
(i) the apparatus includes special decoding devices;
(ii) the members of the public are in Zambia or elsewhere;
(iii) the electro-magnetic energy is carried, after the initial
transmission but before it is received by members of the
public, on a path provided by a material substance; or
(iv) any member of the public actually receives the images or
sounds.
It is worth noting that at times a broadcast or transmission is encrypted.
This means that the sound and image are emitted in a way which will
result in a distorted image and sound being produced on a normal
television set. This is often done by commercial satellite broadcasts, such
as Multi Choice who charge fees to viewers. One has to subscribe to the
service and one receives a decoder to recreate the normal sound and
image. These broadcasts can be considered as capable of being received
lawfully if the decoding equipment has been made available to members
of the public by or with the authority of the person making the
transmission.
Like sound recording and films, copyright does not subsist in a
broadcast which infringes or to the extent that it infringes the copyright
in another re-broadcast or a cable programme.120

Cable Programmes

A ‘cable programme’ is defined as the aggregate of sounds, or of sounds

and visual images, or other information, embodied in a programme as
119
Supra note 17.
120
S. 17 (5)(a)(b), Copyright and Performance Rights Act.
 SUBSISTENCE OF COPYRIGHT 55

transmitted by a cable programme service.121 This definition is more or

less the same as that of a broadcast. However, the difference between a
cable programme service and a broadcast is that a cable programme
service is a transmission by means of a telecommunications system other
than wireless telegraphy, for example, by cables laid in the ground,
whereas a broadcast is a transmission by wireless telegraphy, that is, over
the airwaves.
‘Cable programme service’ is defined by the Copyright and
Performance Rights Act122 as a service that transmits, by the emission of
electronic-magnet energy over a path that is provided by a material
substance, for reception by members of the public, visual images or
sounds, or both, capable of being received by members of the public in
possession of suitable apparatus, regardless of whether:
(i) the apparatus includes special decoding devices;
(ii) the members of the public are in Zambia or elsewhere; or
(iii) any member of the public actually receives the images or sounds.
A cable programme service is, therefore, a service which consists wholly
or mainly in sending sounds, visual or other information for reception at
two or more places or for presentation to members of the public. It must
be stated that it is the cable programme that attracts copyright protection,
and not the cable programme service.123 Like a broadcast, copyright does
not subsist in a cable programme which infringes or to the extent that it
infringes the copyright in another cable programme.124

Typographical Arrangements of Published Editions

The Copyright and Performance Rights Act125 provides for the subsistence
of copyright in typographical arrangement of published editions of literary
works. The type and size of the letters used and the number of words on
a page and the place of illustrations in relation to the text are all examples
of typographical arrangements.
The typographical arrangement of copyright arises in relation to
published editions of the whole or any part of one or more literary,
dramatic or musical works. The copyright however exists only in relation
to the published editions of the whole as it is published by the publisher,
irrespective of how its content is composed. Thus, in Newspaper Licensing
Agency Ltd v. Marks and Spencer Plc,126 the Court held that the copyright
existed in relation to the newspaper, as published, rather than in relation
to the arrangement of individual articles within the newspaper.
121
Supra note 38.
122
Ibid.
123
S. 17 (5)(c)(ii), Copyright and Performance Rights Act.
124
S. 17 (5)(a)(c), Copyright and Performance Rights Act.
125
S. 8 (1)(g), Copyright and Performance Rights Act.
126
[2001] Ch. 257; [2000] All ER 239.
56 INTELLECTUAL PROPERTY LAW

The typographical arrangement copyright does not arise in relation to

artistic works and does not subsist in the typographical arrangement of a
published edition if or to the extent that it simply reproduces the
typographical arrangement of a previous edition.127

State Copyright

The Copyright and Performance Rights Act grants copyright protection

to the works created by government. However, the Copyright and
Performance Rights Act denies copyright protection to Bills introduced
into Parliament or in Acts of Parliament.128 If a work is produced by a
public officer or employee of the Government of Zambia or of a Berne
Convention country in the course of his employment, the government
concerned is the first owner of the copyright.129

Works That Violate Public Order

Though the Penal Code prohibits the publication of literary works which
are obscene,130 the Copyright and Performance Rights Act does not address
the issue of whether or not copyright can or does exist in a work which
may be considered to violate the public order. The issue of works that
may violate public order are however dealt with in the Berne Convention
to which Zambia is a party.
Article 17 of the Berne Convention provides that Berne’s provisions
do not affect members’ rights to control, or to prohibit, by legislation or
regulation, the circulation, presentation, or exhibition of any work or
production in regard to which the competent authority may find it
necessary to exercise that right.
It is submitted that the said provision does not appear to modify what
works must be granted copyright protection under the Berne Convention,
articles 2 and 2bis. Nonetheless, article 17 of the Berne Convention allows
governments to take steps to prevent the circulation or exhibition of works
that are considered, for example, offensive to national standards of public
policy or morality.
Indeed, courts in some jurisdiction have had the opportunity to examine
the subsistence of copyright in a work or enforcement of copyright vis-
a-vis public policy, morality or illegality. In Attorney-General v. Guardian
Newspapers Ltd,131 on leaving his job as a British officer, Peter Wright
wrote and published worldwide a book called Spycatcher about the secret
127
S. 17 (6)(a), Copyright and Performance Rights Act.
128
S. 8 (2), Copyright and Performance Rights Act.
129
S. 12 (2), Copyright and Performance Rights Act.
130
S. 177, Penal Code, Cap 87.
131
[1990] AC 109.
 SUBSISTENCE OF COPYRIGHT 57

workings of British intelligence agencies. The publication broke Wright’s

contractual obligation of loyalty to the UK Government, as well as the
Official Secrets Act of 1911. The UK Government sought an injunction
against some British newspapers for participating in Wright’s breach of
confidence by publishing, or threatening to publish, extracts from the
book. This order was, however, refused because an injunction could no
longer prevent the publication of secrets that had by then circulated widely
throughout the world.
The Court in determining the case made two suggestions, namely:
1. The UK Government might be entitled to the copyright in the
book, even though it was written after Wright had left the
Government’s employ. Should not an ex-employer own
copyright in works written by ex-employees who broke
continuing obligations of secrecy?
2. If Wright did retain his copyright, neither he nor anybody
claiming could enforce the copyright in a UK court because of
his illegal acts.
On the aforesaid suggestions Lord Jauncey stated as follows:

The courts of the United Kingdom will not enforce

copyright claims in relation to every original literary work.
Equitable relief has been refused where the work contained
false statements calculated to deceive the public… and
where the work was of a grossly immoral tendency… In a
passing-off action (in 1906, a Scottish court] refused relief
to a company which had perpetrated a deliberate fraud on
the public by a series of false factual statements about its
product…: ‘No man is entitled to obtain the aid of the law
to protect him in carrying on a fraudulent trade… The
courts have in the past given effect to the principle which
allows nothing to the man who comes before the seat of
justice with a turpis causa.’
The publication of Spycatcher was against the public
interest and was in breach of the duty of confidence which
Peter Wright owed to the Crown. His action reeked of
turpitude. It is in these circumstances inconceivable that a
United Kingdom court would afford to him or his
publishers any protection in relation to any copyright which
either of them may possess in the book. That being so,
anyone can copy Spycatcher in whole or in part without
fear of effective restraint by Peter Wright or those claiming
to derive title from him. It follows that the future ability of
the Sunday Times to serialise Spycatcher does not derive
58 INTELLECTUAL PROPERTY LAW

solely from their licence. They are free to publish without

reference thereto and are thus for practical purposes in no
better position than any other newspapers.

Similarly, in the case of Hyde Park Residence Ltd v. Yelland,132 United

Kingdom Court of Appeal refused to enforce copyright on the ground of
public policy. In that case Mr Mohamed Al Fayed claimed in a book on
the death of Princess Diana that his son Dodi and Diana had visited Al
Fayed’s Paris home on a particular occasion for some two hours. Al Fayed
repeated the claim on several occasions. Shortly after a newspaper
published a report repeating this claim, another newspaper The Sun
published stills taken from a security camera that had recorded the couple’s
visit to Al Fayed’s house. The stills showed the time the couple came and
went, and indicated the visit had lasted only twenty-eight minutes.
The Sun had bought the stills from a security officer formerly
employed by Hyde Park, a company controlled by Al Fayed. The officer
had positioned the security cameras on the day and had taken stills at the
request of another Al Fayed employee shortly after the accident. The
officer had taken a copy of the stills when he resigned, because he claimed
that he and others were being pressured by Al Fayed to lie about the
timing of the visit. The stills were published to support his version of the
story. Hyde Park sued for copyright infringement. The first instance court
accepted the newspaper’s defence that public interest overrode copyright,
but the Court of Appeal allowed the Appeal.
Lord Aldous in the Court of Appeal stated as follows:

In my view, the examples given by the judge do show why

courts refuse in certain circumstances to enforce copyright.
To enforce copyright in a document prepared for a bank
robbery would offend against the principles of public order
and morality and a court would be amply justified in
refusing to enforce copyright in such a document under its
inherent jurisdiction. Such an exercise of the court’s
inherent jurisdiction is akin to a refusal to enforce an
agreement which was illegal. As to the right of the police
to publish a picture of a robber without permission of a
copyright owner, I have some doubts as to whether in all
cases they could lawfully do so, but no court would allow
its process to be used to obstruct the course of justice. A
court has, under its inherent jurisdiction, the right to refuse
to enforce an action for infringement of copyright just as
it can refuse to enforce a contract or other cause of action
132
[2001] Ch. 143; [2001] 3 WLR 215.
 SUBSISTENCE OF COPYRIGHT 59

which offends against public policy of the law. The more

difficult question is to define the circumstances when it is
the appropriate course.
…Article 10 of the Berne Convention allows quotations
from copyright works provided that the quotation is
compatible with fair practice. … However, there is no
general power for courts of the signatories to such
Conventions to refuse to enforce copyright if it is thought
to be in the public interest of that State that it should not
be enforced. …The circumstances where it is against public
policy of the law to use the court’s procedure to enforce
copyright are, I suspect, not capable of definition. However,
it must be remembered that copyright is assignable and
therefore circumstances must derive from the work in
question, not ownership of the copyright. In my view, a
court would be entitled to refuse to enforce copyright if
the work is:
(i) immoral, scandalous or contrary to family life;
(ii) injurious to public life, public health and safety
or administration of justice;
(iii) incites or encourages others to act in a way
referred to in (ii).
The defence’s submission that the driveways stills needed
to be published in the public interest to expose the falsity
of the statements made by Mr Al Fayed has no basis in
law or logic. Perhaps the driveways stills were of interest
to the public, but there was no need in the public interest
in having them published when the information could have
been made publicly available by The Sun without
infringement of the copyright.133

It is submitted that though some jurisdiction such as Zambia and the

United Kingdom, as shown in the above cases, will refuse to enforce
copyright, if the work itself is against public policy, courts in other
jurisdictions, such as the United States and Canada, have however,
enforced copyright even when the work is against public policy or is
obscene. Thus, in Baron v. Hooda,134 the Court stated:

Copyright, of course, does not reside only in artistic or

literary works which are noble, sober and serious, but also
in those which are vulgar, humorous or even gross.
133
Supra note 113, at p. 45.
134
(1987) 17 CPR (3d) 161; Canada Federal Court, Trial Division.
60 INTELLECTUAL PROPERTY LAW

Similarly, In Mitchell Brothers Film Group v. Cinema Adult Theater,135

Godbold, J. stated as follows:

…There is no other statutory language from which it can

be inferred that Congress intended that the obscene
materials could be copyrighted. It appears to us that
Congress has concluded that the constitutional purpose of
its copyright power, ‘to promote the Progress of Science
and useful Arts,’… is best served by allowing all creative
works to be accorded copyright protection regardless of
subject matter or content, trusting the public taste to reward
creators of useful works and deny creators of useless works
any reward. Congress has decided that the constitutional
goal of encouraging creativity would not be best served if
an author had to concern himself not only with the
marketability of his work but also with the judgment of
government officials regarding the worth of the work.
The purpose underlying the constitutional grant of
power to Congress to protect writings is the promotion of
original writings, an invitation to creativity. This is an
expansive purpose with no stated limitations of taste or
governmental acceptability. Such restraints, if imposed,
would be antithetical to promotion of creativity. The
pursuit of creativity require freedom to explore into the
gray areas, to the cutting edge, and even beyond. Obscenity,
on the other hand, is a limiting doctrine constricting the
scope of acceptability of the written word. Denying
copyright protection to works adjudged obscene by the
standards of one era would result in lack of copyright
protection (and thus lack of financial incentive to create)
for works that later generations might consider to be not
only non-obscene but even of great literary merit. Many
works that are today held in high regard have been adjudged
obscene in previous era.
We can only conclude that we must read the facially
all-inclusive 1909 copyright statute as containing no
explicit or implicit bar to the copyrighting of obscene
materials, and as therefore providing for the copyright of
all creative works, obscene or non-obscene, that otherwise
meet the requirements of the Copyright Act.136

135
604 F.2d 852; US Court of Appeals, 5th Circuit 1979.
136
Supra note 113, at pp. 48 - 49.
 61

Chapter Five

PROTECTION CRITERIA

Introduction

A work comes into existence in the creator’s or author’s mind at or during

a certain time, but generally it will only have the possibility of being
protected by copyright when it satisfies certain criteria, which may be
called the criteria of form, content and status. Besides, there are cases
where protection depends on fulfilment of formalities, such as registration,
deposit of copies and notices affixed to the copies. Although such cases
are rare, it may be nonetheless necessary to satisfy formalities in certain
countries in order to bring actions in case of infringement or to enjoy
procedural advantages.

Criterion of Form

For a work to attract copyright protection it must be in a certain form.

Thus a literary and musical work will be expressed in the form of words.
In case of dramatic work the expression is in form of action rather than
words. As for artistic work, they may be expressed in the form of paintings,
drawings, sculptures, photographs or works of architecture. The reason
for the requirement that a copyright work be in a certain form is because
of the basic copyright principle namely that, copyright does not protect
ideas but the expression of ideas.
While a work may fulfil the criterion of form in so far as it is
perceptibly expressed, Zambia’s copyright system like any other common
law system of copyright requires that the work must be fixed in some
material form in order to receive copyright protection. Article 2 (2) of
the Berne Convention provides that Union countries may prescribe that
works in general, or any specified categories of works, shall not be
protected unless they have been fixed in some material form. Likewise
the Copyright and Performance Rights Act, Chapter 406 of the Laws of
Zambia, provides that copyright shall not subsist in a literary or musical
work or in a computer programme unless and until recorded in writing or
in some other form.137 It will be noted that the Copyright Act does not
specifically apply the fixation criterion in respect of artistic works.
Possibly, this is because it was thought that all the categories of artistic
works mentioned in section 2 of the Copyright Act, must have a material
form in order to exist.
137
Supra note 109.
62 INTELLECTUAL PROPERTY LAW

It is worth noting that there is a distinction between the criterion of

fixation (where it is required), in the context of establishing subsistence
of copyright, and reproduction (copying) in the context of infringement.
It is submitted that, where the law requires fixation for the subsistence of
protection, copyright in the work once fixed will continue even if the
fixation is itself destroyed. Therefore, where the poet reads a poem from
the sole manuscript of the work, and then destroys the manuscript, and a
member of the audience remembers the words of the poem and publishes
them, there will be infringement, if the work satisfies the other necessary
protection criteria.
It is interesting to note that while the common law countries such as
Zambia, United Kingdom and Australia, have fixation criterion, that is
to say, a work is not protected unless it is fixed or recorded in some
material form, the civil law countries like France, do not require that a
work be fixed or recorded in a material form to attract copyright
protection.
Thus, under common law a person who gives an impromptu talk or
interview may have no copyright in it unless it is recorded. In Walter v.
Lane,138 Lord Rosebery gave a public speech. A reporter from The Times
newspaper attended and took down the speech verbatim in shorthand. A
verbatim report was published in The Times. Subsequently, the defendant
compiled a book of Lord Rosebery’s speech and, without the consent of
The Times, included the report of Lord Rosebery’s speech, the source of
such report being The Times newspaper.
The question that had to be determined by the Court was; did the
reporter of Lord Rosebery’s words have any copyright in the report? The
House of Lords held that the reporter had copyright in the report.
Lord Halsbury stated:

Although I think in these compositions there is literary

merit and intellectual labour, yet the statute seems to me
to require neither, nor originality either in thought or in
language.139

Lord Davey stated:

It was of course open to any other reporter to compose his

own report of Lord Rosebery’s speech, and to any other
newspaper or book to publish that report; but it is a sound
principle that a man shall not avail himself of another’s
skills, labour, and expense by copying the written product
thereof.140
138
Supra note 86.
139
Ibid., at p. 548.
140
Ibid., at p. 552.
 PROTECTION CRITERIA 63

It should be stated that the decision of the House of Lords in Walter v.

Lane141 established that the mere reporting of the words of another gives
rise to a reporter’s copyright so long as skill and judgment have been
employed in the composition of that report.
In the case of Express Newspapers Plc v. News (UK) Plc,142 the plaintiff
was the proprietor of The Daily Express and The Daily Star newspapers,
and the defendant was the proprietor of the rival paper, Today. The
litigation involved ‘tit for tat’ copying of sensationalist interviews
published in the two newspapers. The plaintiff published an interview
with a Mrs Bordes in The Daily Express and the defendant used quotations
from the interview without acknowledgement in its newspaper of the
same day. Some months later the defendant’s newspaper published an
interview with a Miss Ogilvy and quotations from this story appeared in
The Daily Star the next day. The plaintiff commenced proceedings for
copyright infringement in respect of the first incident and the defendant
counterclaimed in respect of the second.
Browne-Wilkinson stated as follows:

… if skill, labour and judgment was put into the reporting

of Miss Ogilvy’s words in the Today newspaper, copyright
will subsist in the report of those words even though the
words themselves are Miss Ogilvy’s.

The evidence does show that there was an interview lasting over eight
and a half hours with Miss Ogilvy. The skills of the reporter in this case
are quite different from and much greater than those shown in the Lord
Rosebery’s speech case. It was not simply taking down the words of
somebody who was already going public by speaking publicly. Although
Miss Ogilvy had approached the reporter, the whole conduct of the
interview and the selection of quotations involves at least as much (and
in my view greater) skill and judgment than merely taking down the
words of a speaker at a public speech. Therefore, in my judgment, in the
absence of any other defence, it has been shown that Today does enjoy
reporter’s copyright in the words of Miss Ogilvy.
In Falwell v. Penthouse International Ltd,143 the plaintiff, a well-known
evangelical Christian minister with a large television following, gave an
interview to two freelance journalists, who sold their transcript of it to
the defendant, the owner of Penthouse magazine. When Penthouse
published the interview, the plaintiff sued for copyright infringement,
claiming that he had specifically refused his interview to be published in
141
Supra note 86.
142
[1991] FSR 36.
143
215 USPQ 975 (US District Court, West Virginia, 1981).
64 INTELLECTUAL PROPERTY LAW

a magazine of which he disapproved because he considered it obscene.

The defendant denied that the plaintiff had any copyright in his words.
The Chief Judge Turk in determining on whether or not the plaintiff’s
copyright in the interview has been infringed stated as follows:

Plaintiff’s claim of copyright presupposes that every

utterance he makes is a valuable property right. If this were
true, the courts would be inundated with claims from
celebrities and public figures, all of whom may argue that
their expressions should also be afforded the extraordinary
protection of copyright. Plaintiff cannot seriously contend
that each of his responses in the published interview setting
forth his ideas and opinions is a product of his intellectual
labours which should be recognised as a literary, or even
intellectual, creation. There is nothing concrete which
distinguishes his particular expression of his ideas from
the ordinary.
However, different or unique plaintiff’s thoughts or
opinions may be, the expression of these opinions or
thoughts is too general and abstract to rise to the level of a
literary or intellectual creation that may enjoy the protection
of copyright. Although the general subject matter of the
interview may have been outlined in the reporters’ minds
prior to their meeting with plaintiff, the actual dialogue,
including the unprepared responses of plaintiff, was
spontaneous and proceeded in a question and answer
format. There is no defined segregation, either by design
or by implication, of any of plaintiff’s expressions of his
thoughts and opinions on the subjects discussed which
would aid in identifying plaintiff’s purported copyrighted
material.
In the case at bar, plaintiff wilfully and freely
participated in the interview. An interview with members
of the media is not private conversation. Like a press
conference, plaintiff in this action responded to questions
in a spontaneous manner, and not from a carefully prepared
text, or even from notes. Moreover, plaintiff was aware
that his comments were not made in the context of a private
conversation, but rather were destined expressly for
dissemination to the public. Plaintiff is free to pursue a
breach of contract action against the journalists. But he is
trampling upon fundamental constitutional freedoms by
seeking to convert what is essentially a private contractual
 PROTECTION CRITERIA 65

dispute into a broad-based attack on these principles of

freedom of speech and press, which are essential to a free
society.144

Similarly, in Gould Estate v. Stoddart Publishing Co. Ltd,145 a journalist

conducted a number of informal interviews with the then young up-and-
coming pianist Glenn Gould and, after Gould’s death, produced a book
based on these interviews. Gould’s estate unsuccessfully sued for
copyright infringement. After citing from the decision in the case of
Falwell, the first instance judge said:

Here too, the nature of the interview, conducted in informal

settings; at an empty concert hall, at the home of Gould’s
mother and on vacation in the Bahamas; was such that it
was intended to be casual, to catch the spontaneity of Gould
when he was relaxing. The conversation between the two
men was the kind that Gould would have with a friend.
Indeed, Gould and Carroll remained friends for a short
while afterwards. Gould was not delivering a structured
lecture or dictating to the journalist. Rather, the journalist
engaged Gould in easy-going conversation, out of which
emerged comments which provided insights into Gould’s
character and personal life. Gould was making off-hand
comments that he knew could find their way into the public
domain. This is not the kind of discourse which the
Copyright Act intended to protect.146

In National Football League v. McBee & Bruno’s Inc147 telecast signals

of a football match were sent live from the ground to a satellite, from
where the signals descended to a receiving station. At the receiving, station
advertising material was inserted, and the transmission then sent out to
cable service subscribers. The defendant picked up the transmission as it
proceeded from the ground to the satellite before it reached the receiving
station, and then distributed the signals to cable subscribers. The plaintiff
claimed copyright in the telecasts. The defendant argued that they were
not fixed, and therefore not protected. However, the definition of ‘fixed’
in section 101 of the US Copyright Act provides that a work consisting
of sounds, images, or both, that are being transmitted, is ‘fixed’ for the
purposes of the Act, if a fixation of the work is being made simultaneously

144
Supra note 113, at pp. 59 - 60.
145
(1996) 74 CPR (3d) 206, affirmed (1988) 80 CPR (3d) 161 (Canada: Ontario Court of Appeal).
146
Supra note 113, at p. 60.
147
792 F.2d 726 (8th Circuit 1986).
66 INTELLECTUAL PROPERTY LAW

with its transmission. In this case, such a simultaneous fixation was made,
and thus the telecast was protected and the defendant had infringed the
copyright in the telecasts.

Criterion of Content

It must be stated that not all contents of production of the human mind
are protected by copyright. In terms of intellectual property law, there is
a division between material protected by copyright on one hand and
industrial property on the other hand. If a particular human mind
production qualifies that it is a work that may be protected by copyright,
the criterion of content requires that the constituents of the work must
conform to certain copyright rules. Thus the criterion of content
incorporates the fundamental copyright concept that the idea is not
protected, but that the expression of the idea is protectable.
The traditional categories of works protected by copyright are those
generally classified as literary, dramatic, musical, or artistic works.148
Each of these types of work involves disposition of the ‘raw materials’
used. Thus, the literary work involves disposition of words, the dramatic
work; disposition of words together with scenic presentation; the musical
work, disposition of sounds; the artistic work, disposition of lines, colours,
shapes, etc. The raw material is disposed by the author in a process of
selection and arrangement. Thus, results ‘the ordered expression of
thought’ which constitutes the work. To be protected, however, the
respective disposition must conform to two general rules, namely it must
be more than a representation of a mere idea, and it must be original. The
theory of copyright law is to a large extent concerned with the definition
and application of these two rules.149
From the first rule, that the disposition must represent more than a
mere idea, derives the concept that the expression of the idea, but not the
idea itself, is protected by copyright. From the second rule, that the work
must be original, has evolved the concept of protection of works
displaying ‘the author’s own intellectual creation’.150

Ideas v. Expression Principle

As stated above, copyright law does not protect the ideas, but the
expression of the ideas. Article 9 of the Trade Related Aspects of
Intellectual Property (TRIPS) Agreement provides that copyright
protection shall extend to expressions and not to ideas, procedures,
methods of operation or mathematical concepts as such.
148
Supra note 64.
149
Supra note 15, at pp. 250-251.
150
Ibid., at p. 251.
 PROTECTION CRITERIA 67

In Designers Guild Ltd v. Russell Williams (Textiles) Ltd151 Lord

Hoffman stated:

The distinction between expression and ideas needs to be

handled with care. What does it mean? It depends on what
you mean by ‘ideas’. Plainly there can be no copyright in
an idea which is merely in the head, which has not been
expressed in copyrightable form, as a literary, dramatic,
musical or artistic work. But the distinction between ideas
and expression cannot mean anything so trivial as that. On
the other hand, every element in the expression of an artistic
work is the expression of an idea on the part of the author.
It represents her choice to paint stripes rather than polka
dots, flowers rather than tadpoles, use one colour and brush
technique rather than another, and so on. The expression
of these ideas is protected.
The distinction between ideas and the expression of
ideas supports two quite distinct propositions. The first is
that a copyright work may express certain ideas which are
not protected because they have no connection with the
literary, dramatic, musical or artistic nature of the work. It
is on this ground that, for example, a literary work which
describes a system or invention does not entitle the author
to claim protection for his system or invention as such.
The same is true of an inventive concept expressed in an
artistic work. However striking or original it may be, others
are, in the absence of patent protection, free to express it
in works of their own.
The other proposition is that certain ideas expressed
by a copyright work may not be protected because,
although they are ideas of a literary, dramatic or artistic
nature, they are not original, or so commonplace as not to
form a substantial part of the work. It is on this ground
that the mere notion of combining stripes and flowers
would not have amounted to a substantial part of the
plaintiff’s work. At that level of abstraction, the idea,
though expressed in the design, would not have represented
sufficient of the author’s skill and labour as to attract
copyright protection.
Generally speaking, in cases of artistic copyright, the
more abstract and simple the copied idea, the less likely it
151
[2000] 1 WLR 2416, HL.
68 INTELLECTUAL PROPERTY LAW

is to constitute a substantial part. Originality, in the sense

of the contribution of the author’s skill and labour, tends
to lie in the detail with which the basic idea is presented.
In this case, however, the elements which the judge found
to have been copied went well beyond the banal and I think
that the judge was amply justified in deciding that they
formed a substantial part of the originality of the work.152

In the case of Hoehling v. Universal City Studios Inc,153 it was held that
copyright does not subsist in history, historical incidents or facts. In that
case Hoehling wrote and published a book in which he theorised that the
crash of the Hindenburg airship in 1936, resulted from sabotage by one
Erich Spehl, a crew member who had placed a bomb on the vessel. The
defendant film company, with knowledge of Hoehling’s book, produced
a film which was based on the same theory and which depicted some of
the same incidents as the book. Hoehling’s claimed for copyright
infringement but failed.
Chief Justice Kaufman for the Court stated:

…In Rosemont Enterprises, Inc. v. Random, Inc., 1966,

we held that the defendant’s biography of Howard Hughes
did not infringe an earlier biography of the reclusive alleged
billionaire. Although the plots of the two works were
necessarily similar, there could be no infringement because
of the ‘public benefit in encouraging the development of
historical and biographical works and their public
distribution.’ There cannot be any such thing as copyright
in the order of presentation of the facts, nor, indeed, in
their selection. In the instant case, the hypothesis that Eric
Spehl destroyed the Hindenburg is based entirely on the
interpretation of historical facts. Such an historical
interpretation, whether or not it originated with Mr
Hoehling, is not protected by his copyright and can be
freely used by subsequent authors. The same reasoning
governs Hoehling’s claim that a number of specific facts,
ascertained through his personal research, were copied by
appellants. Factual information is in the public domain.
Each appellant had the right to ‘avail himself of the facts
contained’ in Hoehling’s book and to ‘use such information,
whether correct or incorrect, in his own literary work.’

152
Supra note 113, at pp. 14 - 15.
153
618 F.2d 97 (US Court of Appeals, 2nd Circuit 1980).
 PROTECTION CRITERIA 69

A verbatim reproduction of another work, of course,

even in the realm of non-fiction, is actionable as copyright
infringement. In works devoted to historical subjects, it is
our view that a second author may make significant use of
prior work, so long as he does not bodily appropriate the
expression of another. This principle is justified by the
fundamental policy underlying the copyright laws, the
encouragement of contributions to recorded knowledge.
Knowledge is expanded as well by granting new authors
of historical works a relatively free hand to build upon the
work of their predecessors.154

It should be stated that copyright does not subsist in scientific principles

or descriptions of an art. Thus, in Baker v. Selden,155 Selden wrote, and
registered the copyright for a book explaining how to apply the principles
of double-entry bookkeeping so that an entire day’s or month’s operation
could be seen at a single glance on a page. The book included some
blank forms demonstrating the principle. Baker produced some forms
using the same principle, but with different headings and differently
arranged columns. Selden’s estate brought an action for copyright
infringement against Baker, but he was unsuccessful.
Bradley, J. for the Court stated as follows:

There is a clear distinction between the book as such and

the art which it is intended to illustrate. The copyright of
the book, if not pirated from other works, would be valid
without regard to novelty, or want of novelty, of its subject
matter. The novelty of the art or thing described or
explained has nothing to do with the validity of the
copyright. To give to the author of the book an exclusive
property described therein, when no examination of its
novelty has ever been officially made, would be a surprise
and a fraud upon the public. That is the province of letters-
patent, not of copyright.
The difference between letters-patent and copyright may
be illustrated by reference to the subjects just enumerated.
Take the case of medicines. Certain mixtures are found to
be of great value in the healing art. If the discoverer writes
and publishes a book on the subject matter, he gains no
exclusive right to the manufacture and sale of the medicine;
he gives that to the public. If he desires to acquire such
154
Supra note 113, at p. 16.
155
101 US 99 (US Supreme Court, 1879).
70 INTELLECTUAL PROPERTY LAW

exclusive right, he must obtain a patent for the mixture as

a new art, manufacture, or composition of matter. He may
copyright his book, if he pleases; but that only secures to
him the exclusive right of printing and publishing his book.
The copyright of a work on mathematical science cannot
give the author an exclusive right to the methods of
operation which he propounds, or to the diagrams which
he employs to explain them, so as to prevent an engineer
from using them whenever occasion requires. The very
object of publishing a book on science or the useful arts is
to communicate to the world the useful knowledge which
it contains. But this object would be frustrated if the
knowledge could not be used without incurring the guilt
of piracy of the book.
Recurring to the case before us, we observe that Selden,
by his books, explained and described a peculiar system
of book-keeping, and illustrated his method by means of
ruled lines and blank columns, with proper headings on a
page, or on successive pages. Now, whilst no one has a
right to print or publish his book, or any material part
thereof, as a book intended to convey instruction in the
art, any person may practise and use the art itself which he
has described and illustrated therein. The use of the art is a
totally different thing from a publication of the book
explaining it. The copyright of a book on book-keeping
cannot secure the exclusive right to make, sell, and use
account-books prepared upon the plan set forth in such
book. As the art was not patented, it is open and free to the
use of the public. And, of course, in using the art, the ruled
lines and headings of accounts must necessarily be used
as incident to it.156

It is a principle of copyright law that copyright does not subsist in methods

of operation. Thus in Lotus Development Corporation v. Borland
International Inc.157, the plaintiff was the copyright owner of the Lotus
1-2-3 spreadsheet computer programme. The defendant developed a
spreadsheet computer program called Quattro Pro to compete with the
Lotus 1-2-3. It wanted users who have worked with the Lotus programme
not to spend time learning new commands for Quattro Pro. So the
defendant included an optional menu interface for Lotus users. The
computer programme that ran this menu was not copied from Lotus. The
plaintiff sued for copyright infringement.
156
Supra note, at pp. 17 - 18.
157
49 F.3d 807 (US Court of Appeals, 1st Circuit, 1995); affirmed in 116 S. Ct. 804 (US Supreme Court, 1996).
 PROTECTION CRITERIA 71

Stahl, J. for the majority of the Court of Appeals stated:

We think that ‘method of operation,’ as that term is used

in US Copyright Act, s.102(b), refers to the means by which
a person operates something, whether it be a car, a food
processor, or a computer. Thus a text describing how to
operate something would not extend copyright protection
to the method of operation itself; other people would be
free to employ that method and to describe it in their own
words. Similarly, if a new method of operation is used
rather than described, other people would still be free to
employ or describe that method. We hold that the Lotus
menu command hierarchy is an uncopyrightable ‘method
of operation.’ The Lotus menu command hierarchy
provides the means by which users control and operate
Lotus 1-2-3. If users wish to copy material, for example,
they use the ‘Copy’ command. If users wish to print
material, they use the ‘print’ command. Users must use
the command terms to tell the computer what to do.
Without the menu command hierarchy, users would not
be able to access and control, or indeed make use of, Lotus
1-2-3’s functional capabilities.

Originality

For a work to attract copyright protection it must be original. Hence

works that lack originality no matter how good or brilliant they may be
will not be protected by copyright. The Copyright and Performance Rights
Act does not define the term originality. However, judicial interpretation
has considered the term originality to mean that the work must not be
merely a copy of a previous work159 , and secondly that the work is a
result of the investment of individual skill and labour or judgment.159

Criterion of Status

For copyright to subsist in a work, under the Copyright and Performance

Rights Act, the qualification requirements must be satisfied. This can be
achieved either by reference to the author of the work160 or by reference
to the country or place and date of publication,161 or in the case of a
broadcast or cable programme, the country of first transmission.162
158
London Press Ltd v. University Tutorial Press Ltd [1916] 2 Ch. 601.
159
Ladbroke (Football) Ltd v. William Hill (Football) Ltd [1964], 1 WLR 273.
160
Supra note 27.
161
S. 9 (1)(b)(c), Copyright and Performance Rights Act.
162
S. 9 (1)(d)(e), Copyright and Performance Rights Act.
72 INTELLECTUAL PROPERTY LAW

Qualification by reference to the author

An original copyright work and derivative work will qualify for copyright
protection if the author of the work was a citizen of, or habitually resident
in Zambia or a Berne Convention country; or a body corporate
incorporated in Zambia or a Berne Convention country.163 A work of
joint authorship also qualifies for copyright protection if at the material
time any of the authors satisfies the requirements for qualification by
reference to the author, and only those authors who satisfy those
requirements will be taken into account for purposes of first ownership
of copyright, duration of copyright and acts which do not constitute
infringements.164
The Berne Convention provides for the protection of works, whether
published or not, for authors who are nationals of one of the countries of
the Berne Convention165 ; or authors who are not nationals of one of the
countries of the Berne Convention for their work first published in one
of those countries, or simultaneously in a country outside the Berne and
in a country of the Berne Convention.166 Authors who are not nationals
of one of the countries of the Berne Convention, but who have habitual
residence in one of those countries are assimilated to be nationals of that
country.167 A work is considered to be published simultaneously in several
countries if it has been published in two or more countries within thirty
days of its first publication.168
Furthermore, article 4 of the Berne Convention provides that the
protection shall apply, even if the conditions of article 3 are not fulfilled,
to authors of cinematographic works, the maker of which has his
headquarters or habitual residence in one of the countries of the Berne
Union; authors of works of architecture erected in a country of the Berne
Union or of other artistic works incorporated in a building or other
structure located in the country of the Union.

Qualification by reference to the country of first publication or

transmission

There is a distinction between transmitted works, namely broadcasts and

cable programmes, and all other categories of works. In the case of the
latter, they qualify for copyright protection if they are made or first
published in Zambia or a Berne Convention country,169 and in case of the
163
Supra note 27.
164
S. 9 (2)(a)(b), Copyright and Performance Rights Act.
165
Article 3 (1)(a), Berne Convention.
166
Article 3 (1)(b), Berne Convention.
167
Article 3 (2), Berne Convention.
168
Article 3 (4), Berne Convention.
169
Supra note 160.
 PROTECTION CRITERIA 73

former they will be protected by copyright if they are first transmitted

from a place in Zambia or Berne Convention country.170 A work will still
be considered first publication in Zambia if it is published simultaneously
within thirty days after the earliest publication in another country that is
not a member of the Berne Convention.171
It should be noted that Copyright and Performance Rights Act172
defines what amounts to a ‘publication’ of a work. Thus, a work, other
than a broadcast or cable programme is published when copies of the
work are made available to the public, whether for gain or not.173
Furthermore, the first publication of a work, either a broadcast or cable
programme, is the earliest publication of the work made with the authority
of the copyright owner; or any publication of a work made with the
consent of the copyright owner within thirty days after the earliest of
such publication.174 Besides any distribution or circulation of a work by
way of sale or rental constitutes making copies of the work available to
the public.175
The Copyright and Performance Rights Act also specifies acts which
do not constitute or amount to publication.176 In case of a literary or
musical work the following do not constitute publication: the performance
of the work or the broadcasting of the work or its inclusion in a cable
programme service other than for the purposes of an electronic retrieval
system.177
As regards the artistic work, the following will not constitute
publication:
(i) the exhibition of the work;
(ii) the making available of a graphic work representing, or of
photographs of, a work of architecture in the form of a building,
or model for a building, a sculpture or a work of artistic
craftsmanship;
(iii) the making available to the public of a film including the work;
or
(iv) the broadcasting of the work or its inclusion in a cable
programme service, other than for the purposes of an electronic
retrieval system.178
As regards audiovisual or sound recording work the following acts do
not constitute publication: the showing or playing of the work in public;

170
S. 9 (1)(a)(b), Copyright and Performance Rights Act.
171
S. 4 (2)(b), Copyright and Performance Rights Act.
172
S. 4, Copyright and Performance Rights Act.
173
S. 4 (1), Copyright and Performance Rights Act.
174
S. 4 (2), Copyright and Performance Rights Act.
175
S. 4 (3), Copyright and Performance Rights Act.
176
S. 4 (4), Copyright and Performance Rights Act.
177
S. 4 (4)(a), Copyright and Performance Rights Act.
178
S. 4 (4)(b), Copyright and Performance Rights Act.
74 INTELLECTUAL PROPERTY LAW

or the broadcasting of the work or its inclusion in a cable programme

service, otherwise than for the purpose of an electronic retrieval system.179
Apart from the protection which the author enjoys under the Copyright
and Performance Rights Act, concerning the status or publication of the
work, the author also equally enjoys protection under the Berne
Convention. Thus the work of the author will attract copyright if the first
publication took place in a Berne Convention country or that the work
was simultaneously published in a country outside the Convention and
in a Convention country.180 The Berne Convention defines the ‘published
works’ as works published with the consent of their authors, whatever
may be the means of manufacture of the copies, provided that the
availability of such copies has been to satisfy the reasonable requirements
of the public, having regard to the nature of the work.181 The Berne
Convention outlines the works which do not constitute publication as the
performance of a dramatic work, dramatico-musical, cinematographic
or musical work, the public recitation of a literary work, the
communication by wire or the broadcasting of literary or artistic works,
the exhibition of a work of art and the construction of architecture.182

Formalities

The general principle of copyright law is that copyright protection arises

automatically on creation of the work, and does not depend upon
registration. The Copyright and Performance Rights Act, makes
registration of copyright work not mandatory. It further provides that the
existence and enforceability of a copyright shall be independent of whether
or not it is registered under the Act.183
Besides article 5 (2) of the Berne Convention provides that the
enjoyment and exercise of these (authors) rights shall not be subject to
any formality; such enjoyment and such exercise shall be independent of
the existence of protection in the country of origin of the work.

179
S. 4 (4)(c), Copyright and Performance Rights Act
180
Article 3 (1), Berne Convention.
181
Article 3 (3), Berne Convention.
182
Ibid.
183
S. 39 (4), Copyright and Performance Rights Act.
 75

Chapter Six

AUTHORSHIP AND OWNERSHIP OF

COPYRIGHT

Introduction

Authorship and ownership are, in relation to copyright, two distinct

concepts, each of which attracts its own peculiar rights, namely the author
having moral rights and the owner of the copyright possessing economic
rights. Sometimes, the author of a work will also be the owner or initial
beneficiary of the copyright in the work, but this is not always so and
many works have separate authors and owners as far as copyright is
concerned. Ownership flows from authorship. The person who creates
the work is normally the first owner of the copyright in the work, provided
that he has not created the work in the course of employment, in which
case his employer will be the first owner of the copyright.
The owner of the copyright in a work may decide to exploit the work
by the use of one or more contractual methods. He may grant a licence to
allow another person to carry out certain acts in relation to the work, for
example, making copies, in which case he retains the ownership in the
copyright. The owner may also assign the copyright to another person,
that is, transfer the ownership of the copyright to a new owner, thereby
surrendering the economic rights in the work.
It is worth noting that a third party can, under copyright law, carry out
certain acts in relation to the whole or a part of a work protected by
copyright without the permission of the owner of the copyright in the
work and without infringing the copyright in the work, for example by
performing one of the acts falling within the fair dealing provisions or
because the act is not restricted by the copyright.184

Authorship

The author of the work is the person or the individual who creates it.185
Thus, the composer will be the author of the musical work; the writer of
literary work such as a novel will be its author; the writer of the script for
a play will be the author; the sculptor will be the author of a sculpture
and the photographer will be the author of a photograph. Similarly, the
author of the compilation is the person who gathers or organises the
184
Section 21, Copyright and Performance Rights Act.
185
Section 2(e), Copyright and Performance Rights Act.
76 INTELLECTUAL PROPERTY LAW

material contained within it and who selects, orders and arranges that
material.186
As regards related rights or derivative works, namely, sound recording,
audiovisual or films and performances, the Copyright and Performance
Rights Act also defines who is considered as the author of the said works.
Therefore, under section 2, the author of a sound recording work is the
person who causes the recording to be made. This will normally be a
phonogram or sound recording producer, who can be an individual or a
legal entity, responsible for making the arrangements for the whole
recording process from the studio recording to the achievement of the
final form of the recording as distributed to the public. Very often, key
personnel such as artistic directors, sound engineers and editors, will be
employees of the entity responsible for the production, and such individual
rights will normally pass to the employer by virtue of the employment
relationship. The individual who supervises and assists in the co-ordination
of a sound recording process is known as sound recording director.
Similarly, the author of the audiovisual work or film is the person
who causes the audiovisual work or film to be made or created.187 The
persons who are taken to be authors for an audiovisual work or film are
the principal director, the author of the screenplay, the author of the
dialogue, and the composer of the music specially created for and used
in the film. As regards broadcast, the author is the person who is
responsible for the contents of the broadcast and for arranging for its
transmission.188 In case of the cable programme, the author is the person
who is responsible for including the cable programme in the cable
programme service by which it is transmitted.189
The publisher of the edition of the typographical arrangement of a
published edition is considered to be its author.190 If a work is a computer-
generated literary, musical or artistic work, that is, generated by computer
in circumstances such that there is no human author, the author is deemed
to be the person by whom the arrangements necessary for the creation of
the work are undertaken,191 a formula similar to that of sound recording,
audiovisual work or films. In relation to other copyright work not
mentioned above, the author of that work shall be the individual who
created the work.192
As copyright only protects the expression of an idea in any tangible
form, there may be times when the originator of the information that
forms the basis of the work in question will not be considered to be the
186
Waterlow Publishers Ltd v. Rose [1995] FSR 207.
187
Supra note 38.
188
Ibid.
189
Ibid.
190
Ibid.
191
Ibid.
192
Ibid.
 AUTHORSHIP AND OWNERSHIP OF COPYRIGHT 77

author of the work. In Springfield v. Thame,193 the plaintiff, a journalist,

supplied newspapers with information in the form of an article. The editor
of the Daily Mail, from that information, composed a paragraph which
appeared in the newspaper. It was held that the plaintiff was not the author
of the paragraph as printed in the newspaper. Similarly, in the case of
Walter v. Lane,194 reporters from The Times recorded speeches by Lord
Rosebery in writing. It was held that the reporters who had recorded or
fixed the speeches in writing were the creators of the work and as such
the authors.
Also in Donoghue v. Allied Newspapers Ltd,195 the issue was whether
the journalist or the person whom he was interviewing was the author of
the article later published in the newspaper. The court held that the plaintiff
was neither the owner nor the joint owner of the copyright in the original
articles.
The court said that:

There is no copyright in an idea, or in ideas. A person may

have a brilliant idea for a story, or for a picture, or for a
play, and one which appears to him to be original; but if
he communicates that idea to an author or artist or a
playwright, the production which is the result of the
communication of the idea to the author or the artist or the
playwright is the copyright of the person who has clothed
the idea in form, whether by means of a picture, a play, or
a book, and the owner of the idea has no rights in that
product. In other words, the author is the person who gives
a work the form in which it is expressed, not the person
who provides the ideas for the work.

Copyright law will also deny authorship to a person who relies entirely
on another to create the work. Thus, in Kenrick & Co. v. Lawrence &
Co.,196 where a person had the idea of creating a voting card for illiterates,
by drawing a hand holding a pen making a cross in a box. Not himself
being able to draw, he asked an artist employed by his firm to make such
a drawing. The employer clearly had the right to decide whether to adopt
the finished product or to throw it away. Nevertheless, when the employer,
claiming to be the sole author of the work, sued a third party for copyright
infringement, the court dismissed the action because it could not accept
his claim to sole authorship.

193
(1903) 19 TLR 650.
194
Supra note 86.
195
Supra note 63.
196
(1890) 25 QBD 99.
78 INTELLECTUAL PROPERTY LAW

Judge Wills stated:

I do not see how a gentleman who is incapable of drawing

even such a very simple picture as a rough sketch of the
human hand, and who did not, in fact, set pencil to paper
in the matter, can be called the author of the drawing. He
suggested the subject, and made such limited suggestions
as to the treatment as the subject admitted of; but it seems
to me that, in an Act which gives copyright to drawings,
the author must mean a person has at least some substantial
share in putting the touches on to paper. … I cannot
understand how the man who did all that was done in the
way of drawing can be excluded from all participation in
the authorship of the thing drawn by him.

It is worth noting that works made or created by a body corporate in

Zambia or a Berne Convention country qualifies for copyright protection.
Thus, a body corporate under section 9 (1) the Copyright and Performance
Rights Act can be the author of a work. This is particularly important in
the case of a film and music industry where many arrangements for the
making of a sound recording or film are made by large production
companies that may become the producers of the works.

Anonymous or Unknown Authorship

The Copyright and Performance Rights Act recognises that the identity
of the author may not always be known. A work is of ‘unknown authorship’
if the identity of none of the authors is known, meaning that it is not
possible for a person to ascertain the identity of the author by reasonable
inquiry. 197 The Act does not specify which person undertakes this
reasonable inquiry. A logical solution would be to make this a subjective
test, to be performed by the person who wishes to deal with the work
and, therefore, needs to trace the origin of the work, starting with its
author, if he wants to obtain the permission to deal with the work.198
It should be noted that a work may be pseudonymous, that is the
author of the work does not wish his identity to be disclosed or the author
is identified under a fictitious name.

197
Section 3 (1)(a) and (b).
rd
198
See Holyoak & Torreman, Intellectual Property Law (3 ed.). Butterworths (2001), p. 213.
 AUTHORSHIP AND OWNERSHIP OF COPYRIGHT 79

Joint Authorship

The Copyright and Performance Rights Act recognises that in certain

instances two or more authors may collaborate or pool their efforts to
produce a work, in which case the work has one copyright which the
authors co-own jointly in equal shares, unless there is a contrary
agreement. Collaboration between two or more persons will result in a
work of joint authorship only if their respective contributions to the
finished work are not distinct from each other,199 that is, the work cannot
be broken down so that each author’s contribution can be separately
identified. Therefore, an abstract painting, created by two painters,
depicting a woman carrying a baby on her back, would be a work of joint
authorship.
On the other hand, however, a song where one person has written the
music and another has written the words, is not a work of joint authorship,
neither is a book comprising separate chapters written by different authors.
In the latter case, the person writing the music will be the author of the
musical work, while the person writing the lyrics will be the author of
those lyrics, as a literary work; and in the case of a book each person
involved will be the author of his own distinct work. Two copyrights will
exist in the song each having different authors and the duration of the
copyright in the music and the lyrics will differ according to the dates
when the composer and lyricist die.
In the case of Ray v. Classic FM Plc,200 the court in interpreting the
definition of joint authorship201 stated as follows:

A joint author is … a person

(1) who collaborates with another author in the
production of a work;
(2) who (as an author) provides a significant creative
input; and
(3) whose contribution is not distinct from that of the
other author.
He must contribute to the ‘production’ of the work and
create something protected by copyright which finds its
way into the finished work. Copyright exists, not in ideas,
but the written expression of ideas. A joint author must
participate in the writing and share responsibility for the
form of expression in the literary work. He must
199
S. 3 (2) Copyright and Performance Rights Act.
200
[1998] FSR 622.
201
S. 10 (1) of UK. Copyright Designs and Patents Act, 1988, defines a work of joint authorship as, ‘a work
produced by the collaboration of two or more authors in which the contribution of each author is not distinct
from that of the other author or authors’.
80 INTELLECTUAL PROPERTY LAW

accordingly do more than contribute ideas to an author: he

must be an author (or creator) of the work in question. It is
not enough that he thought up the plot of the play or made
suggestions for a comic routine to be included…; or indeed
that he passed on his reminiscences to a ghost writer… It
is not sufficient that there is established to have been a
division of labour between two parties in the project of
writing a book if one alone is entirely responsible for the
skill and labour of authorship of the book… What is
essential is a direct responsibility for what actually appears
on the paper.

It is submitted that the amount of work necessary before a person can

qualify as a joint author, and whether the product is a work of joint
authorship, are often hotly debated questions. In Fylde Microsystems
Ltd v. Key Radio Systems Ltd202, the plaintiff developed a computer
programme called ‘Keyport’ with the assistance of an employee of the
defendant. The defendant claimed that its employee was a joint author of
the programme. The court disagreed.
Laddie Justice stated as follows:

It is not disputed that the software was written entirely by

the plaintiff or its employees. … Section 10 (1) of the
Copyright Designs and Patents Act, 1988 defines a work
of joint authorship as ‘a work produced by the collaboration
of two or more authors in which the contribution of each
author is not distinct from that of the other author or
authors’. This provision does not turn someone who is not
an author into an author. The question to ‘be answered in
this action is whether Mr Seedle [the plaintiff’s employee]
alone was the author of the whole KEYPORT or whether
there was also another author, namely Mr Andrew Barrett
of the defendant.
[It was said in another case that:] what is protected by
copyright in a drawing or a literary work is more than just
the skill of making marks on the paper or some other
medium. It is both the words or lines and the skill and
effort involved in creating, selecting or gathering together
the detailed concepts, data or emotions which those words
or lines have fixed in some tangible form which is
protected. It is wrong to think that only the person who
202
[1998] FSR 449.
 AUTHORSHIP AND OWNERSHIP OF COPYRIGHT 81

carries out the mechanical act of fixation is an author. There

may well be skill and expertise in drawing clearly and well
that does not mean that it is only that skill and expertise
which is relevant. … Where two or more people collaborate
in the creation of a work and each contributes a significant
part of the skill and labour protected by the copyright,
then they are joint authors.
…In relation to authorship, it seems to me that two
matters have to be addressed. First, it is necessary to
determine whether the putative author has contributed the
right kind of skill and labour. If he has, then it is necessary
to decide whether his contribution was big enough. The
latter issue in particular is a matter of fact and degree…
There is no doubt that the contribution of which Mr
Barrett made was extensive and technically sophisticated…
First, Mr Barrett put effort into error fixing and reporting
faults and bugs. Secondly, he made a functional
contribution by way of setting the specification for what
the software was to do. … Thirdly, he made a contribution
by suggesting what was causing some of the faults, but he
did not produce the software solution to them. Fourthly,
he provided technical information concerning the
characteristics of the hardware into which the software
fitted and with which it had to co-operate. This enabled
Mr Seedle to write the I/O (in-out) software which allowed
the software to talk to the hardware and vice versa. Fifthly,
he set parameters and timings within the software. That is
to say, that where the software was written in a way in
which parameters and timings could be chosen by the user,
he made the choice. …
This division of labour is consistent with Mr Seedle
being entirely responsible for the skill and labour involved
as author of the KEYPORT software. Although all of Mr
Barrett’s contributions took a lot of time and were very
valuable they did not amount to contributions to the
authorizing of KEYPORT. It follows that the assertion of
joint authorship fails.203

203
Supra note 113, at pp. 116-117.
82 INTELLECTUAL PROPERTY LAW

Ownership

The general principle concerning ownership, in relation to copyright, is

that the author of a work shall be the first owner or beneficiary of the
copyright which subsists in the work.204 Therefore, a composer will be
the first owner of the musical work, a writer of the script for a play will
be the first owner of the script, a sculptor will be the first owner of the
sculpture and the photographer will be the first owner of the photograph.
There are, however, some exceptions to this general rule. Where a literary,
dramatic, musical or artistic work is made by an employee in the course
of his employment, his employer is always the first owner of the copyright
subsisting in the work.205
Other exceptions relate to the State copyright. Under section 12 (2)
of the Copyright and Performances Rights Act, the Government of Zambia
or of a Conventional country is the first owner of the copyright for the
work that is produced by a public officer or its employee in the course of
his employment. As regards the first ownership of copyright of a work
that is completed in a Convention country other than Zambia, the law of
that country shall apply.206

Employees’ Work

Section 10 (3)(a) provides that where a work, other than a broadcast or a

cable programme, is made by the author in the course of his employment
the employer shall be the first owner of the copyright. The Act however
does not define the meaning of ‘in the course of employment’. The
phrase ‘in the course of employment’ raises concerns and difficulties in
some situations as regards who is the first owner of copyright in the
work. There are circumstances where it will be obvious that the work
has been made by the employee in the course of his employment, for
example, where a lecturer employed by the University to teach, research
and publish in economics, during his normal working hours and using
the University facilities writes a book on economics.
However, difficulties arise if the employee has created the work in
his own time, whether or not he was using his employer’s facilities, or if
the nature of the work is not that which the employee is normally paid to
create. A good example would be where a person employed as a taxi
driver writes a book on his experience as a taxi driver. He would be the
first owner of the copyright in the literary work because he is employed
as a taxi driver and not as an author of a literary work.
204
S. 10 (2) Copyright and Performance Rights Act.
205
S. 10 (3)(a) Copyright and Performance Rights Act.
206
S. 10 (4) Copyright and Performance Rights Act.
 AUTHORSHIP AND OWNERSHIP OF COPYRIGHT 83

The situation changes if the employee is employed under a contract

with a very wide job description, for instance, as a research and
development engineer, and prepares a copyright work which is useful to
his employer’s business. The copyright in that work will most likely
belong to his employer, even if the employee created the work on his
own initiative and outside normal working hours. A situation may be
made further complex where the employee’s formal job description no
longer completely and accurately describe the employee’s duties or actual
type of work carried out by the employee. A basic test is whether the
skill, effort and judgment expended by the employee on creating the
work are part of the employee’s normal duties, express or implied, or
within any special duties assigned to him by the employer. If the answer
is ‘no’, then the employee and not the employer will be the first owner of
the copyright in the work even if he has used his employer’s facilities or
assistance.207
In Stephenson Jordan & Harrison Ltd v. MacDonald,208 an employed
accountant gave some lectures which he later incorporated into a book. It
was held that even though his employer provided secretarial help, the
copyright in the lectures belonged to the accountant because he was
employed as an accountant to advise clients and not to deliver public
lectures. However, part of the book was based on a report that the
accountant had written for a client of his employer and the copyright in
this part of the book belonged to his employer. Prudent employers will
satisfy themselves that the job descriptions accurately reflect the
employment and are kept up to-date. If there is any doubt about the first
ownership of copyright in a work produced by an employee, for instance,
where the employee has been given work beyond his normal duties,
agreement should be reached before the employee engages upon the work.
In another case of Noah v. Shuba,209 the plaintiff was a consultant
epidemiologist employed under a contract of service at the Communicable
Disease Surveillance Centre of the Public Health Laboratory Service
(PHLS). Being concerned with the spread of Hepatitis B and AIDS
through tattooing and skin piercing, he wrote a Guide to Hygiene Skin
Piercing, in his spare time, although using the PHLS’s secretaries and
library. The PHLS published and issued the guide without charge as a
public service, crediting the plaintiff as author. The PHLS Staff
Regulations, which were part of the plaintiff’s contract of service, were
silent about copyright.
The defendant used large extracts from the Guide in promotional
material for a steriliser for use in electrolysis treatments in beauty salons.
207
Supra note 10, at pp. 70 - 71.
208
(1952) 69 RPC 10.
209
[1991] FSR 14.
84 INTELLECTUAL PROPERTY LAW

The plaintiff sued for an injunction and damages for infringement of

copyright. The defendant unsuccessfully claimed that the PHLS, not Dr
Noah, owned the copyright in the Guide and that Dr Noah had no standing
to sue for infringement.
Mummery, J. stated:

Mr Shuba has not discharged the burden of proving that

Dr. Noah made the Guide in the course of employment. In
my judgment, Dr Noah’s position is very similar to that of
the accountant 210 in relation to copyright in lectures
delivered by the accountant author, who was employed
under a contract of service. It was held that the provisions
of the Copyright Act, 1911, equivalent to section 4
(4),211 did not apply. Lord Justice Denning pointed out that
that it had to be remembered that a man employed under a
contract of service may sometimes perform services outside
the contract. He gave the instance of a doctor on the staff
of a hospital or a master on the staff of a school employed
under a contract of service giving lectures or lessons orally
to students. He expressed the view that if, for his own
convenience, he put the lectures into writing then his written
work was not done under the contract of service. It might
be a useful accessory to his contracted work, but it was
not part of it and the copyright vested in him and not his
employers. Lord Justice Morris also pointed out … that,
even though the employer in that case paid the expenses
of the lecturer incurred in the delivery of a lecture and was
prepared to type the lectures as written by any lecturer,
and even though it would not have been improper for that
lecturer to have prepared his lecture in the company’s time
and used material obtained from its library, it had not been
shown that the accountant could have been ordered to write
or deliver the lectures, or that it was part of his duty to
write or deliver them. In those circumstances, the lectures
were not written in the course of his employment. …
Even if I had found that the Guide had been written by
Dr Noah in the course of employment, I would have found
on the evidence before me that there was an implied term
of his contract of service excluding the operation of the
210
Stephenson Jordan & Harrison Ltd v MacDonald (1952) 69 RPC 10.
211
Section 4 (4) Copyright Act of 1956 (UK) provided that: (4) Where… a work is made in the course of employment
by another person under a contract of service or apprenticeship, that other person shall be entitled to any
copyright subsisting in the work by virtue of this part of the Act.
 AUTHORSHIP AND OWNERSHIP OF COPYRIGHT 85

statutory rule in section 4 (4) vesting the copyright in the

work so made in the employer PHLS. … It had for long
been the practice at PHLS for employees there to retain
the copyright in work written by them, usually in the form
of articles, in the course of their employment there. If, for
example, the articles were published in learned journals, it
was the author of the article and not the PHLS who, at the
insistence of most learned journals, assigned the copyright
to the publishers of the journal in question. At no relevant
time has the copyright in those articles been claimed by
the PHLS. It has acquiesced in a practice under which that
copyright was retained and then assigned by the employee
authors. … This long standing practice is sufficient material
from which I can and do imply that it was a term of Dr
Noah’s appointment as consultant that he should be entitled
to retain the copyright in works written by him in the course
of his employment.

Commissioned Work

Section 10 (3) (b) of Copyright and Performance Rights Act provides

that where a work, other than broadcast or a cable programme, is made
by the author on the commission of some other person, the person who
commissioned the work shall be the first owner of the copyright. Thus, a
person who for private and domestic purposes commissions the taking
of a photograph or the making of a film has, where copyright subsists in
the resulting work, the right not to have the work publicly exhibited.
In Community for Creative Non-Violence v. Reid,212 the plaintiff was
a non-profit association dedicated to relieving the plight of homeless
people. It commissioned a sculpture from the defendant artist to publicise
its cause. It paid the defendant $15,000 for work and materials, he
donating his time. A dispute later arose over who owned the copyright of
the work entitled ‘Third World America’. The plaintiff claimed that the
defendant was its employee and that it, therefore, owned the copyright.
The Court found for the defendant.
Justice Marshal for the Court stated:

If the work is for hire, ‘the employer or other person for

whom the work was prepared is considered the author’
and owns the copyright, unless there is written agreement
to the contrary. … The contours of the work for hire
doctrine … carry profound significance for freelance
212
490 US 730 (US Supreme Court, 1989).
86 INTELLECTUAL PROPERTY LAW

creators; including artists, writers, photographers,

designers, composers, and computer programmers; and for
the publishing, advertising, music, and other industries
which commission their works.
Section 101 of the 1976 [Copyright] Act provides that
a work is ‘for hire’ under two sets of circumstances:
(a) a work prepared by an employee within the scope
of his or her employment; or
(b) a work specially ordered or commissioned for use
as a contribution to a collective work, as a part of
a motional picture or other audiovisual work, as a
translation, as a supplementary work, as a
compilation, as an instructional text, as a test, as
answer material for a test, or as an atlas, if the
parties expressly agree in a written instrument
signed by them that the work shall be considered
a work made for hire.
In determining whether a hired party is an employee… we
consider the hiring party’s right to control the manner and
means by which the product is accomplished. Among the
other factors relevant to this inquiry are: the skill required;
the source of the instrumentalities and tools; the location
of the work; the duration of the relationship between the
parties; whether the hiring party has a right to assign
additional projects to the hired party; the extent of the hired
party’s discretion over when and how long to work; the
method of payment; the hired party’s role in hiring and
paying assistants; whether the work is part of the regular
business of the hiring party; whether the hiring party is in
business; the provision of employee benefits; and the tax
treatment of the hired party. … No one of these factors is
determinative. …
The defendant, Reid was not an employee of the
plaintiff, CCNV but an independent contractor. … True,
CCNV members directed enough of Reid’s work to ensure
that he produced a sculpture that met their specifications.
… But the extent of control the hiring party exercises over
the details of the product is not dispositive. Indeed, all the
other circumstances weigh heavily against finding an
employment relationship. Reid is a sculptor, a skilled
occupation. Reid supplied his own tools. He worked in
his own studio in Baltimore, making daily supervision of
his activities from Washington practically impossible. Reid
was retained for less than two months, a relatively short
period of time. During and after this time, CCNV had no
right to assign additional projects to Reid. Apart from the
deadline for completing the sculpture, Reid had absolute
 AUTHORSHIP AND OWNERSHIP OF COPYRIGHT 87

freedom to decide when and how long to work. CCNV

paid Reid $15,000, a sum dependent on ‘completion of a
specific job, a method by which independent contractors
are often compensated.’ … Reid had total discretion in
hiring and paying assistants. ‘Creating sculptures was
hardly ‘regular business’ for CCNV.’213

Joint Ownership

It is possible that there are two or more joint owners of the copyright in
a work if it is a work of joint authorship. If that is the case then the two
authors will own the work as tenants in common and not joint tenants.214
This means that each owner’s rights accruing under the copyright in the
work are separate from the others and as such can assign his rights without
requiring the consent of the other owners and on his death, his rights will
pass, as part of his estate, to his personal representative. However, one
co-owner of the copyright may not perform or authorise infringing acts
to be done in relation to the work without the consent of his co-owners.

Anonymous

As regards an anonymous work, where the identity of the author is not

known, would lead to an unknown owner of the copyright in the work.
This, it must be stated, would inhibit the commercial exploitation of the
work and as such would be undesirable more especially if the work is
very important and of commercial value. Hence the presumption that the
publisher of an anonymous work is the owner of the copyright in the
work at the time of the publication unless the contrary is proved.

Term of Protection

Copyright does not continue indefinitely. The law provides for a period
of time, during which the rights of the copyright owner exists. The period
or duration of copyright begins from the moment when the work has
been created or under some jurisdiction, like Zambia, when it has been
expressed in a tangible form. The period continues till some time after
the death of the author. The purpose of this provision in the law is to
enable the author’s successors to benefit economically from the
exploitation of the work after the author’s death.
It is worth noting that the term of protection given to original works is
different from that provided for derivative or entrepreneurial works.
Whilst the duration of original works begins from the moment the work
213
Supra note 113, at pp. 111-112.
214
see Lauri v Renad [1892] 3 Ch 402: not as joint tenants as this will compel them to act together on each
occasion and thus deny them individual rights in their copyright work.
88 INTELLECTUAL PROPERTY LAW

is created until fifty years after the life of the author, the term of protection
for derivative works is not tied to the life of the author; it lasts fifty years
from the moment it is created.
As regards the term of protection for copyright works, article 7 of the
Berne Convention provides that the term of protection shall be the life of
the author and fifty years after his death. However, in the case of
cinematographic works, the Berne Convention provides that countries
of the Union may provide that the term of protection shall expire fifty
years after the work has been made available to the public with the consent
of the author, or, fifty years after making of such a work.

Original works
The term of protection for original works is calculated from the end of
the year in which the author dies and runs for fifty years. As a result,
copyright in original literary, dramatic, musical and artistic works expires
or comes to an end after the end of the year in which the author of the
work died.215 The term of protection for computer programmes, which
have no human author who can die, expires at the end of the period of
fifty years from the end of the calendar year in which it was first
published.216

Sound Recording
Copyright in an audiovisual work or sound recording expires at the end
of the period of fifty years from the end of the calendar year in which it
is made; or at the end of the period of fifty years from the end of the
calendar year in which it is first published.217 A sound recording is first
published when the copies of the work are made available to the public,
whether for gain or not with the authority of the copyright owner.218

Films
The term of copyright protection for a film will expire fifty years at the
end of the year in which the last of the following persons dies: the principal
director, the author of the screenplay, the author of the dialogue, or the
composer of music specially created for and used in the film. If the identity
of all or any of the persons concerned is unknown, the film will be
protected for fifty years from the end of the calendar year in which it was
made.
215
Section 12, Copyright and Performance Rights Act.
216
Section 15, Copyright and Performance Rights Act.
217
Supra note 36.
218
Supra note 172.
 AUTHORSHIP AND OWNERSHIP OF COPYRIGHT 89

Broadcasts and Cable Programmes

Section 14 of the Copyright and Performance Rights Act provides that
copyright in a broadcast or cable programme shall expire at the end of
the period of fifty years from the end of the calendar year in which the
broadcast or cable programme was first transmitted.

Typographical Arrangement of Published Editions

The copyright in a typographical arrangement of a published edition
expires at the end of the period of twenty-five years from the end of the
calendar year in which the edition was first published.219

Special Cases
(a) Anonymous and Pseudonymous Works

A work is considered to be of unknown authorship if the identity of none

of the authors is known. The identity of an author shall be regarded as
unknown if it is not possible for a person to ascertain his identity by
reasonable inquiry.220 Copyright in a work of unknown authorship shall
expire at the end of the period of fifty years from the end of the calendar
year in which the work is first published, unless the identity of the author
of the work becomes known before that date.221

(b) Joint Authorship

A work is considered to be of joint authorship if it is produced by the

collaboration of two or more authors and the contribution of each author
is not distinct from that of the other author.222 Copyright in the work of
joint authorship shall expire at the end of the period of fifty years from
the end of the calendar year in which the last author dies.223 The Berne
Convention provides in article 7bis that in the case of a work of joint
authorship the term of protection is to be calculated from the death of the
last surviving author.

(c) Posthumous Works

The term ‘posthumous works’ refers to works which were not published
or otherwise communicated to the public during the author’s lifetime.
Under the Berne Convention, such works enjoy the normal period of
219
Section 16, Copyright and Performance Rights Act.
220
Section 3, Copyright and Performance Rights Act.
221
Section 12 (3), Copyright and Performance Rights Act.
222
Supra note 199.
223
Section 12 (1) and (3) Copyright and Performance Rights Act.
90 INTELLECTUAL PROPERTY LAW

protection, that is fifty years from the calendar year in which the work
was published.

(d) Government Copyright

The Government has a special copyright in works created or produced

by a public officer or employee of the Government in the course of his
employment, and the copyright in such work shall expire at the end of
the period of fifty years from the end of the calendar year in which the
work is made.224

224
Supra note 129.
 91

Chapter Seven

MORAL RIGHTS

Introduction

There are two types of rights granted to the authors under copyright,
namely the moral rights and economic rights. Moral rights are those which
relate to the protection of the personality of the author and the integrity
of his work, and similar matters. They allow the author to take certain
actions to preserve the personal link between himself and the work.
Economic rights, on the other hand, are those concerning control over
the commercial or industrial exploitation of works, and other means of
use of the works which involve such acts as reproduction or representation.
They allow the owner to derive financial reward from the use of his
works by others.
Though economic rights of authors were recognised as far back as
the fifteenth century, moral rights were only recognised at the beginning
of the nineteenth century, more in particular in the civil law countries,
namely France and Germany. In 1814, a French court recognised the
right of the author to prevent unauthorised amendments of texts by
publishers to whom the manuscript was submitted.225 Other aspects of
the moral right were developed in French cases, and the term ‘droit moral’,
describing the general area of the right, appeared at the beginning of the
twentieth century.
While in the civil law countries the concept that the author’s reputation
and integrity of the work should be protected by specific rights was
developed in jurisprudence and learned writings, no such general
development took place in the common law countries. Thus, when it was
proposed in 1928 that moral rights should be incorporated in the Berne
Convention, there was general support for such incorporation from the
civil law countries, but the reaction of the common law countries was
reserved.226 Nevertheless, article 6bis of the Berne Convention was
adopted, which recognises the moral rights of the author to be identified
as such or claim authorship of the work, sometimes called the ‘paternity
right’, and the author’s right to preserve the integrity of the work against
acts which were prejudicial to the author’s honour or reputation, known
as the ‘integrity right’.

225
Supra note 15, p. 279-285.
226
Ibid.
92 INTELLECTUAL PROPERTY LAW

It must be mentioned that the USA does not fully recognise moral
rights except those for visual art and as such it is not a member or party
to any international copyright convention that includes moral rights.227
The USA excludes moral rights mainly because it may conflict with the
exploitation of copyright works, in particular, for works made for hire or
commissioned work, in that every time the work has to be exploited in a
certain way one has to respect the moral rights of the author or director
and if necessary obtain their consent.
The Copyright and Performance Rights Act, does recognise moral
rights. Section 24 (2) provides that notwithstanding the transfer of the
copyright, or any part of it, the author or director of audiovisual work
shall have the right:
(a) to be identified as the author or director of the works; and
(b) to object to any distortion, mutilation or other modification or
derogatory action in relation to the work that would be prejudicial
to his honour or reputation.
Other moral rights, though not included in the Copyright and Performance
Rights Act include divulgation right, retraction right, false attribution of
a work and right to privacy in relation to photographs.
Moral rights can only arise and initially be granted to an individual.
Thus all authors of original works and directors of films or audiovisual
works are accorded moral rights, while the owners of the entrepreneurial
related rights are not granted moral rights. Related rights often rely on or
derive from copyright works and are secondary rights, such as recording
of an original musical work. They are linked to the entrepreneurial
exploitation of copyright and as such moral rights are not required in
relation to them.
Besides, moral rights are not granted to works whose copyright belongs
to a body corporate. For example, the Copyright and Performance Rights
Act does not grant moral rights to works created by employees in the
course of employment or commissioned work because copyright in the
said works belong to the employer, which is a body corporate and not a
human being.

Types of Moral Rights

(i) Paternity Right

The paternity right also known as the ‘identification right’ or ‘right of

authorship’ is the right of the author or creator of a work to be identified
227
For example, USA, is a member of the TRIPS Agreement which incorporates articles of 1-21 of the Berne
Convention. However article 9 of the TRIPS Agreement excludes members from complying with moral rights
under article 6bis of the Berne Convention.
 MORAL RIGHTS 93

as its author. It is the right of the author to have his name ascribed on the
work or to choose to have his work published anonymously or
pseudonymously. An author may authorise a publisher to publish his
work but the contract may be silent on the publisher’s duty to ascribe the
work to the author. The integrity right can be invoked to impose this
obligation on the publisher. The paternity right is of particular importance
in cases where the author has assigned all his economic rights to the
publisher or another party. If there is a further assignment, there will be
no contractual link between the second assignee and the author. Hence
the right to claim authorship can be of particular importance in this
situation.
The paternity right is only granted to authors of literary, dramatic,
musical or artistic works or a director of a film or audiovisual work.228
Therefore, the paternity right does not apply to other types of works,
such as computer programmes, sound recordings, broadcasts and cable
programmes or other works in which copyright does not subsist.229
Furthermore, the right does not apply to works created by the author in
the course of employment or works made by the author on the commission
of some other person.230 It must be submitted that under the Copyright
and Performance Rights Act, for paternity right to be enjoyed, it need
not be asserted by the author of a work as it automatically accrues to him
the moment the work is created and if it attracts copyright protection.
Where there is a dispute as regards the exercise by the author or a
director of his paternity right and the dispute cannot be resolved by
negotiations by the parties concerned, the dispute may be referred by
any parties to the Registrar of Copyright.231

(ii) Integrity Right

Like the right of paternity, the right to object to any distortion, mutilation
or other modification or derogatory action or treatment is given to authors
in respect of their literary, musical, artistic or dramatic works, and to
directors in respect of their films or audiovisual work.232 The right of
integrity draws its origin from article 6bis of the Berne Convention, which
states that independently of the author’s economic rights, and even after
the transfer of the said rights, the author shall have the right to claim
authorship of the work and to object to derogatory, mutilation or other
modification of, or other derogatory action in relation to, the said work,
which would be prejudicial to his honour or reputation.
228
S. 24 (1)(a) and (b) Copyright and Performance Rights Act.
229
Ibid.
230
Ibid.
231
S. 24 (4).
232
Supra note 228.
94 INTELLECTUAL PROPERTY LAW

The question of whether the treatment of a work is derogatory to the

reputation of the author or in some way degrades the work as conceived
by its creator, is largely a matter of opinion, and, therefore, more liable
to be subject of dispute. Besides, the courts have often been confronted
with the question as to what should be taken into account in determining
whether the treatment of a work is derogatory. Should it be the author’s
opinion or the opinion of the other persons? Should it be an objective or
subjective test?
Thus, in Tidy v. Trustees of National History Museum,233 the plaintiff,
a cartoonist, drew some large dinosaur cartoons in black and white for
the defendant museum to exhibit. The museum, without the plaintiff’s
authority, published a book on dinosaurs, including reproductions of the
plaintiff’s cartoons, a seventh the size of the originals and with a pink
and yellow background. The plaintiff’s authorship was acknowledged
but the plaintiff sued for both breach of his copyright and his moral right
of integrity. The defendant admitted the breach of copyright, but disputed
the breach of moral right of integrity. The Court refused the plaintiff’s
motion for summary judgment on that claim, remitting the case for a full
trial.
Rattee, J. stated:

I personally find it difficult to see how I could possibly

reach the conclusion that the reproduction complained of
is prejudicial to the honour or reputation of the plaintiff,
without having the benefit of evidence relating to the effect
of the reproduction of his reputation in the minds of the
other people and the benefit of cross-examination of any
witness giving evidence on that point. …
Before accepting the plaintiff ’s view that the
reproduction in the book complained of is prejudicial to
his honour or reputation, I have to be satisfied that that
view is one which is reasonably held, which inevitably
involves the application of an objective test of
reasonableness. It seems to me that there is a possible
defence … that, in fact, the reputation of the plaintiff would
not be harmed one which in the mind of any reasonable
person looking at the reproduction of which he complains.

Also in Snow v. Eaton Centre Ltd,234 the plaintiff artist produced a

naturalistic sculpture of Canada geese for the defendant shopping centre.
Just before Christmas time, the defendant’s manager put Christmas
233
(1995) 39 IPR 501.
234
(1982) 77 CPR (2d) 105 (Canada: Ontario High Court).
 MORAL RIGHTS 95

wreaths and ribbons around the necks of geese. When the plaintiff
complained, the defendant claimed that it could do what it liked with the
sculpture since it owned it, and in any event the sculpture looked as pretty
with the Christmas decorations as without. The plaintiff sued for
infringement of his moral right of integrity, and asked for a mandatory
interlocutory injunction for the decorations to be taken down immediately.
The Court granted the Order.
O’Brien J stated as follows:

The application in this motion relies solely on s.12 (7) of

the Copyright Act, and in particular that part which gives
the author the right to restrain any distortion, mutilation or
other modification of his work that would be prejudicial
to his honour or reputation. The geese were be-ribboned
by the defendants without the knowledge or consent of
the plaintiff. The plaintiff, an artist of international
reputation, takes the position that the work as presently
displayed is prejudicial to his honour and reputation.
In my view, the use of the ‘independently’ in section
12 (7) merely indicates the rights conferred by that section
are in addition to the author’s right of copyright. … In my
view, the section gives rights greater than those based on
libel or slander. I believe the words ‘prejudicial to his
honour or reputation’ in section 12 (7) involve a certain
subjective element or judgment on the part of the author,
so long as it is reasonably arrived at. The plaintiff is
adamant in his belief that his naturalistic composition has
been made to look ridiculous by the addition of ribbons
and suggests it is not unlike dangling earrings from the
Venus de Milo. While the matter is not undisputed, the
plaintiff’s opinion is shared by a number of other well-
respected artists and people knowledgeable in his field.
I am satisfied that the ribbons do distort or modify the
plaintiff’s work and the plaintiff’s concern that this will
be prejudicial to his honour or reputation is reasonable
under the circumstances.

Similarly, in the case of Prise de Parole Inc. v. Guerin, Editeur Ltee,235

the plaintiff author complained that the defendant publisher had included
in a school anthology, without his authority, an abridged version of the
plaintiff’s well known novel. The abridgment was incompetently done:
235
(1995) 66 CPR (3d) 257 (Canada Federal Court, Trial Division), affirmed (1996) 73 CPR (3d) 557 (Canada:
Federal Court of Appeal).
96 INTELLECTUAL PROPERTY LAW

subplots were omitted and the order of the story was changed. Apart
from claiming an injunction and damages for copyright infringement,
the plaintiff also claimed for breach of his moral rights.
Denault, J. in the Court of first instance stated as follows:

It must be proved that the work was distorted, mutilated

or otherwise modified. In my view, this nuance justifies
the use of a subjective criterion; the author’s opinion; in
assessing whether an infringement is prejudicial. … This
concept has a highly subjective aspect that in practice only
the author can prove. ... However, in my view, the
assessment of whether a distortion, mutilation or other
modification is prejudicial to an author’s honour or
reputation also requires an objective evaluation of the
prejudice based on public or expert opinion. In Snow v.
Eaton Centre (cited above), the applicant clearly
demonstrated that his work was distorted, mutilated or
otherwise modified.
It must be determined whether the work was distorted
to the prejudice of the author’s honour and reputation. The
plaintiff expressed his great disappointment at seeing his
work so distorted that he would have preferred his name
not to be associated with the defendant’s collection. He
also stated that he is known in his circle, has good reputation
as an author and has already written four novels. He is
often asked to give lectures in schools… The plaintiff also
acknowledged that he had not been ridiculed or mocked
by his colleagues or the newspapers and that he had not
personally heard any complaints after the defendant’s
anthology was published.
In short, although the author has shown that his novel
was substantially modified without his knowledge and that
he was shocked and distressed by this, the evidence has
not shown that, objectively … his work was modified to
the prejudice of his honour or reputation. Since this has
not been proven, the plaintiff is not entitled to moral
damages.

From the cases discussed above, it is submitted that before the moral
right of integrity is infringed, the plaintiff must show that his honour or
reputation has been prejudiced by the change. The courts will take an
objective test in the evaluation of whether the infringement is prejudicial
to the author’s honour or reputation.
 MORAL RIGHTS 97

Like paternity right, integrity right does not apply to works, such as
computer programmes, sound recordings, broadcasts and cable
programmes or other works in which copyright does not subsist.236
Furthermore, the right does not apply to works created by the author in
the course of employment or works made by the author on the commission
of some other person.237 Where there is a dispute as regards the exercise
by the author or a director of his integrity right and the dispute cannot be
resolved by negotiations by the parties concerned, the dispute may be
referred by any of the parties to the Registrar of Copyright.238

(iii) False attribution of a work

The right to object to false attribution of a work is the converse of the

right to be identified or paternity right. A person to whom a literary,
dramatic, musical or artistic work is attributed as the author, or to whom
a film or audiovisual work is attributed as director has the right to object
when that attribution is false. The objection may be in relation to the
issue of copies to the public, public exhibition of an artistic work, public
performance or showing, broadcast or cable-cast of a literary, dramatic
or musical work or a film. In Moore v. News of the World Ltd,239 the
plaintiff, Mrs Edna May Moore known professionally as Dorothy Squires,
alleged that an article which appeared in the News of the World falsely
attributed authorship to her and was defamatory. The article was entitled
‘How my Love for The Saint Went Sour’ and was claimed to be by
Dorothy Squires talking to a reporter, Weston Taylor. The plaintiff claimed
that the article implied that she was an unprincipled woman who had
prepared sensational articles about her private life for substantial payment.
She was awarded 4,300 pounds for libel and 100 pounds for false
attribution.
It must be observed that the right to object to false attribution of the
work is not included in the Copyright and Performance Rights Act.

(iv) Right to Privacy in Relation to Photographs and Films

Most people are concerned that photographs or films of private function

such as weddings may find their way or be displayed publicly without
the consent or against the wishes of the people involved in the photographs
or films. Therefore, in some jurisdictions such as the United Kingdom,
they have come up with provisions to protect persons who are involved
in the photographs or films and to stop photographers from profiting
236
Supra note 228.
237
Ibid.
238
Supra note 231.
239
[1972] 1 QB 441.
98 INTELLECTUAL PROPERTY LAW

from photographs taken at a private function, more especially if persons

involved are celebrities. Thus, where a photographer is commissioned to
take photographs of a wedding or a private function those photographs
cannot be issued to or shown to the public without the consent of the
commissioner, for example, the bride.
In the case of Mail Newspapers Plc v. Express Newspapers Plc,240 an
injunction was granted to prevent the publication of wedding photographs
of a married couple. The wife had suffered a brain haemorrhage when
twenty-four weeks pregnant and was kept on a life support machine in
the hope that the baby could be born alive. The husband had granted
exclusive rights in the pictures to the plaintiff in respect of photographs
and the defendant tried to obtain copies from the photographer.
It is worth stating that the right to privacy in relation to photographs
and films is not just a negative right, as it can also be used to secure
exclusivity and gain a higher price for the use of the photographs or
films. A good example is where some celebrities have sold their wedding
pictures or newly born babies to, for example, newspapers and donated
money to charities.
Like the right to object to false attribution of a work, the right to
privacy in relation to photographs and films is not included in the
Copyright and Performance Rights Act.

(v) Divulgation Right

Divulgation or dissemination right is the author’s right to decide when,
where and in what form the work will be disseminated to any other person,
persons or general public. Therefore, an author can restrain the publication
or use of a work when it is contrary to the form in which he wishes that
work to be disseminated to the public.
It must be stated that whilst in most common law countries such as
Zambia and the United Kingdom, divulgation right is regarded as
embraced by the economic right of authorising first publication of a work,
in civil law jurisdictions such as France and German, divulgation right is
considered as a moral right which is granted to the author. Thus, in Bouvier
v. Cassigneul,241 it was held that there was an infringement of the right of
divulgation where paintings rejected by the artist were published without
authorisation. Similarly, in the case of Camoin v. Carco,242 it was held
that a painter who tore up work was entitled by the divulgation right to
prevent another person from recovering the pieces from the rubbish bin,
putting the pieces together, and divulging them.
The divulgation right should also be distinguished from the rights
connected with the breach of confidence. In certain cases, an author may
240
[1987] FSR 90.
241
Cass. Crim. 13 December 1995; (1996) 169 RIDA 306.
242
CA Paris, 6 March 1931.
 MORAL RIGHTS 99

be able to restrain publication or other use of the work, for example,

where a copy of it has been obtained in circumstances which breach
confidence.243 Nonetheless, the divulgation right may be invoked in cases
where the plaintiff cannot rely on breach of confidence.
It must be stated that divulgation right is not mentioned or included in
either the Copyright and Performance Rights Act or the Berne Convention.

(vi) Retraction Right

The retraction right is the right of the author to withdraw his work from
the publication because of changed opinion. For example, if the author
in his literary work stated that the world was flat and then later it is found
that the world is round, he can exercise his right of retraction to allow
him to remove or withdraw his book from circulation.
This will not be possible in many cases, but where, for instance, a
publisher is still reproducing and selling the old work, the moral right of
retraction allows the author the right to prevent further reproduction and
sales. However, where the right is recognised, the author must indemnify
the publisher, and usually must give first offer of the revised edition to
the same publisher.
Like the divulgation right, retraction right is not mentioned in the
Copyright and Performance Rights Act and Berne Convention but is
recognised in some civil law countries such as France.

Joint Authors

As regards moral rights in relation to the work of joint authorship, each

author enjoys the right to be identified and to object to any distortion,
mutilation or other modification or derogatory action in relation to the
work that would be prejudicial to his honour or reputation.244

Duration and Transmission on Death

The Copyright and Performance Rights Act provides that moral rights
shall expire on the death of the author or director of the audiovisual
work.245 Therefore, unlike under the United Kingdom Copyright Designs
and Patents Act, 1988, where copyright endures as long as copyright
subsists in the work in question, that is the life of the author plus seventy
years; in Zambia the duration of moral rights is tied to the life of the
author. Thus, author’s moral rights cannot be infringed when he is dead.
243
Prince Albert v Strange and Others (1849) 2 De G. & Sm. 652, 64 ER 293.
244
Supra note 228.
245
S. 24 (3) Copyright and Performance Rights Act.
100 INTELLECTUAL PROPERTY LAW

This is unfair to the author’s personal representative who might see others,
for example, distort, mutilate or modify the work, but can do nothing
about it as the moral rights do not exist in the work in question and hence
no legal right to enforce them.

Waiver
Under the Copyright and Performance Rights Act, the author of a work
or a director of a film or audiovisual work cannot waive his moral rights.
However, in some countries such as the United Kingdom the author of a
work or director of film may under a written instrument (signed by the
person giving his moral right) waive his moral rights.246 The waiver of
the moral rights may be conditional or unconditional and may be
expressed to be subject to revocation.247 For example, if the author or
director intends to waive all or some of his moral rights in an assignment
or licence agreement he would insist on a term that will allow him to
revoke the waiver if the assignor or licensee commits a breach of the
agreement. The waiver may relate to a specific work or a specified work
or specified description of works or to works generally and may cover
existing and future works.
In John Maryon International Ltd v. New Brunswick Telephone Co.
Ltd,248 the plaintiff, an engineer, designed a telecommunication tower.
After the tower was built, hairline cracks appeared, causing the owner to
fear that the tower might collapse. The owner of the communication tower
modified the external structure of the tower to reinforce it. The engineer
sued for breach of both his copyright and moral rights. The Court decided
that the engineer was not the author of the artistic design of the tower.
Even if he had been the author, neither his copyright nor his moral rights
would have been infringed.
Mr Justice La Forest for the Court stated:

The engagement for reward of a person to produce material

of a nature which is capable of being the subject of
copyright implies a permission of consent or licence in
the person making the engagement to use the material in
the manner and for the purpose in which and for which it
was contemplated between the parties that it would be used
at the time of the engagement. … The payment for sketch
plans includes a permission or consent to use those sketch
plans for the purpose for which they were brought into
246
S. 87 (2) CDPA 1988.
247
Ibid., section 87 (3)(b).
248
(1982) 141 DLR (3d) 193.
 MORAL RIGHTS 101

existence, namely, for the purpose of building a building

in substantial accordance with them and for the purpose
of preparing any necessary drawings as part of the task of
building the building.
The engineer knew that the structure was intended as
the communications tower. If any thing went wrong it had
to be repaired and repaired quickly without arousing public
concern. Under these circumstances it seems to me a term
must be implied in the contract permitting repairs, involving
alteration to copyright material if need be, to ensure the
use of the tower for the purpose for which it was intended
as well as to ensure public safety and to prevent public
concern.
The moral right of integrity would be displaced by the
implied term to which I have already referred. A necessary
distinction must be made in the treatment of works of art,
such as architectural works, the function of which is
utilitarian as well as artistic. The owner of an architectural
structure has the right, in the absence of an agreement to
the contrary, to make any changes to it that seem to him to
be desirable in order that he may use the work in accordance
with his own views. He may, therefore, destroy, reconstruct,
modify or repair his building. The architect has only one
right, namely that of requiring that his name appear on the
front of the work so long as the repairs or modifications
are slight and the essential conditions of the original work
remain. He also has the right to require that his name be
removed if the works done on it mutilate the work or distort
the artistic ideas he wishes to achieve.

Remedies
The Copyright and Performance Rights Act provides that where there is
a dispute as regards the exercise by the author or a director of his moral
rights and the dispute cannot be resolved by negotiations by the parties
concerned, the dispute may be referred by any of the parties to the
Registrar of Copyright.249 The Registrar shall after giving the parties to
the dispute an opportunity to make representations, give in writing such
directions for settling the dispute as in the circumstances he considers
reasonable and such directions shall be binding on the parties to the
dispute.250

249
Supra note 231.
250
S. 24 (5), ibid.
102 INTELLECTUAL PROPERTY LAW

The High Court may at the suit of the author or director grant an
injunction, pending a settlement of dispute by the Registrar, in terms of
prohibiting the doing of any disputed act in relation to the work concerned
or prohibiting the doing of any disputed act in relation to the work
concerned, unless a disclaimer is made, in such terms and in such manner
as the Court may approve, dissociating the author from the treatment of
the work. The Court is also empowered to enforce the decisions of the
Registrar.251

251
S. 24 (6), ibid.
 103

Chapter Eight

ECONOMIC RIGHTS

Introduction

In addition to moral rights, copyright law grants the author or other right
owner economic rights that allow him to derive financial reward from
the use of his work by others. The economic rights enable the author or
other right owner to control the commercial or industrial exploitation of
his work and participate in the benefits of the use of the said work. They
are also called ‘controlled acts’ or ‘exclusive rights’ of the copyright
owner in relation to his work, which allows him to control and authorise
or prevent others from exploiting or dealing with the work without his
consent. The economic rights granted to the author in relation to the work
can be classified into the following categories:
(a) Reproduction right, such as copying, printing, publication or sound
recording.
(b) Translation right, such as translating the work from one language
to another.
(c) Adaptation right, such as adapting a novel into a movie or play;
(d) Public performance right, such as performing copyright work to
the public.
(f) Broadcasting right, such as broadcasts by radio, cable or satellite.
(g) Communication right.
(h) Distribution right.
(i) Rental right.
(j) Right of Display.
(k) Right of resale (Droit de suite).

Types of Economic Rights

(i) Reproduction Right

The right of the copyright owner to prevent others from making copies
of his works is the most basic right under copyright.252 Reproduction
refers to the action of making a copy253 or to the copy produced by the
act of reproduction of a work protected by copyright. The Copyright
and Performance Rights Act defines copying as a reproduction of a work
252
S. 17, Copyright and Performance Rights Act.
253
Ladbroke (Football) Ltd v. William Hill (Football) Ltd [1964], 1 WLR 273.
104 INTELLECTUAL PROPERTY LAW

or of an adaptation of a work, whatever the medium in which the

reproduction is made or stored.254
Reproduction of copyright works can be in any material form. The
term ‘material form’, includes reproduction of copyright works in ‘hard
form copies’ such as tapes, books, CDs, DVD and chips; and reproduction
in electronic form (whether transient or retained), such as digital copies
of copyright works made with computers. Reproduction in material form,
for example, of a literary work may consist of a copy of a literary work,
and in case of artistic works a copy made by hand or a photograph. As
for sculptures and other three-dimensional works the material form
reproduction may be in the form of replica. Furthermore, literary, dramatic
and musical works may be reproduced in material form by the making of
sound recordings or films, and films may also reproduce artistic works
in material form. It should be noted that material form of the reproduction
may be in the same medium or a different medium.

(ii) Translation Right

The copyright owner has the exclusive right to translate the work.255
Translation is the expression of a work in a language other than that of
the original version. For example, translating a book from one language
(English) to another language (Bemba). In Radji v. Khakbaz,256 the plaintiff
wrote a book called In the Service of the Peacock Throne, which was
serialised in the Sunday Times of London. The Iran Times, a newspaper
published in the USA translated the serialisation into Farsi and published
it without the plaintiff’s authority. The plaintiff sued the defendant for
infringing copyright by the unauthorised translation and publication. The
court found that there was copyright infringement and granted an
injunction, and ordered damages to be assessed.
Green, J. stated:

After reading the Sunday Times articles, defendants decided

that the excerpts from the plaintiff’s book would also be
of interest to the readers of the Iran Times. Although
defendant Khakbaz called the Sunday Times in order to
seek permission from the plaintiff in order to reprint the
articles, he never received such permission from either the
newspaper or the plaintiff. Nevertheless, defendants
proceeded to copy 86 per cent of the excerpts from the
plaintiff’s book quoted in the Sunday Times articles,
254
Supra note 38.
255
Supra note 252.
256
607 F. supp. 1296 (USA District Court, District Columbia, 1985).
 ECONOMIC RIGHTS 105

translated them into Farsi, and reprinted them in a series

of articles in 12 separate editions of the Iran Times, the
articles were substantially similar to the excerpts from the
plaintiff’s book and whether defendants copied the
plaintiff’s protected expression.
Defendants’ argument is premised upon the erroneous
assumption that because they translated portions of
plaintiff’s book from English to Farsi, and because the
court does not read or understand Farsi, the plaintiff has
failed to provide a basis upon which the court could
determine whether the Iran Times articles were
substantially similar to the excerpts from the plaintiff’s
book and whether defendants copied plaintiff’s protected
expression.
The court need not be fluent in Farsi to find that
defendants have infringed the plaintiff’s copyright where,
as here, they have admitted that the Iran Times articles
were composed entirely of translated quoted passages from
the plaintiff’s book reprinted in the Sunday Times. A
translation by definition uses different language from that
of the original. That, however, does not exempt translations
from the provisions of the Copyright Act. To the contrary,
the Act gives the copyright holder the exclusive right to
prepare derivative works, which includes the right to make
translations. Thus, in the absence of authorisation, only
the plaintiff had the right to translate and reprint his book
into Farsi.257

In relation to computer programme, translation means the conversion of

computer programme from one computer language or code into
another.258 In Apple Computer, Inc. v. Mackintosh Computers Ltd,259 the
defendant imported clones of Apple Computers that included unauthorised
copies of the Apple operating system embodied in a ROM (Read Only
Memory) chip in the machine. Apple sued for copyright infringement,
claiming that the computer program on the chip was a ‘reproduction’ of
the written source code of the program in which Apple had copyright.
The plaintiff also argued that the computer programme forming the
operating system ‘translated’ the source code. The trial judge agreed with
the plaintiff, but a majority of the Court of Appeal found that there had
been only a reproduction, and not a translation.

257
Supra note 113, at pp. 88-89.
258
Supra note 38.
259
(1987) 44 DLR 4th 74.
106 INTELLECTUAL PROPERTY LAW

Mahoney, J. stated:

I agree with the learned trial judge that the conversion of a

text into Morse code or shorthand does not result in a
different literary work, and that the text, so converted, does
retain the character of the original. That, however, does
not lead to the conclusion that such conversion is translation
for purposes of the Act. A person knowledgeable of the
Morse code or the particular shorthand system could read
the converted version, and what would be heard would be
the original text verbatim. Such a conversion is not, in my
opinion, a translation within the contemplation of the
Copyright Act. It is rather a reproduction of the original,
the making of which was equally the exclusive right of the
owner of the copyright in that original.260

Similarly, Hugessen, J. stated:

The principal difficulty which this case has given me arises

from the anthropomorphic character of virtually everything
that is thought or said or written about computers. Words
like ‘language’, ‘memory’, ‘understand’, ‘instruction’,
‘read’, ‘command’, and many others are in constant use.
They are words which, in their primary meaning, have
reference to cognitive beings. Computers are not cognitive.
The metaphors and analogies which we use to describe
their functions remain just that.
In my view, ‘translation’ is used here in its primary sense
of the turning of something from one human language into
another. To give it its extended meaning of an expression
in another medium or form of representation seems to me
to be at variance with the fundamental principle that
copyright subsists not in the idea expressed, but in the form
of its expression. Indeed, since the respondents’ programs
originated in code, I do not see how one can properly speak
of their translation at all. The fact that both machine and
assembly codes are called ‘languages’ is simply an example
of the anthropomorphic phenomenon to which I referred
at the outset.261

260
Supra note 113, at pp. 90.
261
Ibid.
 ECONOMIC RIGHTS 107

(iii) Adaptation Right

The right of adaptation refers to the author’s right to control transformation

of his work into another type of presentation, such as changing of novel
into a film or play, or by transcribing a musical work for piano into one
for full orchestra, or vice-versa. The Copyright and Performance Rights
Act defines ‘adaptation’ to include:
(a) in relation to any literary work, a translation of the work, or a
version of the work in which the story or action is conveyed
solely or principally by means of pictures;
(b) in relation to a literary work in a non-dramatic form, a version
of the work (whether in its original language or in a different
language) in a dramatic form;
(c) in relation to a literary work in a dramatic form, a version of
the work (whether in its original language or in a different
language) in a non-dramatic form;
(d) in relation to a musical work, an arrangement or transcription
of the work;
(e) in relation to an artistic work in two dimensions, the
reproduction of that work in an object in three-dimensions;
and in relation to a computer programme, a version of the
program in which it is converted from one computer language
or code into another.262
In Sillitoe et al. v. McGraw-Hill Book Co. Ltd,263 the plaintiffs included
the copyright owner of Bernard Shaw’s play Saint Joan. The defendants
marketed Coles’ Notes, condensed versions of various literary works for
the use of the students. The plaintiff claimed that not only its reproduction
right but also its adaptation right had been infringed. The Court agreed.
Mervyn Davies, J. stated:

These scene summaries run together, seem to me to

constitute more than a synopis of the play. After reading
the text of Saint Joan and then the scene summaries,
converted the play Saint Joan into a non-dramatic work;
and has accordingly made an ‘adaptation’ within section 2
(5)(f) of Copyright Act, 1956. Counsel for the defendants
contended that the scene summaries constituted a summary
intended as an aid to criticism and further do not constitute
a separate non-dramatic work. The question is whether or
not Saint Joan has been converted into a non-dramatic
work. In my view it has. The fact that the conversion is
said to be part of a critical aid does not bear any question
raised under section 2 (5)(f).264
262
Supra note 2.
263
[1983] FSR 545.
264
Supra note 113.
108 INTELLECTUAL PROPERTY LAW

(iv) Public Performance Right

A public performance is considered to be any performance of a work at

a place where the public is or can be present, or at a place not open to the
public, but where a substantial number of persons outside the normal
circle of the family and its closest social acquaintances are present.265
The Copyright and Performance Rights Act defines ‘performance’ as a
performance of drama, dance or mime; a musical performance; a reading
or recitation of a literary work; or a performance of a variety act or any
similar presentation, insofar as it is a live performance given by one or
more individuals.266 In addition, the Act grants to a performer267 the
right called the ‘performer’s right’ to exploit his performance by means
of recording, broadcast or inclusion in a cable programme service.268
On the basis of the public performance right, the author or other owner
of the copyright may authorise live performances of a work, such as the
presentation of a play in a theatre or an orchestra performance of a
symphony in a concert hall. Similarly, public performance also includes
performance by means of recordings. Thus, musical works embodied in
phonograms are considered ‘publicly performed’ when the phonograms
are played over amplification equipment in such places as discotheques,
shopping malls, work places and airplanes.
The Copyright and performance Rights Act does not define what
constitutes ‘public’ as regards a performance. Nonetheless, the term
‘public’ as it relates to performance has been subjected to judicial
interpretation. Thus, in Jennings v. Stephens,269 the plaintiff owned
copyright in a play, which was performed, without the plaintiff’s consent,
for the defendant’s women’s club by amateur players from another
women’s club. The plaintiff claimed the performance had been ‘in public’.
The defendant said that its club was private and the performance occurred
without charge. The Court nevertheless held that the performance had
been ‘in public’.
Lord Romer stated:

No one can doubt that the concerts given at the Albert

Hall270 are, in general, performances ‘in public,’ or that
music provided by a man for the entertainment of his guests
after dinner or at a reception is performed “in private”. In
the latter case, the entertainment forms part of the domestic
265
WIPO Worldwide Academy, DL-101 Distance Learning Course Materials. Geneva.
266
S. 44, Copyright and Performance Rights Act.
267
Copyright and Performance Rights Act does not define a ‘Performer’.
268
S. 45, Copyright and Performance Rights Act.
269
[1936] Ch. 460, CA.
270
Large concert hall in London.
 ECONOMIC RIGHTS 109

or home life of the person who provides it, and nonetheless

because of the presence of his guests. They are for the
time being members of his home circle. In the former case,
however, the entertainment is in no sense part of the
domestic or home life of the members of the audience. It
forms part of what may be called, in contradistinction, their
non-domestic or outside life. In the one case, the audience
are present in their capacity of members of the particular
home circle. In the other, they are present in their capacity
of members of the music-section of the public. The home
circle may, of course, in some cases be a large one. The
section of the public forming the audience may in some
cases be a small one. But this can make no difference,
though it may sometimes be difficult to decide whether a
particular collection of persons can properly be regarded
as constituting a domestic circle.
It makes no difference whether the actual performers
are paid for their services or given them gratuitously, or
whether the performers are strangers or members of the
domestic circle. The performers at what is unquestionably
a public performance frequently give their services for
nothing. Nor can an entertainment that is private when
given by the members of the home circle cease to be private
when given by strangers. The nature of and place where
the entertainment is given is immaterial. A private
entertainment may be given in public room. A public
entertainment may be given in a private house. The question
whether an entertainment is given in public or in private
depends, in my opinion, solely upon the character of the
audience.271

Similarly, in Turner v. Performing Rights Society,272 two companies

performed music to their employees during working hours. The
performing rights in works thus, used were vested in the Performing
Rights Society which sought to require the companies to take a licence
for the performances. The companies claimed that the performances were
not public. The Court held that such performances constituted
performances in public and were, therefore, an infringement of the
plaintiffs’ rights.

271
Supra note 113, at p. 95.
272
[1943] Ch. 167, CA [1943]; 1 All ER 413, CA.
110 INTELLECTUAL PROPERTY LAW

Lord Greene, M.R. stated:

In the present case the nature of the audience, when properly

understood in my opinion, puts the matter beyond doubt.
In each case the audience constitutes a substantial part of
the working population of the district. It is collected from
different households in the district. From time to time
groups of work-people or individual workmen or women
asked for a particular song to be played by gramophone
record. It is quite obvious, therefore, that the whole object
of these performances is to supply the workpeople
something which they like. So far as regards the music,
the workpeople are an audience. The fact that it assists
their work appears to me to be entirely irrelevant. While
the performances are being given and the workpeople are
doing their work, they are doing two things at once. They
are working and they are enjoying music, which normally
is a thing they would enjoy in their leisure hours. Instead
of having music in their leisure hours, they have it while
they are working. Nonetheless, they are, so far as music is
concerned, an audience listening to music, and the fact
that they are working at the same time does not alter that,
any more than it alters the fact that a housewife who turns
on her radio set while she is doing her housework is
listening to the music at the same time as she is doing that
work.
In the present case, having regard to the character of
the audience and all the relevant facts which bear upon
that matter, I have no doubt that these performances were
performances in public. In Jennings v. Stephens [1936]
Ch. 469, to which I have referred, I ventured to suggest
that in considering the character of the audience the primary
matter to consider was the relationship of the audience to
the owner of the copyright, rather than the relationship of
the audience to the performers. When the legislature under
the Copyright Act conferred upon the owner of the
copyright a monopoly, it no doubt intended that that
monopoly should be a real and not an illusory right of
property, and it is, therefore, in my opinion, important to
consider whether a particular performance, the character
of which in question, is of a kind calculated to whittle
down that monopoly to any substantial extent. To take a
case at one end of the scale, a purely domestic performance,
 ECONOMIC RIGHTS 111

or what is sometimes called a quasi-domestic performance,

is not a thing which is calculated to whittle down the value
of the monopoly. It is a thing which has no substantial
effect in depriving the owner of the copyright of the public
from whom he receives the value of the work of his brain
and his imagination. If you take the other end of the scale,
where there is a performance unquestionably in public,
such as at a public theatre or a public concert hall, obviously
if that were permitted that would whittle down the value
of the monopoly. The monopoly is, of course, confined to
performances in public, but considering whether a
performance is in public its effect upon the value to the
owner of the copyright of his statutory monopoly is, I
venture to think, a consideration to which at any rate great
importance should be given.

(v) Communication Right

The Copyright and Performance Rights Act grants to the owner of the
copyright in a work, an exclusive right to do or authorise others to
communicate to the public his work by any other means.273 Furthermore,
the Act provides that ‘communication to the public’ of a work includes
the performance, playing or showing of the work in public.274
It must be noted that though the Copyright and Performance Rights
Act provides a broad scope of the means or ways by which copyright
works may be communicated to the public, it does not, however, define
what constitutes a ‘public’. In Telstra Corporation Ltd v. Australasian
Performing Right Association Ltd, 275 the plaintiff, the Australian
Performing rights society (APRA) claimed against the defendant
telephone company, Telstra that the playing of broadcast or pre-recorded
music when a mobile or ordinary telephone user was put on hold infringed
the society’s copyrights. For mobile phones, APRA argued that Telstra
was broadcasting music, that is, communicating it by wire to the public.
Kirby, J., Dawson, J. and Gaudron, J. stated as follows:

There is no contention that the mobile phone network does

not involve transmission ‘by wireless telegraphy’. The sole
issue in contest was whether such transmission, in the
context of mobile phones, could be said to be ‘to the
public’. Can the transmission of music on hold by Telstra
273
Supra note 252.
274
Supra note 38.
275
(1997) 38 IPR 294, HC.
112 INTELLECTUAL PROPERTY LAW

be said to be a transmission to the copyright owner’s

public? On the criteria expressed in the case law, it can.
Music on hold is played largely by businesses and other
organisations to entertain, placate or distract customers or
clientele, in a way hoped to be congenial to them, while
the telephone lines are engaged. Telstra plays or transmits
as part of its overall telephonic communications enterprise
and cannot be described as ‘private’ or ‘domestic’ in
character. A telephone conversation may be private.
However, when callers are placed on hold, they do not
hear music simply because the person on the other end of
the line is busy and selects that particular individual as the
recipient of the music. They hear the music because it is
intended that any member of the public who calls the
engaged number, will hear the music. A caller hearing the
music on hold must, therefore, be part of that ‘public’ which
the owner of the copyright in the music contemplates to
be part of its audience.
…Lying behind the concept of the copyright owner’s
public recognition of the fact that where a work is
performed in a commercial setting, the occasion is unlikely
to be private or domestic and the audience is more
appropriately to be seen as a section of the public. It is a
commercial setting that an unauthorised performance will
ordinarily be to the financial disadvantage of the owner’s
copyright in a work, because it is in such a setting that the
owner is entitled to expect payment for his work’s
authorised performance. In this case it is not so much the
preparedness of the audience of music on hold to pay to
hear the works, were it not for their unauthorised
performance that is significant. That simple analysis
belongs to the age where communications were less
technologically advanced, and business and marketing
techniques were less developed.
Rather, it is the preparedness of those who wish the
music on hold to be played to bear the cost of the
arrangement which provides the key, for it reveals the
commercial character of the broadcast and the commercial
deprivation suffered by the copyright owner. Callers on
hold constitute the copyright owner’s public, not because
they themselves would be prepared to pay to hear the
music, but because others are prepared to bear the cost of
them having that facility. For the performance of the music
 ECONOMIC RIGHTS 113

to that audience, the copyright owner would expect to

receive payment, even if not from the members of the
audience. For these reasons, we conclude that when the
works were transmitted to persons using mobile telephones
when placed on hold…they were broadcast.276

Similarly, in National Football League v. Primetime 24 Joint Venture,277

the plaintiff owned the copyright in simultaneous videotape recordings
of its weekly football games. The defendant uplinked US broadcasts of
the games to its satellite for transmission to and viewing by subscribers
with satellite dishes in Canada. The plaintiff claimed that the uplinking
infringed its public performance right.
Van Graafeiland, J. for the Court stated:

…an intermediate carrier is not immune from copyright

liability simply because it does not retransmit a copyrighted
signal to the public directly, but instead routes the signal
to cable systems, which then retransmit to the public. We
believe the most logical interpretation of the Copyright
Act is to hold that a public performance or display includes
‘each step in the process by which a protected work wends
its way to its audience.’… Under that analysis, it is clear
that Prime Time’s uplink transmission of signals captured
in the United States is a step in the process by which NFL’s
protected work wends its way to a public audience. In short,
Prime Time publicly displayed or performed material in
which the NFL owns the copyright. Because Prime Time
did not have authorisation to make such a public
performance, Prime Time infringed the NFL’s copyright.

It is interesting to note that, the right of communication to the public has

been defined by the WIPO Copyright Treaty of 1996. Article 8 of the
said treaty provides that

Authors of literary and artistic works shall enjoy the

exclusive right to authorising any communication to the
public of their works, by wire or wireless means, including
the making available to the public of their works in such a
way that members of the public may access these works
from a place and at a time individually chosen by them.
This provision would cover, among other things, the
uploading of copyright material on a website.
276
Supra note 113, at pp. 101-102.
277
211 F.3d 10 (US Court of Appeals, 2nd Circuit, 2000).
114 INTELLECTUAL PROPERTY LAW

(vi) Broadcasting Right

The author’s right to authorise the use of copyright works in wireless

broadcasting was first recognised and incorporated in the Rome version
of the Berne Convention for the Protection of Literary and Artistic Works.
The Copyright and Performance Rights Act does grant to the owner of
the copyright an exclusive right in relation to his work to or authorise
others to broadcast or inclusion in a cable programme of a work.278 The
right of broadcasting covers the emission by wireless means for members
of the public within the range of the signal, whose equipment allows
reception of sounds or of images and sounds, whether by radio, television
or satellite.
The Copyright and Performance Rights Act defines broadcast as:
(a) used as a noun, means the aggregate of sounds, or of sounds and
visual images, other information, embodied in a programme as
transmitted by broadcasting; and
(b) used as a verb, means to transmit, by the emission of electro-
magnetic energy otherwise than over a path that is provided by a
material substance, for reception by members of the public, visual
images or sounds, or both, capable of being received by members
of the public in possession of suitable apparatus, regardless of
whether:
(i) the apparatus includes special decoding devices;
(ii) the members of the public are in Zambia or elsewhere;
(iii) the electro-magnetic energy is carried, after the initial
transmission but before it is received by members of the
public, on a path by a material substance; or
(iv) any member of the public actually receives.279
The Act further defines cable program as the aggregate of sounds, or of
sounds and visual images, or other information, embodied in a programme
as transmitted by a cable program service.280 Cable programme service
means a service that transmits, by the emission of electro-magnetic energy
over a path that is provided by a material substance, for reception by
members of the public, visual images or sounds, or both, capable of
being received by members of the public in possession of suitable
apparatus, regardless of whether:
(i) the apparatus includes a special decoding devices;
(ii) the members of the public are in Zambia or elsewhere;
(iii) any member of the public actually receives the images or
sounds.281
278
Supra note 252.
279
Supra note 38.
280
Ibid.
281
Ibid.
 ECONOMIC RIGHTS 115

(vii) Distribution right

Distribution is the act of putting objects into circulation for sale, or

otherwise making objects available to third parties, especially members
of the public. The distribution right, therefore, enables the author to control
the dissemination of physical copies of the work. The author can, for
instance, through the distribution right determine how many copies of
his work should be released on the market and in which countries his
book should be put on the market.
The Copyright and Performance Rights Act does provide for author’s
right of distribution of copies of a work.282 The Berne Convention
provides for distribution right in relation to cinematographic works. Article
14 (1)(i) of the Berne Convention states that authors of literary or artistic
works shall have the exclusive right of authorising the cinematographic
adaptation and reproduction of these works, and the distribution of the
works thus adapted or reproduced.
A distribution right is granted to authors under article 6 of the WIPO
Copyright Treaty, and to performers and phonogram producers under
articles 8 and 12 respectively of the WIPO Performances and Phonograms
Treaty. Article 6 of the WIPO Copyright Treaty provides that authors of
literary and artistic works shall enjoy the exclusive right of authorising
the making available to the public of the original and copies of their
works through sale or other transfer ownership.
Similarly, the WIPO Performances and Phonogram Treaty provides,
as regards performers, that they shall enjoy the exclusive right of
authorising the making available to the public of the original and copies
of their performances fixed in phonograms through sale or other transfer
ownership.283 As regards producers of phonograms the treaty further
provides that they shall enjoy the exclusive right of authorising the making
available to the public of the original and copies of their phonograms
through sale or other transfer ownership.284
It is worth noting that the distribution right, in some countries or
regional trading groupings such as the European Union, are subject to
exhaustion of rights. The author has the right to authorise the making of
a copy of his work for the purpose of sale, but that the author should not
have further rights to restrict all circulation in that country or regional
grouping of that particular copy. The author’s right of distribution of a
copy of a work is said to be ‘exhausted’ as regards that particular copy
when the author has permitted or consented to the sale of that copy. This
principle is also referred to as the ‘first doctrine of sale’ in the United
States.

282
S. 19(e), Copyright and Performance Rights Act.
283
Article 6, WIPO Performances and Phonograms Treaty.
284
Article 12, WIPO Performances and Phonograms Treaty.
116 INTELLECTUAL PROPERTY LAW

There are three types of exhaustion, namely national exhaustion,

regional exhaustion and international exhaustion. National exhaustion is
the exhaustion of the right to control further distribution of a copy of
work in a particular country once that copy has been legitimately placed
on the market in that country. Regional exhaustion, on the other hand, is
where the authorised placing of a copy of a work on the market in a
particular region, such as the European Union, will exhaust the author’s
possibility of controlling further distribution of that copy in that region.
Finally, the international exhaustion is where the authorised sale of a
copy of a work anywhere in the world exhausts the distribution right in
the country where the author claims to exercise such right.285 It must be
stated that of the three types stated, national exhaustion is widely accepted
by most copyright laws.

(viii) Rental Right

Rental right is the making available for use of a work, for a limited and
for direct or indirect economic or commercial advantage. The Copyright
and Performance Rights Act as well as the Berne Convention does not
provide for rental rights. However, the WIPO Copyright Treaty provides
for right of rental. Thus, authors computer programmes, cinematographic
works, and works embodied in phonograms shall enjoy the exclusive
right to authorise commercial rental to the public of the originals or copies
of their work.286 This shall not apply in case of computer programmes
where the programme itself is not the essential object of the rental; and
in the case of the cinematographic works, unless such commercial rental
has led to widespread copying of such works materially impairing the
exclusive right of reproduction.287
Similarly, the performers and producers of phonograms are granted
the right of rental. 288 Performers shall enjoy the exclusive right of
authorising the commercial rental to the public of the original copies of
their performances fixed in phonograms, even after distribution of them
by or pursuant to authorisation by the performer.289 Besides producers
of phonograms shall enjoy the exclusive right of authorising the
commercial rental to the public of the original copies of their phonograms,
even after distribution of them by or pursuant to authorisation by the
performer.290

285
Supra note 15, at pp. 308 - 309.
286
Article 7 (1), WIPO Copyright Treaty.
287
Article 7 (2), WIPO Copyright Treaty.
288
Articles 9, and 13, WIPO Performances and Phonograms Treaty.
289
Article 9, WIPO Performances and Phonograms Treaty.
290
Article 13, WIPO Performances and Phonograms Treaty.
 ECONOMIC RIGHTS 117

(ix) Right of Display

In some jurisdictions such as the USA, the author is granted a specific

right to display his work in public, this right being separate and distinct
from the public performance right. Therefore, under the US Copyright
Act, the author is granted the right to perform the copyright work publicly
and also to display the copyright work publicly.291 The display right covers
literary, musical, dramatic and various artistic works as well as individual
images of a motion picture or other audiovisual work.

(x) Right of Resale (Droit de suite)

In some jurisdictions such as France and Germany artists are granted the
right to participate in the sale price obtained from the sale of their works
of art or manuscripts subsequent to first transfer. This right has been
recognised and justified on the basis that an artist may be obliged or
forced to sell a work at the beginning of his career at a low price, and yet
find that, years later, having become famous, the work is changing hands
at greatly increased prices.292

291
S. 106 (4) and (5).
292
Supra note 113, at p. 317.
118 INTELLECTUAL PROPERTY LAW
 119

Chapter Nine

DEALING IN COPYRIGHT

Introduction

Copyright is a property right. The owner of the copyright in a work can

deal with it in different ways. He may choose to deal with or exploit the
work by himself, or he may sell it or he may assign it or license its use or
he may entrust its administration to another person or organisation.
Besides, the various rights or controlled acts in relation to the work may
be assigned or licensed separately to different persons, or it may be
administered by different persons, and for different areas. A good example
would be a book protected by copyright, where the right to publish may
be owned by one person, the right to distribute the book owned by another,
the right to a serialisation owned by another and the right to make or
adapt it into a play or a film by yet another.
It is imperative to note that though authors create copyright works
they rarely wish to deal with or exploit the works commercially by
themselves, but rather prefer to authorise other persons, usually legal
entities such as publishing companies or record companies to exploit
works on their behalf. There are various reasons for this and they include,
the copyright owner’s lack of financial resources to publish, manufacture,
produce, distribute, market and sell the work. Also in the case of
infringement the copyright owner may have no capacity and means to
deal with infringement such as taking legal action against persons
infringing copyright in the work.
It should also be noted that copyright, like any other intellectual
property rights, is an investment. Therefore, authors may wish to create
work with the hope of earning an income by assigning or licensing the
work to others who have the ability to exploit it commercially. Copyright
may also be used as security for a loan or other financial transaction.
A distinction must be made between the ownership of the copyright
in a work and the ownership of the physical object which embodies the
copyright. The two may be owned by different persons. If, for example,
one buys a book in which copyright subsists, the copyright in the book is
not transferred to the buyer, but remains with the copyright owner, and
what is only transferred is the physical object. Therefore, if such a person
makes copies of the book without the permission of the owner of the
copyright will infringe copyright in the work.
Copyright in a work can be transferred or transmitted by assignment,
testamentary disposition or by operation of law. The assignment of
copyright can be partial or absolute or both. It must be noted that copyright
120 INTELLECTUAL PROPERTY LAW

assignments and licenses must respect the author’s moral rights in the
work. Moral rights which should be respected include the right to be
identified as author or director of the works or to object to derogatory
treatment of a work.293 The author’s moral rights in a work are independent
of economic rights which are often transferred.294
The two main ways of dealing with copyright under the Copyright
and Performance Rights Act are, by way of assignment and licensing.295
Licenses may be exclusive or non-exclusive. In the case of an assignment
of copyright or an exclusive licence, the transaction to be effective must
be in writing signed by or on behalf of the copyright owner or assignor.296

Assignment of Copyright

The Copyright and Performance Rights Act297 provides that copyright in

a work shall be transferred by assignment; by testamentary disposition,
that is, where the author of a work names in his ‘will’ as beneficiary or
beneficiaries of the work after his death; or by operation of law such as
selling the copyright rights.
The Act298 requires that an assignment to transfer copyright shall be
in writing and signed by or on behalf of the assignor. The assignment of
copyright may involve either the transfer of the whole copyright in the
work or may be limited or restricted.299
An assignment of copyright may be limited by reference to:
(a) One or more particular act which the copyright owner has the
exclusive rights to authorise.300 An example would be where the
author of a work only assigns or authorises only translation of a
work.
(b) A part of the period for which the copyright subsists.301 An
example would be where the right granted such as reproduction
of a work is only for certain duration such as ten years, or for the
remainder of the term of copyright.
(c) A specific country or geographic area.302 An example would be
where the right granted such as reproduction of a book should
only be distributed or sold in a particular country or geographic
area such as Southern Africa.
Therefore, if the assignee sells or distributes the book outside a specific
country or geographical area, he will be in breach of the terms and
conditions of the assignment.
293
S. 11, Copyright and Performance Rights Act.
294
Supra note 231.
295
Ibid.
296
Supra 291.
297
S. 11 (1), Copyright and Performance Rights Act.
298
S. 11 (3), Copyright and Performance Rights Act.
299
S. 11 (2), Copyright and Performance Rights Act.
300
S. 11 (2)(a), Copyright and Performance Rights Act.
301
S. 11 (2)(b), Copyright and Performance Rights Act.
302
S. 11 (2)(c), Copyright and Performance Rights Act.
 DEALING IN COPYRIGHT 121

An assignment can also take place in relation to a work that has yet to
be created. The Act303 refers to this as the assignment of future copyright,
this is copyright that will come into existence once the potential author
decides to create the work and the work is effectively created.
The assignor will normally receive a lump sum in return for the
assignment of the copyright in a work. It must also be stated that where
the formalities provided for under the Act regarding assignment of
copyright have not been complied with, the courts may infer that there
has been an assignment of the copyright in equity only. Thus, in Warner
v. Gestetner,304 Warner had produced drawings of cats for Gestetner.
These drawings were to be used to produce a new product at a fair and
Warner would remain the owner of the copyright in the drawings. They
were later used by Gestetner in promotional literature. The court decided
that Gestetner was entitled to use the drawings and implied a clause
assigning beneficial ownership of the copyright to Gestetner.
From the court’s decision there is a legal owner of the copyright and
an owner at equity who is free to use the work. The equitable owner of
the copyright cannot bring an action for infringement without joining the
legal owner of the copyright to the action. In Performing Right Society
Limited v. London Theatre of Varieties Limited,305 the court held that the
owner of an equitable interest in the performing rights of a song entitled,
‘The Devonshire Wedding’ could not obtain a perpetual injunction without
joining the legal owner of the copyright as a party to the action.306
It is worth noting that the court may declare the assignment to be
unenforceable if it is unconscionable or contrary to public policy for
being in restraint of trade. In Schroeder Music Publishing Company
Limited v. Macaulay,307 when still an unknown 21-year-old song writer,
the plaintiff agreed with the defendant music publishing company to give
his services exclusively to the company for a period of five years,
extending automatically to ten years, in circumstances which afterwards
materialised. Under the agreement the plaintiff assigned copyright
worldwide in the songs that he composed during its term and was to
receive royalties in return. The company was not obliged to publish any
of the plaintiff’s work; it might terminate the agreement at any time on
one month’s notice, and it could also assign its rights. The plaintiff had
no equivalent rights of termination or assignment. In the fourth year, the
plaintiff sought a declaration that the agreement was void as being contrary
to public policy.

303
Supra note 298.
304
[1998] EIPR D-89.
305
[1924] AC 1.
306
See also Weddel v. Pearce & Major [1987] 3 All ER 642 where the court in a bankruptcy case held that
although an equitable assignee could sue in his own right, he could not obtain damages or a perpetual injunction
without joining as a party the assignor in whom the legal title of a chose in action was vested.
307
[1974] 3 All ER 616.
122 INTELLECTUAL PROPERTY LAW

Lord Diplock stated:

My Lords, the contract under consideration in this appeal

is one whereby the respondent accepted restrictions on the
way in which he would exploit his earning power as a song
writer for the next ten years. Because this can be classified
as a contract in restraint of trade the restrictions that the
respondents accepted fell within one of those limited
categories of contractual promises in respect of which the
courts still retain the power to relieve the promisor of his
legal duty to fulfil them. In order to determine whether
this case is one in which that power ought to be
exercised…we have to access the relative bargaining power
of the publisher and the song writer at the same time the
contract was made and to decide whether the publisher
had used his superior bargaining power to extract from
the song writer promises that were unfairly onerous to him.
It is in my view, salutary to acknowledge that in refusing
to enforce provisions of a contract whereby one party
agrees for the benefit of the other party to exploit or to
refrain from exploiting his earning power, the public policy
which the court is implementing is not some nineteenth
century economic theory about the benefit to the general
public of freedom of trade, but the protection of those
whose bargaining power is weak against being forced by
those whose bargaining power is stronger to enter into
bargains that are unconscionable.
…the question to be answered as respects a contract in
restraint of trade of the kind with which this appeal is
concerned is: was the bargain fair? The test of fairness is,
no doubt, whether the restrictions are both reasonably
necessary for the protection of legitimate interests of the
promissee and commensurate with the benefits secured to
the promisor under the contract. The test of fairness is not
satisfied and concludes that the contract is unenforceable.

Licensing of Copyright

A licence is simply permission granted by the owner of a right or interest

to another person allowing him to do something in respect of that right
or interest. As regards copyright, a licence is an agreement between the
copyright owner (the licensor) and another person (the licensee) whereby
 DEALING IN COPYRIGHT 123

the latter is permitted to do certain acts in relation to the work which

would otherwise infringe the copyright in the work. In return for the
agreement, the licensee is required to pay the licensor either by way of a
lump sum or by making royalty payment. This involves the payment of a
fixed sum or a percentage of the return each time the act authorised by
the licence takes place. For example, if a licence for a play is granted,
every time the play is performed, the licensor may demand to get a
percentage of the return or fixed amount.
Like assignment of copyright, a licence can be restricted in terms of
either the acts that are permitted to be done or the geographical area to
which the said allowed acts should be confined; or in relation to the term
or both. A licence agreement will normally provide for earlier termination,
for example, in the case of breach of important obligation by either party.
A licence can be exclusive or non-exclusive. An exclusive licence
should be in writing signed by or on behalf of the copyright owner
authorising the licensee, to the exclusion of all other persons including
the owner, to exercise or perform a right that would otherwise be
performed exclusively by the copyright owner. Therefore, where an
exclusive right has been granted to do certain acts in relation to a work,
the copyright owner will not grant those same rights to anyone else or
even exercise them himself. If for instance, the copyright owner in a
novel grants an exclusive licence to one company to distribute the novel,
the copyright owner will not grant the right of distribution to anyone else
whilst the exclusive right is in existence. However, though the licence
may be exclusive it may not necessarily apply to all the acts restricted by
copyright and may contain only one or some of them, such as distribution
of a novel and the owner will be free to deal with other rights such as
translation of the novel or adapting a novel into a film or play.
For non-exclusive licences, the copyright owner may make several
agreements in respect of the same acts restricted by copyright. In the
example given above, the copyright owner can grant distribution rights
to a number of companies to distribute his novel.
Unlike a non-exclusive licensee, the exclusive licensee can bring an
independent action for copyright infringement in the work after joining
the copyright owner or by the leave of the court.

Distinction between Assignments and Licences

It must be pointed out that in certain instances, it can be difficult to

determine whether a licence or an assignment has been granted. Where
the consideration for the grant is the payment to the copyright owner of
royalties or a share of the profits rather than a lump sum, the court has
held that there is an inference that sole and exclusive licence has been
124 INTELLECTUAL PROPERTY LAW

granted, rather than an assignment of copyright.308 However, where the

words ‘the publisher shall during the legal term of the copy have the
exclusive right of producing, publishing and selling the said work’ were
used, the court held that there was a partial assignment of copyright,
entitling the publisher to sue without joining the grantor as a party to the
proceedings.309 It has also been held that there is an assignment of
copyright even though the grant was in consideration of a royalty and the
parties described as ‘licensee’ and ‘licensor’.310
Likewise, in Johnathan Cape Limited v. Consolidated Press Limited,311
by an agreement in writing dated 16 April 1951, the author, Miss Anita
Loos, agreed to grant to the plaintiffs, Johnathan Cape Limited, their
successors and assigns ‘the exclusive right to print and publish an original
work, or any part or abridgment, provisionally entitled, ‘A Mouse is Born’
in volume form’, during the legal term of unrestricted copyright
throughout a specified area without the consent of the plaintiffs, published
substantially the same work in the issue of ‘The Australian Women’s
Weekly’ dated 2 July 1952. The publication consisted of a number of
sheets of paper fastened together in a paper cover on which the name of
the work appeared. In an action for damages for breach of copyright the
defendant argued that the agreement was a licence and that as a result,
the plaintiff could not bring an action without joining the author. The
court held that the plaintiffs were entitled to bring the action without
joining the author because, on the true construction of the agreement,
there was a partial assignment of the copyright by the author to the
plaintiffs and accordingly the plaintiffs were entitled to damages.
Therefore, whether the right granted by the copyright owner is an
assignment or licence will always be a matter of construction.
Other differences between assignments and licences are that only the
owner has a right to alter the work,312 and a right to sue, though an
exclusive licensee may sue after joining the owner or by leave of the
court. In the absence of express provisions to the contrary, an assignment
will generally be assignable, but a licence will not be assignable, unless
expressly provided for. In addition, there are also differences as regards
the effect of the insolvency of the assignee or licensee.

New Forms of Exploitation

Normally, assignments or licences contain provisions relating to the scope

or ambit of what activities should be done or performed in relation to the
308
Hole v. Bradbury (1879) 12 Ch. D 886 at 895.
309
Chaplin v. Leslie Frewin (Publishers) Ltd [1966] Ch. 71; [1965] 3 All ER 764.
310
Messenger v. British Broadcasting Company [1929] AC 151 HL.
311
[1954] 3 All ER 253.
312
Frisby v. British Broadcasting Corporation [1987] Ch. 932: A licensee, expressly or by implication, may not
be allowed to alter the work.
 DEALING IN COPYRIGHT 125

work under which copyright has been assigned or licensed. However,

questions may arise when a new form of exploitation of a work of
copyright is discovered which was not anticipated before the assignment
or licence was granted. The question that will often be asked is whether
the new form of exploitation of the work falls within the scope of the
licence. It will be a question of construction of the licence on the basis of
what was properly considered as being in the contemplation of the parties
when the agreement was made. In Hospital for sick children v. Walt Disney
Productions Incorporation,313 where the question arose as to whether a
licence granted in 1999, by Sir James Barrie in respect of all his literary
and dramatic works was limited to silent films or extended to sound
films which was first shown to cinema audiences in 1927. Similarly, in
Boosey and Hawkes v. Walt Disney Company,314 Peggy Lee was awarded
$3.8 million in respect of her constructions to the Walt Disney cartoon
film ‘The Lady and the Tramp’ on the basis that her contract with Walt
Disney did not extend to selling videos of the film. The contract was
drawn up before video technology existed.

Collecting Societies

Introduction

For anyone to perform any of the acts restricted by copyright, it is

necessary for him to obtain an assignment of copyright or a copyright
licence. In the vast majority of cases a licence will be sufficient for the
purposes for which the work is to be used. Every time a record is played
in public or is broadcast or a play performed in public where the work is
a copyright work, a licence will have to be obtained from the owner of
each of the copyrights involved unless one of the exceptions under the
permitted acts applies. This creates a huge administrative problem for
both the rights owners and the users of the copyright works.
To overcome the said administrative difficulties, various collecting
societies in almost every part of the world have been established to
administer the exploitation of certain rights comprised in copyright on
behalf of the rights owners. The rights owners are the members of these
collecting societies which take an assignment of the particular rights which
are to be exploited on behalf of the members, and in return the collecting
societies grant licenses to those who wish to exploit the rights administered
by the societies. The fees and royalties collected in return for licences are
then distributed to the members of the societies, that is, the right owners,
after deducting the administrative expenses of running the societies.
313
[1966] 1 WLR 1055; Boosey & Hawkes v. Walt Disney Co.
314
US 2nd Circuit 1998; (1988) 12 WIPR 189.
126 INTELLECTUAL PROPERTY LAW

The rights administered by the collecting societies cover a wide range

and include performance in public places and places occupied by the
public, such as restaurants, theatres, hotels, cafes, discotheques, bars,
transport vehicles; wireless broadcasting including satellite transmissions,
originated cable programmes and cable retransmissions, reproduction
for educational and scientific purposes, and for private use, making of
sound recordings, inclusion of protected material in soundtracks of films;
broadcasting and public performance, and sound recordings.

Historical Background

Collecting societies to represent the general interests of authors regarding

their rights in the protected copyright material traces their origin from
1777 when the earliest representative society of authors called Société
des Auteurs et Compositeurs Dramatiques was formed by Beauchais in
France. This was followed by the formation of national collecting societies
mostly in those countries with developed industries for the exploitation
of the authors’ works. The said national societies created were the French
society SACEM (Société des Auteurs, Compositeurs et Editors de
Musique) in 1851, the Italian society SIAE in 1882, the German society
known as GEMA in 1903, and the PRS (Performing Rights Society) in
the United Kingdom, and ASCAP (American Society of Composers,
Authors and Publishers) in the USA in 1914.315
Realising the limitations of national collecting societies to administer
rights of the authors in their protected works that were used or exploited
beyond their respective borders, reciprocal agreements between national
societies were entered into, so that they could represent each other’s
repertoires. This process was assisted by the formation of the
Confédération Internationale des Sociétés des Auteurs et Compositeurs
(CISAC) in 1926. CISAC, whose headquarters is in Paris, continues in
existence and now represents societies of authors, composers and
publishers throughout the world. Under CISAC Agreement, copyright
societies agree to represent foreigners whose music is played in that
country. In order to ensure that the repertoire of musical works written
by one society’s members is available for use in another territory,
collecting societies have a network of reciprocal representation
agreements, by which each licences the other to represent its repertoire
in the territory in which it is established.316
Similar to CISAC is a society known as the Bureau Internationale de
l’Edition Mécanique (BIEM), formed in Paris with the objective of
making available to the sound recording industry a standard contract to
315
Supra note 15, at pp. 402-407.
316
www.BMR.org.
 DEALING IN COPYRIGHT 127

enable signatories make and sell sound recordings of the works of the
members of BIEM on standard conditions.
It should be noted that the early collecting societies formed were only
concerned with administering the rights of the authors, because at that
time rights neighbouring or related to copyright namely, sound recording,
public performance and broadcasting were neither recognised nor
protected both at national and international level. However, after the
adoption of the Rome Convention in 1961, which gave recognition and
protection to the aforesaid rights, collecting societies were formed with
the objective of administering for the benefit of record producers and
performers, the remuneration arising from the broadcasting and public
performance of phonograms.
With the development of new technologies, which introduce new uses
to protected works, some countries have passed legislation to grant authors
and related rights owners a share in the money collected by way of levies
on recording machines and equipment. These schemes cover both
photocopying and sound, and audio and visual recording. The collecting
societies formed include International Federation of Reprographic
Reproduction Organisations (IFRRO), Société de la Propriété Artistique
et des Dessins et Modèles (SPADEM) formed to represent and administer
the rights of graphic and photographers in particular, commercial
reproduction of their works in books, magazines etc.

Legislative Framework

Before 1994, the Zambian copyright legislation neither recognised the

importance of collecting societies nor provided for their existence. Their
creation could only be done under the Societies Act.317 However, the
Copyright and Performance Rights Act provided for the registration of
collecting societies. The Act defines a ‘collecting society’ as an association,
partnership or body corporate whose principal purpose, or one of whose
principle purposes, is the representation of copyright owners in the
negotiation and administration of collective copyright agreement.318
Furthermore, the Act defines ‘collective copyright agreement’, as an
agreement between a group of owners of copyrights and another person
licensing the person to use material subject to any of the copyright.319
A collecting society wishing to be registered can apply to the Registrar
of Copyright for registration and, if the Registrar is satisfied that it qualifies
under the definition of a collecting society, he shall register as such.320 In
1996, the first collecting society called Zambia Music Copyright
317
Cap 186 of the Laws of Zambia.
318
Section 22 (1), Copyright and Performance Rights Act.
319
Ibid.
320
Section 22 (2), Copyright and Performance Rights Act.
128 INTELLECTUAL PROPERTY LAW

Protection Society (ZAMCOPS) was created to represent the music

industry. The functions of ZAMCOPS are:
(i) to establish and operate licensing schemes, so that a user obtains,
for a single payment to the society, a licence covering all works
under the society’s control;
(ii) to collect royalties and licence fees on behalf of its members
and distribute them amongst their members; and
(iii) to enforce the copyright against infringers.
In case of a dispute between a registered collecting society and a person
who requires a licence from the collecting society regarding the decision
of the collecting society whether or not to grant such a licence, or the
terms and conditions on which the collecting society is prepared to grant
the licence, either party may refer the dispute to the Registrar of Copyright
for arbitration.321 Where such a dispute is referred to the Registrar of
Copyright, he shall give both parties an opportunity to present their
respective cases either in person or through representatives, both orally
and in writing; and after hearing both parties, make such written orders,
as he considers reasonable.322 An order made by the Registrar of Copyright
in relation to the said dispute shall be binding on the parties.323

Compulsory Licences

The Copyright and Performance Rights Act allows the Registrar to grant
compulsory licences to translate or reproduce certain works.324 However,
the said licences are subject to articles II, III and IV of the Appendix to
the Berne Convention for the Protection of Literary and Artistic Works
entitled ‘Special Provisions Regarding Developing Countries’. The said
Appendix, included to the Berne Convention of 1971, known as the Paris
Act, which was designed to allow developing countries to institute systems
under which works protected under the Berne Convention may under
certain conditions be translated or reproduced.325 According to the
Appendix, a developing country which ratifies or accedes to the Paris
Act and which, having regard to its economic situation and its social or
cultural needs, does not consider itself immediately in a position to make
provision for the protection of all rights provided for in the 1971 Act,
may declare that it will avail itself of the facilities in the Convention
permitting limitations on the right of translation326 and/or the right of
reproduction.327
The Registrar may, upon application of a Zambian citizen or a
company incorporated in Zambia grant the right to translate and reproduce
321
S. 23 (1) (a) and (b), Copyright and Performance Rights Act.
322
S. 23 (2) (a) and (b), Copyright and Performance Rights Act.
323
S. 23 (3), Copyright and Performance Rights Act.
324
s. 55 (1), Copyright and Performance Rights Act.
325
Article II, Appendix of Berne Convention.
326
Ibid.
 DEALING IN COPYRIGHT 129

the translation of a work in printed or analogous form, or an audiovisual

work produced solely for the purposes of systematic instruction, if after
three years of the first publication of the said work, it has not been
translated into a language in general use in Zambia.328 Furthermore, the
Registrar may on the application of a Zambian citizen or a company
incorporated in Zambia, grant the person the right to translate for the
purposes of broadcasting, to broadcast a literary work subject to copyright
contained in an audiovisual work produced for the purposes of systematic
instruction.329 The Registrar may also, on the application of a Zambian
citizen or a company incorporated in Zambia, grant the person the right
to reproduce and distribute in Zambia, copies of the work where the said
copies of a work is printed or in analogous form, or in audiovisual form
have not been made available to the public in Zambia for a period of:
(a) three years, in case of works of the natural and physical sciences,
mathematics or technology;
(b) seven years, in the case of works of fiction, poetry, drama or
music or art books; or
(c) five years, in any other case.330

Copyright Registration

The Copyright and Performance Rights Act provides for the registration
of copyrights.331 However, the registration of copyright is optional332
and the existence and enforceability of a copyright shall be independent
of whether or not it is registered.333 If a copyright owner in a work wishes
to register, he has to lodge with the Registrar:
(a) a claim for registration, in a form approved by the Registrar; a
copy of the work in which copyright is claimed;
(b) particulars of the owner of the copyright held by that owner; the
date on which the copyright arose; the person from whom the
copyright was acquired, if the owner of the copyright; and any
other matters required by the approved form;
(c) a statutory declaration that he is the owner of the copyright
described.334
Where the Registrar receives the application for registration of the
copyright in a work, he shall register the copyright by assigning it an
identifying number and issuing a certificate of registration stating:
327
Article III, Appendix of Berne Convention.
328
S. 55 (2), Copyright and Performance Rights Act.
329
S. 55 (3)(a) and (b), Copyright and Performance Rights Act.
330
S. 55 (4)(a) and (b), Copyright and Performance Rights Act.
331
S. 40, Copyright and Performance Rights Act.
332
Ibid.
333
S. 39 (4), Copyright and Performance Rights Act.
334
S. 40 (1), Copyright and Performance Rights Act.
130 INTELLECTUAL PROPERTY LAW

(a) that on the date specified in the certificate, the person named in
the certificate claimed the copyright in the work;
(b) the type of copyright claimed and any limitations;
(c) the date on which the copyright arose; and
(d) that a copy of the work may be inspected at the office of the
Registrar.335
In case of change of any of the particulars in relation to a registered
copyright, the copyright owner is required to furnish the Registrar with
the details of the changed particulars.336
The Copyright and Performance Rights Act places restrictions on the
transfer of a registered copyright. Thus, where a copyright is registered
in the name of a person, the Registrar shall not transfer the registration to
the name of another person except:
(e) on infringement with the Registrar of an instrument, in a form
approved by the Registrar, evidencing the assignment of the
copyright to the other person and executed by both the assignor
and assignee or by persons duly authorised on behalf of the assignor
and the assignee; or
(f) on presentation to the Registrar of such evidence as he may
reasonably require that ownership of the copyright has devolved
on the other person by reason of his being the legal representative,
receiver or trustee in bankruptcy of the first person, or otherwise
by operation of law.337
The Copyright and Performance Rights Act requires the Registrar to keep
a register of copyrights in works other than broadcasting or cable
programmes for the copyrights that he has registered.338 The Register,
and copies of the said works shall be made available for inspection by
members of the public on payment of a prescribed fee.339
It is worth noting that as regards the register of copyrights, where the
copyright in a work is owned by more than one person, otherwise than as
joint owners, the Registrar shall issue a new certificate of registration
where:
(i) the registration is transferred;
(ii) the register is ordered to be rectified;
(iii) particulars relating to a registered copyright are varied so that the
certificate is no longer accurate; or
(iv) the Registrar is satisfied that a certificate has been lost or
destroyed.340
335
S. 40 (3), Copyright and Performance Rights Act.
336
S. 40 (4), Copyright and Performance Rights Act.
337
S. 41, Copyright and Performance Rights Act.
338
S. 39 (2), Copyright and Performance Rights Act.
339
Ibid.
340
S. 43, Copyright and Performance Rights Act.
 DEALING IN COPYRIGHT 131

It is worth noting that as regards the register of copyrights, where more

than one person owns the copyright in a work, otherwise than as joint
owners, the rights held by each of those persons shall be treated as a
separate copyright.341

Registrar of Copyright

For the purposes of administration of the Copyright and Performance

Rights Act, the said Act provides for the office of the Registrar of
Copyright who shall be a public officer appointed by the Service
Commissions Act.342
The duties and functions of the Registrar of Copyright are:
(i) to monitor the activities of collecting societies;
(ii) to encourage and facilitate the development of collecting
societies;
(iii) at the request of the copyright owners or collecting societies, to
examine cases of alleged copyright infringement and, where
appropriate, to advise the Director of Public Prosecutions;
(iv) to provide information and advice on copyright matters to the
Minister;
(v) to perform such other duties or functions as are provided for
under the Act.
In performance of his day-to-day duties and functions, staff appointed
under the Service Commission Act assists the Registrar of Copyright.343
Copyright and Performance Rights Act empowers the Minister of
Information and Broadcasting, being the Minister responsible for
copyright issues, to make regulations for or with respect to any matter
that is required, permitted to be prescribed under the Act, or that is
necessary or convenient to be prescribed for carrying out or giving effect
to the Act.344

Dispute Settlement

It must be stated that unlike other Copyrights Acts, such as the United
Kingdom, which provides for a Copyright Tribunal to handle disputes
arising under the Act, the Copyright and Performance Rights Act does
not provide for a Copyright Tribunal. Instead, the Registrar of Copyright
administers disputes arising under the Act.

341
S. 39 (1), Copyright and Performance Rights Act.
342
S. 54 (1), Copyright and Performance Rights Act.
343
Ibid.
344
S. 52 (1), Copyright and Performance Rights Act.
132 INTELLECTUAL PROPERTY LAW

The disputes that the Registrar of Copyright is mandated to administer

and arbitrate include those relating to:
(i) registered collecting societies;345
(ii) exercise of moral rights by the author or director.346

345
S. 23, Copyright and Performance Rights Act.
346
S. 24 (4), (5) and (6), Copyright and Performance Rights Act.
 133

Chapter Ten

COPYRIGHT INFRINGEMENT

Introduction

The owner of copyright in a work is given ‘exclusive rights’ to use the

work as he wishes or perform certain acts in relation to the work and to
prevent others from using the work without his authorisation. Thus,
anyone will infringe the copyright in the work if he performs any acts
restricted or controlled by copyright without the permission of the owner
of the work. However, a person will not infringe copyright in the work if
he performs acts which are not restricted or controlled by the copyright
owner. Besides, he does not need to get permission from the owner of
the copyright work for the acts in relation to work not restricted or
controlled by the copyright owner, for example, lending a book to a
friend.
There are two types of copyright infringement, namely primary347
and secondary348 infringement. Primary infringement arises where one
performs any of the acts restricted or controlled by copyright such as
copying or reproducing the work. Secondary infringement, on the other
hand, arises where one deals commercially in infringed copies of copyright
works such as selling pirated musical cassettes, compact discs (CDs) or
videos or DVD, without the consent of the copyright owner. Copyright
can also be infringed vicariously349 , where for instance a person without
the permission of the copyright owner authorises or assists another to do
a restricted act such as to make copies or uploading or downloading a
literary work.

Acts Restricted By Copyright

Section 17 of the Copyright and Performance Rights Act provides that

the owner of the copyright in a work shall have exclusive right to do or to
authorise others to do the following acts or controlled acts:
(i) to copy or reproduce the work;
(ii) to publish or issue copies to the public;
(iii) to perform, show or play the work in public;

347
Supra note 252.
348
Ibid., section 19.
349
A&M Records v. Napster Inc. 239 F.3d 1004 (US Court of Appeal 9th Circuit, 2001).
134 INTELLECTUAL PROPERTY LAW

(iv) to broadcast the work or include it in a cable programme;

(v) to make an adaptation of the work or do any of the above in
relation to an adaptation.350
Anyone who does or allows another to do any of the aforesaid restricted
or controlled acts by copyright without the permission, contractual or
otherwise, by the copyright owner will infringe copyright subsisting in a
work. Thus, copyright in a work is infringed by anyone who without the
consent of the owner of the copyright does or authorises another person
to do a controlled act in relation to the work such as issuing copies or
communicating a work to the public.351
As copyright protects not the ideas, but the expression of ideas;
copyright infringement, then, is the infringement of an intangible right in
the expression of an idea. Therefore, copying an idea will not constitute
copyright infringement, as the idea copied is not protected by copyright.
The work should also be dissociated from its physical, tangible carrier,
as for instance, when someone buys a painting, he buys the piece of
paper or cloth on which the painting has been done, but the ownership of
the copyright in the painting is not transferred to the buyer. Similarly, if
one buys a CD containing music, while he retains the ownership of the
physical object (CD) on which the music is incorporated, the copyright
in music on that CD remains with the author. Thus, the buyer of the CD
can only do certain things that fall within the permitted acts of copyright
law such as for private use.

Misappropriation

Copyright infringement requires that the plaintiff must prove that the
defendant has misappropriated his work. In order to determine whether
or not a copyright work has been misappropriated any of the following
elements must be proved namely, causal link or connection; subconscious
copying and the intention of the infringer; indirect copying; and substantial
copying.

Causal link or connection

It is a general principle of copyright law that it is not the idea which is

protected, but the expressions of the idea. Therefore, copyright
infringement will not arise where a work expressing the same idea is
created or reached independently by two people or if a common source
of information or data is relied upon. A good example would be where
two journalists watching a soccer match come up with a similar story
350
Supra note 252.
351
S. 18 Copyright and Performance Rights Act.
 COPYRIGHT INFRINGEMENT 135

while sitting in different places of the football pitch. Likewise, two

photographers may come up with similar or identical photograph of
Victoria Falls as they may have taken the photograph at the same spot
and at the same time.
Thus, in Franklin Mint Corp. v. National Wildlife Art Exchange Inc.,352
the plaintiff, the National Wildlife Art Exchange, commissioned a well-
known wildlife artist to produce a watercolour bird painting of cardinals.
The artist transferred the copyright to the plaintiff, who issued limited
edition prints of the work. Three years later, the defendant, Franklin Mint,
commissioned the same artist to paint a set of four bird pictures, including
one of cardinals, and also issued prints of the pictures for sale. The plaintiff
sued the defendant for copyright infringement of its cardinals. The
plaintiff claimed that the painter had copied a substantial part of the earlier
work. The painter replied that he had just taken the idea and that he
should not be barred from ever painting pictures of cardinals again. The
court of the first instance agreed with the painter and the Appeal Court
affirmed a judgment for the defendant.
Judge Weis for the Court had the following to say:

Since copyrights do not protect thematic concepts, the fact

that the same subject matter may be present in two paintings
does not prove copying or infringement. Indeed, an artist
is free to consult the same source for another original
painting. …Precision in marking the boundary between
the unprotected idea and protected expression, however,
is rarely possible, and between copying and appropriation
is often blurred. Troublesome, too, is the fact that the same
general principles are applied in claims involving plays,
novels, sculpture, maps, directories of information, musical
compositions, as well as artistic paintings. Isolating the
idea from the expression and determining the extent of
copying required for unlawful appropriation necessarily
depend to some degree on whether the subject matter is
words or symbols written on paper, or paint brushed onto
canvas. Moreover, in the world of fine art, the ease with
which a copyright may be delineated may depend on the
artist’s style.

It is a general principle of copyright law that in order to sustain an action

for copyright infringement it is important to prove a relevant or causal
connection between the work of the plaintiff and that of the defendant,
352
575 F.2d 62 (US Court of Appeals, 3rd Cir. 1978).
136 INTELLECTUAL PROPERTY LAW

and that the defendant must be proved to have copied the work through
having access to the plaintiff’s work. Furthermore, in order to prove that
the defendant’s work is copied from that of the plaintiff, a substantial
similarity between the two works must be shown. The similarity can
either be literal, as where the defendant has taken the actual words of the
plaintiff’s work, or it can be non-literal, as where the defendant has taken
the elaborated features of the plaintiff’s work even without using the
plaintiff’s words such as taking the developed plot of a play.
In short, to prove appropriation or copyright infringement in a work
the plaintiff must prove that:
(a) the works are similar;
(b) the plaintiff’s work was created first, and
(c) the defendant had access to the plaintiff’s work, of which he
must have availed himself.
In Francis Day & Hunter v. Bron,353 the plaintiff, a music publisher,
complained that the defendant’s song Why was copied from an earlier
song In a Little Spanish Town, in which the plaintiff held copyright. The
works were strikingly similar. The defendant denied that he had
consciously ever heard the plaintiff’s tune, although it was accepted that,
because of the tune’s popularity, he may have subconsciously heard it.
The defendant swore that he had not copied the earlier work and provided
evidence on how the work had been composed. The trial court accepted
the defendant’s evidence, and therefore, dismissed the plaintiff’s action.
The judgment was affirmed on appeal.
Lord Justice Diplock stated:

This appeal seems to me to turn entirely upon a question

of fact: was the judge entitled, notwithstanding the
similarities between the melodies of the plaintiffs’ song In
a Little Spanish Town and the defendant’s song Why, to
refuse to infer that the composer of the latter work copied
it from the former work?
It is conceded on the one hand (as it is obvious to the
ear) that the two works show considerable similarities, and
on the other hand that the composer of Why did not
intentionally copy it from In a Little Spanish Town; but it
was found by (the court of the first instance) that the
composer of Why must at some time and in some
circumstances have heard In a Little Spanish Town. …
Neither the intention to infringe, nor knowledge that he is
infringing on the part of the defendant, is a necessary
353
[1963] Ch. 587.
 COPYRIGHT INFRINGEMENT 137

ingredient in the cause of action for infringement of

copyright. Once the two elements of sufficient objective
similarity and causal connection are established, it is no
defence that the defendant was unaware and could not have
been aware that what he was doing infringed the copyright
in the plaintiff’s work.
There were three possible explanations of the
similarities: conscious copying, unconscious copying,
coincidence. The first judge rejected. He accepted the
denial of the composer of Why. This is a finding of primary
fact, and it depends ultimately on credibility. The plaintiff’s
do not seek to disturb it. This reduces the possible
explanations to two: unconscious copying or coincidence.
The judge did not reject the possibility that ‘unconscious
copying’ of musical works can occur. He proceeded to
consider, in the light of the conflicting expert evidence,
which was the more probable explanation of the
similarities, unconscious copying, or coincidence. The
judge was not satisfied that the similarities were due to
unconscious copying. This, no doubt, was an inference of
fact … No attempt has been made to demonstrate that he
has overlooked or misunderstood any of the evidence.
The degree of objective similarity is, of course, not
merely important, indeed essential, in proving the first
element in infringement, namely, that the defendant’s work
can properly be described as a reproduction or adaptation
of the copyright work; it is also very cogent material from
which to draw the inference that the defendant has in fact
copied, whether consciously or unconsciously, the
copyright work. But it is not the only material. Even
complete identity of the two works may not be conclusive
evidence of copying, for it may be proved that it was
impossible for the author of the alleged infringing work to
have had access to the copyright work. And, once you have
eliminated the impossible, namely, copying, that which
remains, namely, coincidence, however improbable, is the
truth; I quote inaccurately, but not unconsciously, from
Sherlock Holmes.354

Similarly, in Ty, Inc. v. GMA Accessories, Inc., 355 the plaintiff

manufactured small stuffed animals called ‘Beanie Babies’, including a
pig called ‘Squealer’ and a cow called ‘Daisy’. It obtained US copyright
354
Supra note 113, at pp. 137-138.
355
132 F.3d 1167 (US Court of Appeals, 7th Cir. 1997).
138 INTELLECTUAL PROPERTY LAW

registrations for them as ‘soft sculptures’. The toys became very popular.
Three years later, the defendant marketed its own line of bean-bag stuffed
animals, including ‘Preston the Pig’ and ‘Louie the Cow’, which were
virtually identical to ‘Squealer’ and ‘Daisy’. The first instance court
granted the plaintiff a pre-trial injunction to prevent these two pigs and
cow toys being marketed. The defendant appealed against the injunction
on ‘Preston the Pig’, denying infringement. The appeal court dismissed
the appeal.
Chief Justice Posner for the Court stated:

The Copyright Act forbids only copying; if independent

creation results in an identical work, the creator of that
work is free to sell it. … But identity can be powerful
evidence of copying. … The more a work is both like an
already copyrighted work and; for this is equally important;
unlike anything that is in the public domain, the less likely
it is to be an independent creation. Circumstantial evidence;
evidence merely probabilistic, rather than certain; can
confer sufficient confidence on an inference, here of
copying, to warrant a legal finding.
The issue of copying can be broken down into two sub-
issues. The first is whether the alleged copier had access
to the work that he is claimed to have copied; the second
is whether, if so, he used his access to copy. Obviously,
access does not entail copying. An eyewitness might have
seen the defendant buy the copyrighted work; this would
be proof of access, but not of copying. But copying entails
access. If, therefore, two works are so similar as to make it
highly probable that the later one is a copy of the earlier
one, the issue of access need not be addressed separately,
since if the later work was a copy its creator must have
had access to the original. Of course the inference of access,
and hence of copying, could be rebutted by proof that the
creator of the later work could not have seen the earlier
one or a copy of the earlier one. A similarity that is so
close as to be highly unlikely to have been an accident of
independent creation is evidence of access.
Two works may be striking similar, may in fact be
identical, not because one is copied from the other, but
because both are copies of the same thing in the public
domain. In such a case, imagine two people photographing
Niagara Falls from the same place at the same time of the
day and year and in identical weather, there is no inference
 COPYRIGHT INFRINGEMENT 139

of access to anything but the public domain, and, equally,

no inference of copying from a copyrighted work. … A
similarity may be striking without being suspicious. But
here it is both. GMA’s pig is strikingly similar to Ty’s pig
but not to anything in the public domain; a real pig, for
example … Real pigs are not the only pigs in the public
domain. But GMA has not pointed to any fictional pig in
the public domain that Preston resembles. Preston
resembles only squealer, and resembles his so closely as
to warrant an inference that GMA copied Squealer. … A
glance … shows an identity between Louie the Cow and
Ty’s daisy that is so complete (and also not explainable by
reference to resemblance to a real cow or other public
domain figure) as to compel an inference of copying. If
GMA thus must have access to Louie, it is probable, quite
apart from any inference from the evidence of similarity,
that it had access to squealer as well.356

Subconscious copying and Intention of the infringer

There is copyright infringement where someone unconsciously copies

the work which is protected by copyright. A good example is that of a
composer who listens to a number of tunes and when composing his
own music unconsciously includes some of the tunes he has heard. Indeed,
some judges have accepted that copying could occur subconsciously
where a person reads, sees or hears a work, forgets about it, but then
reproduces the same, honestly believing it to be his own. In such a scenario,
proof of copying, as stated by Wilberforce J. in Francis, Day & Hunter
v. Bron357 , will depend

on a number of composite elements. The degree of

familiarity, if proved at all or properly inferred, with the
plaintiff’s work, the character of the work, particularly its
qualities of impressing the mind and memory, the objective
similarity of the defendants’ work, the inherent probability
that such similarity as is found could be due to coincidence,
the existence of other influences on the defendant
composer, and not least the quality of the defendant
composer’s own evidence on the presence or otherwise in
his mind of the plaintiff’s work.

The USA’s courts like the English courts have held that subconscious
copying may be an infringement. Thus, in Bright Tunes Music Corp v.
356
Supra note 113, at pp. 136-137.
357
Supra note 353.
140 INTELLECTUAL PROPERTY LAW

Harrisongs Music Ltd,358 this case involved George Harrison, then a

member of the Beatles pop group. Harrison was held to have infringed
copyright by subconsciously copying the Chiffons’ hit song He’s So Fine,
when he composed his own hit My Sweet Lord. Harrison had heard the
earlier song eight years previously when it was on the charts and getting
regular airplay. The Court held that he must have unwittingly copied it
when he was stringing My Sweet Lord together nearly a decade later. He
had access to the first tune, the two works were substantially similar, and
he could not dispel the inference of copying that arose after access and
similarity were proved.
A large award of damages against Harrison was upheld on appeal.
The appellate court rejected a submission that the doctrine of subconscious
copying was a dangerous one, stating that ‘any other rule, could as a
practical matter substantially undermine copyright protection.’
Often, defendants in copyright infringement claim that their act, though
not authorised by the plaintiff, has caused him no harm and may even
have benefited him. Others claim that their motive or intent was innocent,
that is, they did not know that their actions were wrong. Also that they
did not profit from their act, for example, that they gave away infringing
copies for free or otherwise acted for the benefit of the public. Besides,
they may even claim that obtaining the plaintiff’s consent was impossible.
It must be stated that the intention of the defendant or infringer is irrelevant
to influence the finding for copyright infringement, as the infringement
occurs once the defendant does an act that is reserved to the copyright
owner, unless the defendant can bring himself within the exception set
out in the Copyright Act or some other statute.
Therefore, in Bishop v. Stevens359 the plaintiff, the composer of an
original musical work, sued the defendant television station for making
an unauthorised tape of the work. The defendant had a licence to broadcast
the music. It argued that (a) making the tape was customary in the
broadcasting industry; (b) the tape was made only for technical reasons;
(c) the tape was only a temporary or ‘ephemeral’ copy and would later
be destroyed; and (d) the taping did not harm the plaintiff. The court,
however, dismissed these arguments and granted judgment for the
plaintiff.
Justice McLachlin for the Court stated:

The respondents argue that an ephemeral recording is not

made for the purpose of being reproduced or sold, but
rather for technical reasons. But as the respondent points
358
420 F.Supp. 177 (US District Court, New York, 1976), affirmed on this point, Abkco Music Inc. v. Harrisongs
Ltd, 722 F.2d 988 (US Court of Appeals, 2nd Circuit, 1983).
359
[1990] 2 SCR 467 (Canada Supreme Court).
 COPYRIGHT INFRINGEMENT 141

out, section 3 (1)(d) of the Copyright Act contains no

mention of purpose. It simply provides that copyright
includes the sole right ‘to make any record… or other
contrivance by means of which the work may be
mechanically performed or delivered’. Nothing in this
section restricts its application to recordings made for the
purpose of reproduction and sale. A recording may be made
for any purpose, even one not prejudicial to the copyright
holder, but if it is not authorised by the copyright holder,
then it is an infringement of his rights. For example, it
would seem to me that an agent who made an unauthorised
recording of a songwriter’s work for the purpose of getting
record companies interested would not have infringed the
Act any less because his action ultimately benefited the
songwriter.
Even though the purpose for which the recordings are
made is not one that is prejudicial to the copyright holder,
that is, not to say that the copyright has no interest in
whether or not they are made. The existence of a studio
recording increases the possibility of unauthorised copying,
and one of the copyright holder losing some degree of
control over the work. While the risk of this occurring may
be small when the recording is made by a legitimate
broadcaster such as the appellant, the copyright holder
would no doubt want the security of knowing that adequate
safeguards are being taken against this possibility. It cannot
be denied that ephemeral recordings are a highly useful
device for broadcasters, but they are also a device which
is subject to abuse; abuse that the copyright holder whose
interests the Act is designed to protect has little means of
detecting or controlling.

Also in Pro Sieben Media A.G. v. Carlton U.K. Television Ltd,360 a British
television current affairs programme took as its subject people who sold
sensational stories about themselves so-called ‘cheque-book journalism.’
The programme included a 30-second clip from an earlier German
television programme that featured an interview by a British couple who
had sold the rights to their story to the German studio. The German
company sued the British company for copyright infringement. The
defendant eventually succeeded before the Court of Appeal (after losing
the first instance court) on its statutory defence that it had dealt fairly
with the German programme for the purpose of the criticism.
360
[1998] FSR 43, reversed on other grounds [1999] FSR 610.
142 INTELLECTUAL PROPERTY LAW

As regards the argument that the defendant’s acts should be looked at

sympathetically because of their public benefit, Laddie J. had the
following to say:

Once copyright exists in a filmed or broadcast interview,

prima facie, an unlicensed third party cannot copy or
broadcast a substantial part of it. He must go out and get
his own interview. Depending on the nature of the copyright
work, he may well be able to take some of the underlying
facts referred to in the work, but he may not copy the work
itself. That is so even if the motives for wanting to copy
are laudable, for example for educational, public service
or reasons. … A film cannot de deprived of its statutory
copyright simply because the courts feel its subject matter
is unimportant, newsworthy, offensive or only ephemeral.
An industry based on exploiting film footage and sound
recordings has grown up on the back of these statutory
rights and their equivalents in other countries. Furthermore,
it has not been suggested in this case that the court has an
unfettered right to refuse to enforce copyright where it
thinks that to do so would be ‘fair’. For better or for worse,
the Copyright Designs and Patents Act 1988, has set out a
number of specific exceptions to the blanket scope of
copyright infringement.

Similarly, the court rejected the claim by the defendants that they could
not have obtained the prior consent of the copyright owner in time and
that the copyright in the work was not harmed by the recording of such a
small segment of the music. In Hawkes & Son Ltd v. Paramount Film
Service Ltd361 , the plaintiff owned the copyright in the music march
Coloney Bogey. The defendants made a news film which included
schoolboys parading before the Prince of Wales to a band playing the
march. The defendants required to exhibit the film quickly otherwise it
would no longer be news. The plaintiff sued the defendants for
infringement for recording part of the music. The court found
infringement.
Lord Hanworth, M.R. stated:

I do not think there is much in the plea of the defendants

that the rapidity with which they have to reproduce these
new films makes it difficult, or indeed impossible, for them

361
[1934] Ch. 593.
 COPYRIGHT INFRINGEMENT 143

to obtain a licence from the owners of the musical

copyright. Some system could no doubt be arranged
whereby, if there is a possibility of some infringement of
copyright, there could be a licence applicable to the
occasion, so as to avoid any damage to the plaintiffs or
other owners of copyright. We have to consider the statute
upon broad lines; to bear in mind the necessity for the
protection of authors whether of musical or of literary
compositions. The Copyright Acts have to be construed
with reference to that purpose, and they are not to be made
the instruments of oppression and extortion. … The right
of the owner of a copyright is not determined or measured
by the amount of actual damage to him by the reason of
infringement; copyright is a right of property, and he is
entitled to come to the Court for the protection of that
property, even though he does not show or prove actual
damage.

Indirect copying

Copying of a work protected by copyright can be either direct or indirect.

Direct copying occurs where a copy of a work in its initial presentation is
made for example, by duplicating a music cassette. Indirect copying, on
the other hand, occurs where the work is presented in some form other
than its initial presentation.

Substantial Copying

The Copyright and Performance Rights Act362 provides that copyright in

a work will be infringed by taking all of the protected work or a substantial
part of the protected portion of the work. The Act defines substantial part
to include any part of a work which on its own can be identified as part
of the work by someone who is familiar with the work.363
It must be stated that, where there has been copying and all or almost
all of the work is taken, proof of infringement is easier. Thus, in
Antiquesportfolio.com v. Rodney Fitch & Co,364 the defendant copied a
third party’s photographs, scanned them into a computer, reduced them
in size, without authorisation; as elements of a website it was constructing
for the plaintiff. The court held that the copyright owner’s reproduction
right has been infringed.

362
S. 17 (7).
363
Supra note 145.
364
[2001] ECDR 51.
144 INTELLECTUAL PROPERTY LAW

Neuberger, J. stated that,

… Nonetheless, it seems to me that where the whole of

the photograph is reproduced, as in the present case, it
would be an infringement. After all, it would seem rather
strange if, as I have concluded, copyright exists in the whole
photograph, there is no infringement in a case involving
reproduction of the whole photograph.

Whether or not a substantial part of the work has been copied is often
problematic and will have to be determined on case-by-case basis. It is a
matter of degree and will depend on the circumstances of the case. In
Ladbroke (Football) Ltd v. William Hill (Football) Ltd,365 Lord Hoffmann
stated that,

the question of substantiality is a matter of quality rather

than quantity. But what quality is one looking for? That
question, as it seems to me, must be answered by reference
to the reason why the work is given copyright protection.
In literary copyright, for example, copyright is conferred
irrespective of literary merit upon an original literary work.
It follows that the quality relevant for the purposes of
substantiality is the literary originality of that which has
been copied. In the case of an artistic work, it is the artistic
originality of that which has been copied.

Similarly, in the case of Hager v. ECW Press Limited,366 the plaintiff

wrote Honour Song: A Tribute, a book about the exploits of Canadian
native people. One 9-page chapter dealt with the popular singer Shania
Twain and was based on background research and interviews that Hager
had conducted with the singer. Shortly afterwards, the first defendant
ECW, published a book solely about Shania Twain. The writer, the second
defendant, Holmes, included sixteen passages from Honour Song without
authorisation. The plaintiff sued the defendants for copyright
infringement, claiming that ‘a substantial part’ of her book had been
reproduced. The Court agreed with her.
Reed, J. for the Court stated:

What will constitute a substantial taking must be assessed

from both a quantitative and qualitative perspective. … A
number of factors have been considered by the courts when
assessing whether there has been a substantial taking:
365
[1964] 1 All ER 465; [1964] 1 WLR 273.
366
(1988) 85 CPR (3d) 289 (Canada: Federal Court, Trial Division).
 COPYRIGHT INFRINGEMENT 145

(a) the quality and quantity of the material taken;

(b) the extent to which the defendant’s use adversely
affects the plaintiff’s activities and diminishes the
value of the plaintiff’s copyright;
(c) whether the material taken is the proper subject-
matter of a copyright;
(d) whether the defendant intentionally appropriated
the plaintiff’s work to save time and effort; and
(e) whether the material taken is used in the same or
a similar fashion as the plaintiff’s.
Approximately one third of Barbara Hager’s chapter on
Shania Twain found its way into the ECW book. Other
than the direct quotes of Shania Twain’s words, it was not
often verbatim copying, but rather the rearranging of
sentences, with additional material interspersed, while
following the same concepts, thought patterns and
sometimes sentence structure. In terms of quantity, a
substantial amount of her work was taken. In addition, the
parts of her book that are most valuable to her were taken:
the direct quotes from Shania Twain. I conclude that
qualitatively a very valuable and significant part of her
work was taken.
The determination of whether a substantial part of a
work has been taken is a question of fact. In the context of
this case, I consider the main factors that lead to a
conclusion that a substantial part of the work was taken,
are the quality of the material taken and the quantity of
that material, the direct quotes from Shania Twain. I
conclude on these facts that the use made by the defendants
of the plaintiff’s work constituted the copying of a
substantial part of that work (some directly, some
colourable imitation).367

The courts will often hold that substantial part of the work has been
taken even where the amount of the protected work so taken is only a
small part. In Hawkes & Son (London) Ltd v. Paramount Film Service
Ltd,368 the plaintiff owned the copyright in a musical march Colonel Bogey.
The defendants included an extract of the march in their news film. The
march was four minutes long, and the extract the defendants used was
twenty seconds long and comprised twenty-eight bars. The defendant
claimed that the 5 per cent of the plaintiff’s work that had been used was
not ‘a substantial part’ of the work. The court disagreed with the defendant.
367
Supra note 113, at pp. 129-131.
146 INTELLECTUAL PROPERTY LAW

Lord Slesser for the Court stated:

This reproduction is clearly a substantial part of Colonel

Bogey, looked at from any point of view, whether it be
quantity, quality, or occasion. Any one hearing it would
know that it was the march called Colonel Bogey, and
though it may be that it was not very prolonged in its
reproduction, it is clearly, in my view, a substantial, a vital,
and an essential part which is there is reproduced. That
being so, it is clear to my mind that a fair use has not been
made of it; that is to say, there has been appropriated and
published in a form which will or may materially injure
the copyright, that in which the plaintiff’s have a proprietary
right. Mere honest intention on the part of the appropriator
will not suffice, as the Court can only look at the result,
and not at the intention in the man’s mind at the time of
doing the act complained of, and he must be presumed to
intend all that the publication of his work effects.

In the case of A v. B,369 the plaintiff kept a personal daily diary. Her
husband found it, photocopied two pages, and returned it. He refused to
return the photocopies when the wife requested. When the plaintiff sued
for copyright infringement, the husband denied that the two pages were
a substantial part of the whole diary. The court disagreed. Lloyd, J. for
the Court stated that,

it seems to me that someone, such as Mr Richard

Crossman,370 who embarks on the making of a daily diary
has copyright in the first entry in his diary on the first day,
and that entry, and each successive entry, is still entitled to
copyright protection, whether as a whole work in itself or
as a substantial part of the larger whole, however long the
diarist goes on writing, and therefore, whatever the eventual
bulk of the diary or set of diaries. Accordingly, I reject the
defence that the copies are not of a substantial part of the
copyright work.

Similarly, in Jarvis v. A & M Records,371 the plaintiff wrote and recorded

a pop song called The Music’s Got Me. The defendant wrote and recorded
a song called Get Dumb! (Free Your Body). This song sounded quite
368
Supra note 361.
369
[2000] EMLR 1007.
370
Crossman was a Cabinet minister (1964-70) in the British Labour government. He kept an extensive political
diary, which was eventually published posthumously after the government lost a court battle in 1975 to
suppress it.
371
827 F. Supp. 282 (US District court, New Jersey, 1993).
 COPYRIGHT INFRINGEMENT 147

different from the plaintiff’s, but the defendant had used a computerised
synthesiser to digitally copy (‘sample’) into it two passages; a ‘bridge’
and a ‘riff’; from the plaintiff’s record. The plaintiff sued for infringement.
The court refused the defendant’s motion for summary judgment. It held
that the plaintiff’s case could legally succeed at trial.
Judge Ackerman for the Court stated:

A defendant should not be held liable for infringement

unless he copied a substantial portion of the complaining
work and there exists the sort of aural similarity between
the two works that a lay audience would detect. As to the
first requirement, the portion copied may be either
qualitatively or quantitatively substantial. As to the second,
the two pieces must be similar enough to sound similar to
a lay audience, since only then it is reasonable to suppose
that the performance or publication of the accused work
could in any way injure the rights of the plaintiff composer.

The relevant question in copyright infringement cases is whether the

segment in question constituted a substantial portion of the plaintiff’s
work, not whether it constituted a substantial portion of the defendant’s
work. The value of a work may be substantially diminished even when
only a part of it is copied, if the part copied is of great qualitative
importance to the work as a whole. … It is certainly not clear as a matter
of law that the portions copied from plaintiff’s song were insignificant
to plaintiff’s song. To the contrary, the ‘oohs’ and ‘move, free your body’
occur in a bridge that attempts to be distinct and attention-grabbing. The
keyboard riff begins the final portion of plaintiff’s song, setting the rhythm
as well as the melody.
It is submitted that parts of work that are taken from protected work
by someone on the basis of saving time and labour are likely to be
considered substantial and hence infringe copyright in the work. In
Ravescroft v. Herbert,372 the plaintiff wrote The Spear of Destiny, a
historical account of the Hapsburg Spear, supposedly the spear that pierced
Christ on the Cross. The defendant, inspired by an extract from the
plaintiff’s book that he saw in a magazine, wrote a fiction thriller about
the Hapsburg Spear called simply, The Spear. Interspersed throughout
the book were extracts, often copied verbatim from the plaintiff’s book,
recounting the Spear’s history. The plaintiff sued the defendant for
infringement. The defendant denied that he had copied a ‘substantial
part’ of the plaintiff’s book. The court found for the plaintiff.
372
[1980] RPC.
148 INTELLECTUAL PROPERTY LAW

Brightman, J. for the Court stated as follows:

Copyright protects the skill and labour employed by the

plaintiff in production of his work. That skill and labour
embraces not only language originated and used by the
plaintiff, but also such skill and labour as he has employed
in selection and compilation. Another person may originate
another work in the same general form, provided he does
so from his own resources and makes the work he so
originates a work of his own labour and industry bestowed
upon it. The question where the matter of the plaintiff’s
work is not original, is how far an unfair or undue use has
been made of the work? If, instead of searching into the
common sources and obtaining your subject matter from
thence, you avail yourself of the labour of your predecessor,
adopt his arrangements and questions, or adopt them with
a colourable variation, it is an illegitimate use.
The author of a historical work must, I think, have
attributed to him an intention that the information thereby
imparted may be used by the reader, because knowledge
would become sterile if it could not be applied. Therefore,
it seems to me reasonable to suppose that the law of
copyright will allow a wider use to be made of historical
work than of a novel so that knowledge can be built upon
knowledge. … An author is not entitled under the guise of
producing an original work, to reproduce the arguments
and illustrations of another author so as to appropriate to
himself the literary labours of that other author.
I find as a fact that in writing five of the prologues to
The Spear Mr Herbert made use of The Spear of Destiny
animo furandi, that is to say, with an intention on his part
to take from The Spear of Destiny for the purpose of saving
himself labour. He has deliberately copied the language of
the plaintiff on many occasions. To a more significant
extent he has adopted wholesale the identical incidents of
documented and occult history which the plaintiff used in
support of his theory. He did this in order to give his novel
a backbone of truth with the least of possible labour to
himself. In so doing, he annexed for his own purposes the
skill and labour of the plaintiff to an extent which is not
permissible under the law of copyright. The defendant
clearly infringed the plaintiff’s copyright.373
373
Supra note 113, at pp. 133 - 134.
 COPYRIGHT INFRINGEMENT 149

In Schweppes Ltd v. Wellingtons Ltd,374 the plaintiff, Schweppes, owned

copyright in the ‘Schweppes’ tonic water label. The defendants copied
the label for its ‘tonic’ bubblebath, but substituted ‘Schlurppes’ for
‘Schweppes’. The defendant claimed that there was no infringement
because of the original mental labour it had expended on creating this
parody of the plaintiff’s work. The court nevertheless found infringement.
Falconer, J. stated that,

the fact that the defendant in reproducing his work may

have himself employed labour and produced something
original, or some part of his work which is original, is
beside the point if, nonetheless, the resulting defendant’s
work reproduces, without the licence of the plaintiff, is as
the statute makes perfectly plain: has there been a
reproduction in the defendant’s work of a substantial part
of the plaintiff’s work?

Copying of Various Categories of Work

The Copyright and Performance Rights Act375 defines copying as a

reproduction of a work or of an adaptation of a work, whatever the
medium in which the reproduction is made or stored. It must be stated
that the definition of copying is so wide as to deal with both the current
and future technological developments in the form of inventions, machines
or instruments that facilitate copying or reproduction of works protected
by copyright. The Act also defines what constitutes copying as regards
each category of works protected by copyright.376

Original literary, dramatic, musical and artistic works

Original literary, dramatic, musical and artistic work, computer

programmes and a compilation is copied through the reproduction in
any material form.377 The term ‘reproduction’ has been widely interpreted
by judicial decision to include technological developments that make
copying much easier. In the case of Ladbroke (Football) Ltd v. William
Hill (Football) Ltd,378 the House of Lords defined reproduction in the
following terms:

Broadly, reproduction means copying, and does not include

cases where an author or compiler produces a substantially
similar result by independent work without copying.
374
[1984] FSR 210.
375
Supra note 38.
376
Supra note 252.
377
Section 17 (2) and (3).
378
1 WLR 273.
150 INTELLECTUAL PROPERTY LAW

Reproduction also includes the making of copy of a work in a different

form, even if the copy is not easily perceptible. This includes making
copies of a work by hand, as well as making photocopies or tape
recordings. In the electronic age, it has been applied to all sorts of digital
copies made with a computer, even where the copy is in a different form
from the original. In Apple Computer, Inc. v. Mackintosh Computers
Ltd,379 the defendant imported clones of Apple computers that included
unauthorised copies of the Apple operating system embodied in a ROM
(‘Read Only Memory’) chip in the machine. Apple sued for copyright
infringement, claiming that the computer program on the chip was a
‘reproduction’ of the written source code of the programme in which
Apple had copyright. The trial judge accepted Apple’s argument, and
this decision was affirmed on appeal.
Reed, J. in the first instance of the Court stated as follows:

No one disputes, of course, that when the present Copyright

Act was originally enacted by Parliament in 1921, no
thought could have been given to computer programs and
whether they would be covered by the provisions of the
Act. This is not a relevant consideration, since the only
question is whether the terms of the Act as drafted can
fairly be said to cover such programs as encoded in the
ROM chip. … I think it is irrelevant, in the present case,
whether the program is encoded in a floppy disk, on a
punch card or in a ROM chip. The copyrightability issue
does not differ merely on the basis of the medium in which
the program is found.

In my view, the requirement of ‘readability’ or ‘appearance to the eye’

found in the jurisprudence requires no more than that there be a method
by which the work in which copyright is claimed and the work which is
alleged to infringe can be visually compared for the purpose of
determining whether copying has occurred. Since in this case the
programmes can be ‘read’ out of ROM and so compared, this requirement
is met. I adopt in this regard (a quotation from the 1983 UK cases):

For computers, as for other things, what must be compared

are the things said to have been copied and the thing said
to be an infringing copy. If these two things are invisible,
then normally they must be reproduced in visible form, or
in a form that in some way is perceptible, before it can be
determined whether one infringes the other. Normally what
379
(1986) 10 CPR (3d) 1 (Canada: Federal Court, Trial Division); affirmed (1987) 44 DLR (4th) 74 (Canada:
Federal Court of Appeal); affirmed (1990) 71 DLR (4th) 95 (Canada: Supreme Court).
 COPYRIGHT INFRINGEMENT 151

will be needed is a print-out or other documentary evidence

of the programme alleged to have been copied, and of the
alleged infringing programme, or sufficient parts of it.

Cases which have dealt with the creation of a work in a material form
different from that in which it originated include … a store front built
from plans thereof; brooches and dolls from a Popeye cartoon. … These
cases also demonstrate that a copy of a reproduction, which reproduction
exists in a different material form from the original, is still an infringement
of copyright in the original. … Counsel argues that the purpose for which
reproduction is made must ultimately be to communicate the work to
human beings. A record or cassette when used with a machine produces
sounds for human listening while the ROM chip does not so communicate
to humans as its primary function.
Section 3 provides that ‘copyright means the sole right to produce or
reproduce the work in any material form whatever.’ In my view, that
clearly covers the program as embodied in the ROM chip. To find
otherwise, it seems to me, would require readings words into section 3
of the Copyright Act which are not there.380
Reproduction also extends or includes making a temporary copy of a
work such a computer programme. Thus, in MAI Systems Corp. v. Peak
Computers Inc.381 the plaintiff sold computers and computer programs,
of which it was the copyright owner, to users under licences that allowed
buyers to use the programs for their own work but prohibited anybody
else from using or copying the programmes. The defendant, a computer
repair company, serviced a computer supplied under such a licence. To
find out what needed repair, the defendant first had to run the programme,
which required, technically and inevitably, the making of a temporary
copy of the programme in the computer’s memory. The plaintiff sued
the defendant, claiming that the defendant’s running of the programme,
without the plaintiff’s authorisation, infringed the plaintiff’s copyright.
The appellate court affirmed an injunction in favour of the plaintiff.
Judge Brunetti for the Court stated:

The Copyright Act defines ‘copies’ as ‘material objects in

which a work is fixed by any method now known or later
developed, and from which the work can be perceived,
reproduced, or otherwise communicated, either directly
or with the aid of a machine or device.’382
The Copyright Act then explains: A work is ‘fixed’ in a
tangible medium of expression when its embodiment in a
380
Supra note 113, at pp. 85-86.
381
991 F.2d 511 (US Court of Appeals, 9th Circuit, 1993).
382
Copyright Act, 17 USC s.101.
152 INTELLECTUAL PROPERTY LAW

copy or phonorecord, by or under the authority of the

author, is sufficiently permanent or stable to permit it to
be perceived, reproduced, or otherwise communicated for
a period of more than transitory duration.
The district court concluded that a ‘copying’ for
purposes of copyright law occurs when a computer
program is transferred from a permanent storage device to
a computer’s RAM (Random Access Memory). The
loading of copyrighted computer software from a storage
medium (hard disk, floppy disk, or read only memory)
into the memory of a central processing unit (‘CPU’) causes
a copy to be made. In the absence of ownership of the
copyright or express permission by license, such acts
constitute copyright infringement. We find that this
conclusion is supported by the record and by the law.
When the computer is tuned on, the operating system
is loaded into the computer’s RAM. As part of diagnosing
a computer problem at the customer site, the peak
technician runs the computer’s operating system software,
allowing the technician to view the systems error log, which
is part of the operating system, thereby enabling the
technician to diagnose the problem. Since we find that the
copy created in the RAM can be ‘perceived, reproduced,
or otherwise communicated,’ we hold that the loading of
software into the RAM creates a copy under the Copyright
Act.383

It must be submitted that the advent of information-based technology

such as the Internet has posed a serious challenge as regards the term
‘reproduction.’ There are a number of questions that have been raised
concerning the Internet as it relates to ‘reproduction.’ Does the information
or work stored on the computer and made available or accessible to the
public constitute reproduction? Is uploading or downloading of the work
from the Internet constitute to reproduction of the work? Are Internet
service providers or website operators contributorily liable for infringing
copyright material passing through their servers? These questions have
been considered in two copyright landmark cases namely, UMG
Recordings Inc. v. MP3.COM, Inc.384 and A&M Records Inc. v. Napster
Inc.385

383
Supra note 113, at pp. 86-87.
384
54 USPQ 2d 1668 (US District Court, New York, 2000).
385
239 F.3d 1004 (US Court of Appeals, 9th Circuit, 2001).
 COPYRIGHT INFRINGEMENT 153

In UMG Recordings Inc. v. MP3.COM, Inc.386 the plaintiff record

companies sued the defendant for infringing copyright in the recordings
on their compact disks, by loading compressed copies on to its website.
The defendant disputed that it had copied the plaintiff’s works. The court
found for the plaintiff and granted an injunction.
Judge Rakoff stated:

The technology known as ‘MP3’ permits rapid and efficient

conversion of compact disc recordings (‘CDs’) to computer
files easily accessed over the Internet. Utilising this
technology, defendant MP3.com, on or around 12 January
2000, launched its ‘My.MP3.com’ service, which it
advertised as permitting subscribers to store, customise,
and listen to the recordings contained on their CDs from
any place where they have an Internet connection. To make
good on this offer, defendant purchased tens of thousands
of popular CDs in which plaintiffs held copyrights, and,
without authorisation, copied their recordings onto its
computer servers so as to be able to replay the recordings
for its subscribers.
Specifically, in order to first access such a recording, a
subscriber to MP3.com must either prove that he already
owns the CD version of the recording by inserting his copy
of the commercial CD into his computer CD-Rom drive
for a few seconds (the ‘Beam-it service’) or must purchase
the CD from one of the defendant’s cooperating online
retailers (the ‘Instant Listening Service’). Thereafter,
however, the subscriber can access via the Internet from a
computer anywhere in the world the copy of plaintiff’s
recording made by defendant. Thus, although the defendant
seeks to portray its service as the ‘functional equivalent’
of storing its subscribers’ CDs, in actuality the defendant
is re-playing for the subscribers converted versions of the
recordings it copied, without authorization, from plaintiffs’
copyrighted CDs. On its face, this makes out a presumptive
case of infringement under the Copyright Act of 1976.
The Defendant claims that its music computer files are
not in fact ‘reproductions’ of plaintiffs’ copyrighted works
within the meaning of the Copyright Act. Specifically, the
defendant claims that the simulated sounds on MP3-based
music files are not physically identical to the sounds on
386
Supra note 284.
154 INTELLECTUAL PROPERTY LAW

the original CD recordings. The defendant concedes,

however, that the human ear cannot detect a difference
between the two. Moreover, the defendant admits that a
goal of its copying is to create a music file that is sonically
as identical to the original CD as possible. In such
circumstances, some slight, humanly undetectable
difference between the original and the copy does not
qualify for exclusion from the coverage of the Act.387

In A&M Records Inc. v. Napster Inc.388 A&M Records and seventeen

other plaintiff record companies who owned copyright in their records
in December 1999, sued Napster so as to stop it from engaging in or
assisting others in copying, downloading, uploading, transmitting or
distributing copyrighted music without the express permission of the
rights owner. The defendant, Napster, operated a website which enabled
anybody to log on, locate a music file on the website’s directory, access
the hard drive of another subscriber’s computer and download the desired
file on to his or her own computer. The plaintiffs claimed that the
defendant website infringed their copyright in the music and that the
defendant was guilty of both contributory and vicarious copyright
infringement. The plaintiffs also stated that the recording industry was
suffering tangible and irreparable harm in the sale of their music through
traditional outlets, in the burgeoning Internet distribution market.
The Court of Appeals agreed with the District Court that the record
companies presented a prima facie case of direct copyright infringement
by Napster users and further that the defence of fair use as argued by
Napster could not be allowed. The Court concluded that Napster was
guilty of contributory copyright infringement as they found that it
encouraged and assisted its users to infringe the record companies’
copyrights, and Napster further materially contributed to the infringing
activity. The court concluded that Napster had a direct financial interest
in its users’ infringing activity and retained the ability to police its system
for infringing activity. Thus, Napster was also guilty of the vicarious
liability placed against it.
Judge Beezer for the Court stated as follows:

…a majority of Napster users use the service to download

and upload copyrighted music. Napster users who
download files containing copyrighted music violate
plaintiffs’ reproduction rights.
Traditionally, one who with knowledge of the infringing
activity, induces, causes or materially contributes to the
387
Supra note 113, at pp. 87-88.
388
Supra note 385.
 COPYRIGHT INFRINGEMENT 155

infringing conduct of another, may be held liable as a

‘contributory’ infringer. Liability exists if the defendant
engages in personal conduct that encourages or assists the
infringement. Napster by its conduct, knowingly
encourages and assists the infringement of plaintiffs’
copyrights.
Napster has knowledge, both actual and constructive.
The district court found actual knowledge because: (1) a
document authored by Napster co-founder Sean Parker
mentioned ‘the need to remain ignorant of users’ real names
and IP (Internet Protocol) addresses ‘since they are
exchanging pirated music’; and (2) the Recording Industry
Association of America informed Napster of more than
12,000 infringing files, some of which are still available.
The district court found constructive knowledge
because: (a) Napster executives having recording industry
experience; (b) they have enforced intellectual property
rights in other instances; (c) Napster executives have
downloaded copyright songs from the system; and (d) they
have promoted the site with ‘screen shots listing infringing
files.’
If a computer system operator learns of specific
infringing material available on his system and fails to
purge such material from the system, the operator knows
of and contributes to direct infringement. Conversely,
absent any specific information which identifies infringing
activity, a computer system operator cannot be liable for
contributory infringement merely because the structure of
the system allows for the exchange of copyright material.
To enjoin simply because a computer network allows for
infringing use would potentially restrict activity unrelated
to infringing use. Napster has actual knowledge that
specific infringing material is available using its system; it
could block access to the system by suppliers of the
infringing material and it failed to remove the material.
Napster materially contributes to the infringing activity.
Without the support services defendant provides, Napster
users could not find and download the music they want
with the case of which the defendants boast. Napster
provides the site and facilities for the direct infringement.389

389
Supra note 113, at pp. 153-154.
156 INTELLECTUAL PROPERTY LAW

As regards the claim for vicarious copyright infringement by the

defendant, Judge Beezer for the Court stated:

Vicarious copyright liability is an ‘outgrowth’ of respondent

superior. In the context of copyright law, vicarious liability
extends beyond an employer/employee relationship, to
cases in which a defendant has the right and ability to
supervise the infringing activity and also has a direct
financial interest in such activities.
Financial benefit exists where the availability of
infringing material acts as a ‘draw’ for customers. Napster’s
future revenue is directly dependent upon increases in user
base. More users register with the Napster system as the
quality and quantity of available music increases. The
district court did not err in determining that Napster
financially benefits from the availability of protected works
on its system.

As regards supervision, Napster has an express reservation of rights policy,

stating on its website that it expressly reserves the right to refuse service
and terminate accounts in its discretion, including, but not limited to, if
Napster believes that the user’s conduct violates applicable law or for
any reason in Napster’s sole discretion, with or without cause. To escape
imposition of vicarious liability, the reserved right to police must be
exercised to its fullest extent. Turning a blind eye to detectable acts of
infringement for the sake of profit gives rise to liability. The district court
correctly determined that Napster had the right and ability to police its
system and failed to exercise that right to prevent the exchange of
copyrighted material.
Napster has the ability to locate infringing material listed on its search
indices and the right to terminate users’ access to the system. The file
name indices, therefore, are within the premises that Napster has the
ability to police. Napster’s failure to police the system’s premises,
combined with a showing that Napster financially benefits from the
continuing availability of infringing files on its system, leads to the
imposition of vicarious liability.390
However, in Sony Corporation v. Universal City Studios, Inc.,391 when
motion picture distributors sued to prevent the sale of Sony video-cassette
tape recorders, they argued that Sony, by supplying such VCRs,
‘contributed’ to the infringement of movie copyrights by home users.
The Supreme Court, by a narrow majority, disagreed stating that,
390
Ibid., p. 154.
391
464 US 417 (US Supreme Court, 1984).
 COPYRIGHT INFRINGEMENT 157

the concept of contributory infringement is merely a species

of the broader problem of identifying the circumstances
in which it is just to hold one individual accountable for
the action of another. The sale of copying equipment, like
the sale of the other articles of commerce, does not
constitute contributory infringement if the product is widely
used for legitimate, unobjectionable purposes. Indeed, it
need merely be capable of substantial non-infringing uses.

The court found that one substantial permissible use was ‘private, non-
commercial time-shifting in the home’ and so dismissed the suit.
A similar conclusion was reached in the CBS Songs Ltd v. Amstrad
Consumer Electronics Plc,392 where record companies claimed that the
manufacturers of double-tape, double-speed audiotape-recorders
authorised buyers to copy sound recordings, in which the companies
owned the copyrights, without authority and sued them for an injunction.
The Court in rejecting the claim held that, while buyers might infringe
copyright if they copied commercial music tapes without authority, the
makers or sellers of the tape-recorders did not purport to grant the buyers
any authority to infringe copyright and so did not ‘authorise’ infringement.
The court stated:

Copying may be lawful or unlawful. Every tape recorder

confers on the operator who acquires a blank tape the
facility of copying; the double-speed twin-tape recorder
provides a modern and efficient facility for continuous
playing and continuous recording and for copying. No
manufacturer and no machine confers on the purchaser
authority to copy unlawfully. The purchaser or other
operator of the recorder determines whether he shall copy
and what he shall copy. By selling the recorder Amstrand
may facilitate copying in breach of copyright but do not
authorise it.

Films, sound recordings, broadcasts and cable programmes

Audiovisual or films, sound recordings, broadcasts and cable programmes

are copied when they are reproduced.393 In Spelling Goldberg Productions
Inc. v. B.P.C. Publishing Ltd,394 the plaintiff was a copyright owner of
the Starsky and Hutch television series. The defendant took a frame from
392
[1988] AC 1013.
393
Section 17 (4)(a), (5)(a) and (6)(a).
394
[1981] RPC 283.
158 INTELLECTUAL PROPERTY LAW

one of the films, depicting the two characters, enlarged it into a pin-
poster, and sold copies of the poster. The plaintiff sued for infringement,
claiming that the frame was protected either by itself or as a substantial
part of the film. The Court agreed.
Lord Templeman stated that the question they had to decide is whether
the copyright in a film is infringed by the unauthorised copying of a
single frame. By the light of nature a single frame must either be a
photograph or a part of a cinematograph film or both. Since both
photographs and cinematograph films are expressly protected by the
Copyright Act, 1956, the answer to the question should be a resounding
single or double affirmative.

Typographical arrangements of published editions

Copying a typographical arrangement involves making the exact copy

of the arrangement. That copy can be enlarged or reduced in scale, which
means that infringement quite often takes place through photocopies. In
Newspaper Licensing Agency Ltd v. Marks & Spencer Plc,395 the
defendant, Marks & Spencer, subscribed to a press cutting service which
provided it with a daily supply of photocopies of items of interest
appearing in national and daily newspapers. The cuttings agency paid a
fee for a licence to copy the cuttings to the plaintiff, Newspaper Licensing
Agency, the body which dealt with copyright licensing on behalf of the
newspapers which held the copyright in ‘the typographical arrangements
of published editions’ of the newspapers. After receiving the cuttings,
the defendant made further copies of some of them and distributed them
to individuals within the organisation. It had no licence to make those
further copies. In proceedings against the defendant, the plaintiff
contended that the making of such copies infringed its copyright in the
typographical arrangement of the published editions of the newspapers.
The House of Lords held that none of the copies constituted the copying
of a ‘substantial part’ of a copyright work within the meaning of section
16(3) of the Copyright, Designs and Patents Act, 1988.
Lord Hoffman for the Court stated:

For the purposes of s. (1)(1)(c) of the 1988 Act, the term

‘typographical arrangement of published editions’ did not
refer to the typographical arrangement of each article
published in a newspaper. The definition of a ‘published
edition’ in section 8 (1) showed that there was no necessary
correlation between the concept of a literary, dramatic or
musical work and the concept of a published edition. The
edition was the product, generally between covers, which
the publisher offered to the public.
395
[2001] 38, HL.
 COPYRIGHT INFRINGEMENT 159

As regards the question of substantiality, the matter was

one of quality rather than quantity, and it had to be answered
by reference to the reason why the work had been given
copyright protection. Moreover, in the case of the copying
of a typographical arrangement, nothing less than a
facsimile copy would do. It was in that context that it was
necessary to ask whether there had been copying, sufficient
of the relevant skill and labour. For that purpose, it was
necessary to form a view about the skill and labour involved
in a typographical arrangement. In the case of a modern
newspaper, the skill and labour devoted to that arrangement
was principally expressed in the overall design, and it was
difficult to think of it being expressed in anything less than
a page. The particular fonts, columns, margins and so on
were only the typographical vocabulary in which the
arrangement was expressed.
The question was whether the copy could be said to
have appropriated the presentation and lay-out of the
edition. It was therefore unlikely to matter whether the
supplements or inserts in a newspaper were separate
published editions. In the instant case none of the press
cuttings had sufficiently reproduced the lay-out of any page
so as to amount to a substantial part of its typographical
arrangement.

Issuing Copies to the Public

Copying is not the only act restricted by copyright. Copyright is also

infringed when copies of a work are issued to the public. The Copyright
and Performance Rights Act prohibits issuing or publishing copies of a
work other than a broadcast or cable programme to the public without
the consent of the copyright owner.396 Copies of a work are issued to the
public or published when copies of the work are made available to the
public, for the first time, whether for gain or not.397 The Act states that
the first publication of a work, other than a broadcast or cable programme,
is the earliest publication of the work made with the authority of the
copyright owner; or any publication of a work made with the authority
of the copyright owner within thirty days after the earliest of such
publication.398 The Act399 further states that any distribution or circulation
of a work by way of sale or rental constitutes making copies of the work
available to the public.
396
Supra note 252.
397
Supra note 172.
398
Supra note 174.
399
Supra note 175.
160 INTELLECTUAL PROPERTY LAW

The Copyright and Performance Rights Act excludes certain acts as

not to amount to publication or issuing the work to the public. Therefore,
in the case of a literary, dramatic or musical work the performance of a
work or the broadcasting of the work or its inclusion in a cable programme
service otherwise than for purposes of an electronic retrieval system does
not constitute making available the work to the public.400 In the case of
an artistic work, the following acts shall not constitute making available
or issuing the work to the public:
(i) the exhibition of the work;
(ii) the making available to the public of a graphic work representing,
or of photographs of, a work of architecture in the form of a
building, or model for a building, a sculpture or a work of artistic
craftsmanship;
(iii) the making available to the public of a film included in the work;
or
(iv) the broadcasting of the work or its inclusion in a cable programme
service otherwise than for the purposes of an electronic retrieval
system.401
In case of an audiovisual work or sound recording, the following acts do
not amount to publication: the showing or playing of the work in public
or the broadcasting of the work or its inclusion in a cable programme
service otherwise than for the purpose of an electronic retrieval system.402

Public Performance of the Work, Showing or Playing the Work in

Public

Copyright and Performance Rights Act restricts public performances or

communication to the public by any means or process of literary, dramatic
and musical works if done without the consent of the copyright owner.403
Section 44 of the Copyright and Performance Rights Act defines
performance as (a) a performance of drama, dance or mime; (b) a musical
performance; (c) a reading or recitation of a literary work; or (d) a
performance of a variety act or any similar presentation; insofar as it is a
live performance given by one or more individuals.
The Copyright and Performance Rights Act also restricts the playing
or showing of a sound recording, audiovisual work or film, broadcasting
or cable programme in public without the permission of the owner of the
work.404 Thus, anyone who communicates the stated categories of the
work to the public without the consent, express or implied, of the copyright
owner will infringe the copyright in the work.
400
Supra note 177.
401
Supra note 178.
402
Supra note 179.
403
Ss 17 and 14, Copyright and Performance Rights Act.
404
Supra note 252.
 COPYRIGHT INFRINGEMENT 161

It must be stated that the Copyright and Performance Rights Act like
most other copyright laws in different jurisdictions does not define the
term ‘public’. The courts have often been called upon to interpret the
term ‘public’ as it relates to the public performance, showing or playing
the work in public. Thus in Jennings v. Stephens,405 the plaintiff owned
copyright in a play, which was performed, without the plaintiff’s consent,
for the defendant’s women’s club by amateur players from another
women’s club. The plaintiff claimed the performance had been ‘in public’.
The defendant said that its club was private and the performance occurred
without charge. The Court nevertheless held that the performance had
been ‘in public’.
On the defendants claim that the performance occurred without a
charge Lord Romer stated as follows:

It is, in my opinion, impossible to regard the audience at

the meeting of the Duston Women’s Institute on February,
1933, as constituting a domestic circle. The women that
formed that audience were merely members of the public
who were paying two shillings a year for, among other
things, the privilege of being entertained, at intervals of a
month or more, by a lecture or a dramatic performance or
in some other way. The section of the public from which
they were drawn was no doubt a comparatively small one,
consisting as it did of the women residing in the parish of
Duston. But this can make no difference. … the members
were in no way bound to one another by any domestic or
quasi-domestic tie. The monthly meeting formed part not
of the domestic, that is of the private life of a member, but
of her outside, that is to say, of her public life. There are
about 5000 similar institutes in England and Wales with a
total membership of something like 300,000. If
performances given before these institutes are private
performances, the result to the owner of the copyright in
the works performed would be serious.406

Lord Greene on the same issue also stated that the expression ‘in public’
must be considered in relation to the owner of the copyright. If the
audience considered in relation to the owner of the copyright may properly
be described as the owner’s ‘public’ or part of his ‘public’, then in
performing the work before that audience he would, in my opinion, be
exercising the statutory right conferred upon him; and anyone who without
405
[1936] Ch. 460.
406
Supra note 113, at pp. 95-96.
162 INTELLECTUAL PROPERTY LAW

his consent performed the work before that audience would be infringing
his copyright.407
The courts have also held that even though an unauthorised
performance may benefit the author, it still infringes the public
performance right. Thus, in the case of Performing Right Society Ltd v.
Harlequin Record Shops Ltd, 408 the plaintiff, a collecting society
controlling the public performance rights for musical works in the United
Kingdom sued the defendant, which owned a chain of record shops, for
playing records in its stores without the plaintiff’s consent. The plaintiff
was willing to license the defendant, but the defendant said a licence was
unnecessary because it was not infringing copyright since its activities
benefited composers.
Browne-Wilkinson, J. stated:

The defendant argues that in considering whether a

performance is or is not in public, a most important
question is whether the performance injures the composer
or interferes with proprietary rights. Moreover, it is also
important to see whether the performance is given to an
audience from whom the composer would expect to receive
a fee: this is the ‘owner’s public’. Then the argument goes,
since restraining performances in record shops would
reduce the sale of records (causing in corresponding drop
in recording royalties received by the composer), far from
injuring the original owner of the copyright, performances
in record shops positively benefit him.
It is established that, in deciding whether a performance
is ‘in public’, the character of the audience is the decisive
factor. The authorities relied on by the defendants were
cases in which the court had to decide whether a
performance was properly called ‘public’ when given to
an audience which had certain features pointing to the
performances being public and other features pointing to
the performances being private: for example, performances
given to members of clubs and performances given by
employers to employees. In such cases, there is a
relationship between the giver of the performance and the
audience, which raises the possibility of the performance
being treated as being in private, and the court has to decide
whether the public or private features are to prevail.
In my judgment, a performance given to an audience
consisting of persons present in a shop which the public at
large are permitted, and indeed encouraged, to enter without
407
Ibid., p. 96.
408
[1979] WLR 851 .
 COPYRIGHT INFRINGEMENT 163

payment or invitation with a view to increasing the shop

owner’s profit can only properly be described as a
performance in public. I receive some support for this view
from the decisions in which music played in a hotel was
held to be in public, and in which performances audible in
a restaurant were treated as being ‘in public’. It is for the
owner of the performing rights to decide whether or not to
charge a fee for performances to possible purchasers of
records, and that right is invaded by the defendant
company’s conduct.409

It must be submitted that with the advent of new techniques of

communication of the work to the public, the definition of what constitutes
‘public’ becomes complex. A good example is where a hotel owner places
a television set in every room so that guests can receive the programmes
directly from the transmitting stations, without the intervention of the
hotel management; or where the hotel owner receives broadcast
programmes either by cable or ‘off-air’ and then from the hotel office
retransmits these to the guests in the hotel rooms. The question that should
be asked is whether or not the acts by the hotel in the above example
amounts to public performance?
Courts have held that a performance to persons, one at a time, at
different times, may nonetheless amount to a public performance. In a
hotel’s Rank Film Production Ltd v. Dodds,410 the Australian court held
that provision to the guests of videocassettes or videodiscs of movies to
view in their rooms causes a public performance to occur. Similarly, in
Columbia Pictures Industries, Inc. v. Aveco Inc.,411 the defendant provided
individual viewing rooms for a charge, where the public could bring
their own movies to watch or could rent movies from the defendant to
watch. The Court held that the defendant was liable for authorising public
performances. The Court stated that the Copyright speaks of performances
at a place open to the public. It does not require that the public place be
actually crowded with people. A telephone booth, a taxi cab, and even a
pay toilet are commonly regarded as ‘open to the public,’ even though
they are usually occupied only by one party at a time. The defendant was
willing to make a viewing room and video cassette available to any
member of the public with the inclination to avail himself of this service.
However, the said case should be contrasted with Columbia Pictures
Industries, Inc. v. Professional Real Estate Investors Inc.,412 where the
court held that a hotel was not liable for a performance in public when it
409
Supra note 113, at pp. 96-97.
410
(1983) 76 FLR 351 (Australia: New South Wales Supreme Court).
411
800 F.2d 59 (US Court of Appeals, 3rd Circuit 1986).
412
866 F.2d 278 (US Court of Appeals, 9th Circuit, 1989).
164 INTELLECTUAL PROPERTY LAW

supplied movie videodisks for guests to play in their own rooms. The
court stated that Hotel La Mancha’s operation is the providing of living
accommodations and general hotel services, which may incidentally
include the rental of videodiscs to interested guests for viewing in their
guest rooms. While the hotel may indeed be ‘open to the public,’ a guest’s
hotel room, once rented, is not. … La Mancha guests do not view the
videodiscs in hotel meeting rooms used for large gatherings. The movies
are viewed exclusively in guest rooms, places where individuals enjoy a
substantial degree of privacy, not unlike their own homes.
It is worth noting that public performance may also occur even if the
public is present at different times at the same time. In Canadian Cable
Television Association v. Canada Copyright Board,413 the plaintiff,
representing 619 cable television companies, sought to compel the
defendant Board to decide that cable distribution to home subscribers of
non-broadcast services (programmes originating from the cable
companies themselves) was not a performance ‘in public’, but simply
multiple performances in private to each subscriber. The Court rejected
the argument.
Letourneau, J. for the Court stated:

The Court, in 1954, held that radio or television broadcasts

do not amount to performances in public when received
in private homes, saying: ‘I cannot see that even a large
number of private performances, solely because of their
numbers can become public performances. The character
of the individual audiences remains exactly the same, each
is private or domestic, and therefore not ‘in public’.
With respect, I prefer and adopt the contrary views
expressed by English, Indian and Australian authorities.
They take a realistic view of the impact and effect of
technological developments and they are consistent with
the plain and usual meaning of the words ‘in public’, that
is to say openly, without concealment and to the knowledge
of all. In a 1925 Australian case, the court said:

A performance is no less public because the

listeners are unable to communicate with one
another or are not assembled within an enclosure
or gathered together in some open stadium or park
or other public place. Nor can a performance be
deemed private because each listener may be alone
in the privacy of his home. Radio-broadcasting is
intended and in fact does reach a very much larger
413
[1993] 2 FC 138 (Canada: Federal Court of Appeal).
 COPYRIGHT INFRINGEMENT 165

number of the public at the moment of the rendition

than any other medium of performance.
This is certainly even truer of a transmission
by means of television. … The fact that the
subscriber has to turn on the television set in no
way alters the nature of the transmission. The
appellant is more than a mere facilitator of a public
performance which violates the Copyright Act; it
is the actual performer through an innocent agent
or with the assistance of a third party who
completes the final and missing link by turning on
the television set.414

Broadcasting and Including in a Cable Programme Service

Copyright in a literary, dramatic, musical and artistic works and other

categories of works namely sound recordings, films or audiovisual work,
broadcasts and cable programmes is infringed when these works are
broadcast or included in a cable programme service without the consent
of the owner of the work.415 The Act416 further restricts in the case of a
broadcast, the re-broadcasting of the broadcast or the inclusion in a cable
programme a broadcast; and in the case of a cable programme the
broadcasting or the inclusion in another cable programme.

Making an Adaptation

The Copyright and Performance Rights Act restricts the making of an

adaptation of a literary, dramatic or musical work as well as a compilation,
computer programme, audiovisual work or film and sound recording.417
The Act excludes adaptation of artistic works.418 Section 2 of the
Copyright and Performance Rights Act defines adaptation to include in
relation to any literary work a translation of the work or a version of the
work in which the story or action is conveyed solely or principally by
means of pictures; in relation to a musical work, an arrangement or
transcription of the work; in relation to a literary work in a dramatic
form, a version of the work in a non-dramatic form or in relation to a
literary work in a non-dramatic form, a version of the work in a dramatic
form; and in relation to a computer programme, a version of the
programme in which it is converted from one computer language or code
into another.

414
Supra note 113, at pp. 98-99
415
S. 17 (1)(2)(3) and (4), Copyright and Performance Rights Act.
416
S. 17 (5)(b) and (c), Copyright and Performance Rights Act.
417
S. 17 (2) and (4).
418
S. 17 (2).
166 INTELLECTUAL PROPERTY LAW

In Sillitoe et al. v. McGraw-Hill Book Co.419 the plaintiffs included

the copyright owner of Bernard Shaw’s play Saint Joan. The defendants
marketed Coles’ Notes, condensed versions of various literary works for
the use of students. The plaintiff claimed that not only its reproduction
right but adaptation right had been infringed. The Court, in agreeing with
the plaintiff, stated that,

when one looks at the orange markings in the Saint Joan

Notes and then refers to the text of the original play, one
sees that the orange markings do render, in a kind of oratio
oblique, many of the phrases in the original. Time and
again one can see that the Notes render a likeness of the
phrasing of the original text. … These scenes summaries
run together seem to me to constitute more than a synopsis
of the play. After reading the text of Saint Joan and then
the scene summaries, my view is that the author of the
scenes summaries has, in writing these summaries,
converted the play Saint Joan into a non-dramatic work;
and has accordingly made an ‘adaptation’ within the
meaning of the Copyright Act.

Rental and Lending of the Work to the Public

Though the Copyright and Performances Rights Act does not include
rental and lending in those acts restricted by copyright owner, these rights
have become important especially with the advent of video shops such
as block busters. Rental and lending of a work means that a copy of a
work is made available for use on the terms that it will be returned. The
Copyright and Performance Rights Act, states that any distribution or
circulation of a work, other than a broadcast or cable programme, by
way of sale or rental constitutes making copies of the work available to
the public.420 Thus, any an unauthorised rentals of copies of the work to
the public will constitute an infringement of the copyright in the work.

Secondary Infringement

Besides, copyright being infringed through the restricted acts, that is,
primary infringement copyright may also be infringed by what is known
as secondary infringement. Unlike primary infringement which is
concerned with the making of copies of work which infringe copyright,
secondary infringement is concerned with the dealing commercially or
exploitation of those copies of the work which infringe copyright.
419
[1983] FSR 545.
420
Supra note 175.
 COPYRIGHT INFRINGEMENT 167

Another important distinction between primary and secondary

infringement lies in the mental element of the infringer. The intention to
infringe or the fact that one is infringing copyright knowingly is irrelevant
for primary infringement, as it is possible to infringe the copyright
unconsciously. Therefore, a person who, without authorisation, makes
copies of a protected work can be guilty of copyright infringement even
if he did not know that the work involved was protected by copyright.
This, however, is not the case in secondary infringement where knowledge
is a critical factor for copyright infringement to arise. The alleged infringer
must have had knowledge or reason to believe that his activity was
infringing copyright in the work. Thus, a person will not be guilty of
infringement unless he had knowledge and reason to believe or reasonable
grounds for knowing the infringing nature of the material or that the
articles were infringing copies of the work.421 This requires an objective
test.
In Columbia Picture Industries v. Robinson,422 the court held, inter
alia, that the knowledge required extended to a situation where a defendant
deliberately refrained from enquiry and shut his eyes to the obvious. The
test must be objective in that it requires a consideration of whether a
reasonable man, with knowledge of the facts that the defendant had, would
have formed the belief that the item was an infringing copy.
The Copyright and Performance Rights Act enumerates a number of
different types of secondary infringement namely:
1. Importing infringing copies into Zambia, other than for private
and domestic use; and as items accompanying him on his entry
into Zambia.423
2. Possessing infringing copies in the course of trade or business,
selling it, letting it for hire, offering or exposing it for sale or
hire, exhibiting it in public or distributing it in the course of
trade or business or otherwise to such an extent that it affects
prejudicially the owner of the copyright.424
3. Making or causing to be made, importing into Zambia, selling
or letting for hire or offering or exposing for sale or hire an
article designed or adapted for making infringing copies of
that particular work.425
4. Transmission of the work by electronic means such as
telecommunications system (excluding by broadcast or
inclusion in a cable programme service) without the licence
of the copyright owner, knowing or having reason to believe
that the infringing copies will be made by means of reception
of the transmission in Zambia or elsewhere.426
421
Sections 19 and 20 Copyright and Performance Rights Act.
422
[1987] 1 Ch. 38.
423
S. 19 Copyright and Performance Rights Act.
424
Ibid.
425
S. 20 (1) Copyright and Performance Rights Act.
426
S. 20 (2) Copyright and Performance Rights Act.
168 INTELLECTUAL PROPERTY LAW

5. Showing or playing in public or broadcasting or including in

a cable programme service the whole or any substantial part
of the performance by means of recording which was, and
which that person knows or has reason to believe was, made
without the consent of the performer.427
6. Importing into Zambia otherwise than for his private and
domestic use or in the course of business possessing, selling
or letting for hire, offering or exposing for sale or hire or
distributing a recording of a qualifying performance which
was, and which that person knows or has reason to believe
was, made without the consent of the performer.428

427
Ss 48 (2) and 49 (2) Copyright and Performance Rights Act.
428
Ss 48 (3) and 49 (3) Copyright and Performance Rights Act.
 169

Chapter Eleven

DEFENCES TO COPYRIGHT INFRINGEMENT

Introduction

Even though the copyright owner has the exclusive right to use and to
prevent others from using the work without his authorisation, copyright
law permits anyone to do some acts in relation to the work that are not
restricted or controlled by the copyright owner such as making musical
tape for private and domestic use. Besides, someone will not infringe
the copyright in the work if he does some acts in relation to the work
after obtaining authorisation from the copyright owner. The permitted
acts or defences to copyright infringement are intended to provide a
balance between the rights of the copyright owner and the general public
to get access to the work. They restrict the exclusive rights granted by
copyright in cases where it is felt they go too far. This is particularly
important as copyright is extremely wide in scope and its term of
protection is longer than any other intellectual property rights.
It must be stated that the defences to copyright infringement are not
restricted to the permitted or authorised acts and there are other defences
such as public interest that may justify an act which at first sight infringes
copyright. The defences that are often raised in an action for infringement
may relate to procedure; jurisdiction of the court; denial of the existence
of copyright in the work or commission of the infringing acts or
continuance of the term of protection; the act performed was authorised
or that the plaintiff is not entitled to relief on grounds such as public
interest or public policy; or lack of knowledge on the part of the infringer.
It must be emphasised that the defences or exceptions to copyright
infringement provided for under section 21 of the Copyright and
Performance Rights Act are only applicable to copyright infringement
and not any other infringement of other intellectual property right.

Consent of Copyright Owner

Copyright in a work is infringed by a person who, without the consent of
the owner of the copyright does or authorises another person to do a
controlled act in relation to the work.429 Thus, copyright in a work is not
infringed if the owner of the copyright in the work expressly or impliedly

429
Supra note 351.
170 INTELLECTUAL PROPERTY LAW

authorised or consented to the allegedly infringing act. In Mellor v.

Australia Broadcasting Commission,430 the plaintiff, a music publisher,
issued a pamphlet with a catalogue and price list of its sheet of music.
The pamphlet included the following statement:

Please Note: All our music is Free for Public Performance.

… See our guarantee below, show them to your patrons,
so that they may rest assured that none of our publications
will bring them any trouble over ‘performing fees.’ We
make One price cover both the music and the performing
rights thereof.

The defendant broadcaster hired a band to perform, with a view to

broadcasting the live performance. The band performed music played
from sheets which the band purchased from the plaintiff. The plaintiff
sued the defendant broadcaster for ‘authorising’ a public performance
without the plaintiff’s consent. The defendant claimed the plaintiff’s had
consented to the performance by the statements in its pamphlets.431 The
Court agreed with the defendant and dismissed the action.
Lord Maugham for the Court stated:

The trial judge held that the language used in the pamphlets
was a consent to the public performance of the works by
the respondents. Their Lordships have arrived at a similar
conclusion. … Taken as a whole, the statements in the
pamphlet seem to guarantee complete freedom from
trouble as to copyrights to bands who, having bought the
music published by the appellants, play the musical works
in public. As the judge remarked, the appellants ‘must have
known that band performances were frequently broadcast.’
If they desired to exclude such broadcasting; included as
it is in the statutory ‘performing right’; it was for them to
exclude it.
The licence or consent given in the pamphlets included
the broadcasting by bands, with any necessary
consequences of such broadcasting, such as the use of
receivers by persons entitled to use them. It follows that
the respondents were entitled to engage bands to do these
permitted things, and have not committed a breach of the
appellants’ performing rights by authorising the bands to
do them.

430
[1940] 2 All ER 20.
431
At the time the case was determined, the relevant legislation contained no separate broadcasting right.
 DEFENCES TO COPYRIGHT INFRINGEMENT 171

Similarly, in Netupsky v. Dominion Bridge Co. Ltd,432 the plaintiff engineer

agreed to design the Ottawa Civic Centre for a flat fee and produced the
necessary plans. The cost of construction was thought to be too high, but
the plaintiff refused, in breach of contract, to change his plans. The
defendant contractor, Dominion Bridge Co. Ltd, therefore, made changes
to reduce costs and made additional copies of the plaintiff’s plans, which
incorporated the changes. The plaintiff sued the defendant for copyright
infringement, claiming: (1) that the defendant had no licence to copy his
plans at all; alternatively (2) that even if the defendant was licensed to
copy, the licence did not extend to the changes made, and so the defendant
infringed by stepping outside the scope of any implied licence.
The Court, through Judson, J. in finding for the defendant stated as
follows:

The question at issue is whether Dominion Bridge was

liable for an unauthorised use of Netupsky’s plans when it
redesigned to some extent, without affecting the artistic
character and design, the construction of the work for the
purpose of saving the costs, and made copies of the plans
necessary for its part in the construction. In my opinion,
one should infer, in the circumstances of this case, that
there was a licence to make whatever changes were thought
necessary and to reproduce the plans in as many copies as
were necessary to construct the work. … It is clear that the
changes or modifications were in contemplation at the time
when the City of Ottawa and, through it, Dominion Bridge,
its subcontractor, became the licensee of Netupsky for the
construction of its Civic Centre. Such a licence carries with
it an implied consent to make the changes which Netupsky
should have made and refused to make, and also, an implied
consent to reproduce the plans in as many copies as might
be necessary for the construction of the work.

I adopt the statement of principle (from an Australian case):

The engagement for reward of a person to produce material

of a nature which is capable of being subject of copyright
implies a permission or consent or licence in the person
making the engagement to use the material in the manner
and for the purpose in which and for which it was
contemplated between the parties that it would be used at
432
[1972] SCR 368 (Canada: Supreme Court)
172 INTELLECTUAL PROPERTY LAW

the time of the engagement. … The payment for sketch

plans includes a permission or consent to use those sketch
plans for the purpose for which they were brought into
existence, namely, for the purpose of building a building
in substantial accordance with them and for the purpose
of preparing any necessary drawings as part of the task of
building the building. There then remains the question
whether there should be any implied right to transfer it
and here I think that it must inevitably be implied that the
owner, having commissioned the sketch plan and having
obtained the right to use it for the purpose of erecting on
that site a building in substantial accordance with it, should
have the right to transfer that right to a new owner of the
land. …
Netupsky agreed with Hamilton to provide the plans
for the structural design of the Ottawa Civic Centre.
Hamilton, the architect for the project, was acting for the
owner, the City of Ottawa, in his dealings with Netupsky.
The plans became the property of the owner to use for the
purpose of erecting the intended structure in substantial
accordance with those plans. Dominion Bridge, the
successful bidder for the steelwork, used the plans for this
purpose, and their authority was derived from the City of
Ottawa, which held an impartial licence to the copyright.
… The extent to which the copyright material may be
altered is not unfettered, however. The Court may imply
terms limiting that right, or the contract may expressly or
impliedly forbid any alterations. There was no refusal by
Dominion Bridge to give credit to Netupsky for the
structural design. The final plans, though modified,
described a structure which, to the layman would be
identical in appearance to a structure built in accordance
with Netupsky’s plans.

In my opinion, the alterations made by Dominion Bridge were within the

limits which should be considered acceptable. In the result, there has
been no infringement as the alterations were made with the implied
consent or licence of Netupsky.433
In order to give authorisation or consent to doing any act in relation
to restricted works, a formal contractual licence is not necessary or
required. Informal or even implied licences will suffice. In cases of joint
433
Supra note 113, at pp. 148-149.
 DEFENCES TO COPYRIGHT INFRINGEMENT 173

ownership of copyright a licence from all the joint owners is required. It

must be noted however, that the grant of a licence to authorise one person
to do the acts restricted by copyright does not authorise or allow another
person to do the said acts. Thus, in Banier v. News Group Newspapers
Ltd,434 the plaintiff, a photographer, licensed The Times newspaper to
publish a photograph in which he owned copyright, without charge
provided the plaintiff’s authorship was acknowledged. The defendant,
News Group Newspapers, owners of the Sun newspaper, re-published
the photograph after trying unsuccessfully to contact the plaintiff’s agent
for permission. The Court held that the plaintiff copyright was infringed
and rejected the claim by the defendant that the plaintiff’s licence to The
Times led the defendant to expect that it was similarly licensed.

Public Interest

In contrast to the statutory defences to copyright infringement, the courts

have power to refuse to give copyright protection to the work on the
grounds of public interest. In Beloff v. Pressdram Ltd435 it was held that
the defence of public interest may be divided into two groups first being
the public interest defence regarding actions for copyright infringement,
and second the public interest defence in breach of confidentiality actions.

(i) Defence of public interest in copyright infringement

Courts have refused to enforce copyright in works that offend against

the policy of the law, for example, works which are illegal, immoral,
scandalous or contrary to family life. However, the courts will not allow
anyone to hide under the public interest defence to infringe copyright in
the work, when there is no justification to do so. The case of Hyde Park
Residence Ltd v. Yelland,436 involves an unusual breach of copyright by
the publication by The Sun of photographs of Princess Diana and Mr
Dodi Fayed entering and leaving in a house in Paris owned by Mr Al
Fayed, with times recorded, taken by a security video camera owned by
Mr Al Fayed. The Sun claimed that it was in the public interest to publish
these photographs as they refuted by Mr Al Fayed that the two had enjoyed
a lengthy tryst at his house in Paris. Hyde Park sued the newspaper for
copyright infringement. The court of first instance accepted the
newspaper’s defence that the public interest overrode copyright, but the
Court of Appeal allowed the appeal.
Lord Justice stated as follows:

The 1988 Act does not give a court general power to enable
an infringer to use another’s property, namely his copyright
434
[1997] FSR 812.
435
[1973] 1 All ER 241; [1973] FSR 33.
436
[2001] Ch. 143 at 167-168; [2000] 3 WLR 215 at 236.
174 INTELLECTUAL PROPERTY LAW

in the public interest. Thus a defence of public interest

outside those set out in Chapter III of Part I of the 1988
Act, if exists, must arise by some other route.
The courts have an inherent jurisdiction to refuse to
allow their process to be used in certain circumstances. It
has long been the law that the courts will not give effect to
contracts which are, for example, illegal, immoral or
prejudicial to family life because they offend against the
policy of the law. The circumstances where it is against
the policy of the law to use the court’s procedure to enforce
copyright are, I suspect, not capable of definition. However
it must be remembered that copyright is assignable and
therefore the circumstances must derive from the work in
question, not ownership of the copyright. In my view a
court would be entitled to refuse to enforce copyright if
the work is: (i) immoral, scandalous or contrary to family
life; (ii) injurious to public life, public health and safety or
the administration of justice; (iii) incites or encourages
others in a way referred to in (ii).
The submission by the Counsel for the defendant that
the driveways stills needed to be published in the public
interest to expose the falsity of the statements made by Mr
Al Fayed has no basis in law or in logic. Perhaps the
driveways stills were of interest to the public but, there
was no need in the public interest in having them published
when the information could have been made available by
the The Sun without infringing the copyright.

(ii) Defence of public interest in breach of confidentiality

The courts have refused to protect confidential information when the

public interest to disclose that information outweighs the need to have
the information kept confidential or not to be disclosed to the public. In
Lion Laboratories Ltd v. Evans 437 Lion Laboratories manufactured
breathalyser kits widely used by the police for testing the breath of drivers
suspected of being over the alcohol limit. The first and second defendants
worked for Lion Laboratories. They removed without authority
confidential memoranda which cast doubt on the accuracy of the
breathalysers, and supplied these to a newspaper, Daily Express. Daily
Express published a report alleging that the breathalyzer was liable to
serious error which could lead to wrongful conviction. Lion Laboratories
brought proceedings and obtained an injunction to prevent the defendant
437
[1984] 2 All ER 417; [985] QB 526; [1984] 3 WLR 539.
 DEFENCES TO COPYRIGHT INFRINGEMENT 175

from publishing the information on the basis that the information was
confidential and also because the publication would infringe copyright.
The Court of Appeal discharged the injunctions granted below and held
that there was a serious issue to be tried as to whether the defendants had
a public interest defence to each of the claims and permitted publication
of specified documents.
Stephenson, L.J for the Court stated:

The problem before the judge and before this court is how
best to resolve, before the trial, a conflict of two competing
interests. The first public interest is the preservation of the
right of the organisation, as of individuals, to keep
confidential information. The courts will restrain breaches
of confidence, and breaches of copyright, unless there is
just cause or excuse for breaking confidence or infringing
copyright. The just cause or excuse with which this case is
concerned is the public interest in admittedly confidential
information. There is confidential information which the
public may have a right to receive and others, in particular
the press, now extended to the media, may have a right
and even a duty to publish, even if the information has
been unlawfully obtained in flagrant breach of confidence
and irrespective of the motive of the informer. The duty of
confidence, the public interest in maintaining it, is a
restriction on the freedom of the press which is recognised
by our law, as well as by Article 10(2) of the European
Convention on the protection of Human Rights and
Fundamental Freedoms; the duty to publish, the
countervailing interest of the public in being kept informed
of matters which are of real public concern, is an inroad
on the privacy of confidential matters.
There are four further considerations. First, there is a
wide difference between what is interesting to the public
and what is in the public interest to make known. The public
are interested in many private matters which are no real
concern of theirs and which the public have no pressing
need to know. Secondly, the media have a private interest
of their own in publishing what appeals to the public and
may increase their circulation or the numbers of their
viewers or listeners ‘… they are peculiarly vulnerable to
the error of confusing the public interest with their own
interest.’ Thirdly, there are cases in which the public interest
is best served by an informer giving confidential
176 INTELLECTUAL PROPERTY LAW

information not to the press but to the police or some other

responsible body. Fourthly, the public interest did not arise
only when there was an iniquity to be disclosed, and the
defendant ought not to be restrained solely because of what
he wanted to publish did not show misconduct on the part
of the plaintiff.
… The issue raised by the defendant is a serious
question concerning a matter which affects the life, and
even liberty, of an unascertainable number of Her Majesty’s
subjects, and though there is no proof that any of them has
been wrongly convicted on the evidence of the plaintiff’s
breathalyzer or Intoximeter, we must not restrain the
defendants from putting before the public this further
information how the Lion Intoximeter 3000 has worked,
and how the plaintiffs regard and discharge their
responsibility for it, although the information is
confidential and was unlawfully taken in breach of
confidence.

The public interest concept will allow the courts to refuse to enforce
copyright in a work which has been produced by the author in breach of
an obligation of secrecy he owes to his former employer. Thus, in Attorney
General v. Guardian Newspapers Ltd,438 the defendant, Peter Wright, on
leaving his job as a British intelligence officer wrote and published
worldwide a book called Spycatcher about secret workings of British
intelligence agencies. The publication broke Peter’s contractual obligation
of loyalty to the UK Government as well as the Official Secrets Act. The
UK Government, therefore, sought an injunction against the defendant
for participating in Peter’s breach of confidence by publishing or
threatening to publish, extracts from the book. The House of Lords held
that the book’s author, Peter Wright had acted against the public interest
in revealing details about the operations of the secret service, as it is in
public interest that the operations of the nation’s secret service are kept
secret. His conduct could harm national security. The courts in this country
would as a result, or perhaps as a punishment, not enforce copyright in
his book, Spycatcher.
Lord Jauncey for the Court stated:

The publication of Spycatcher was against the public

interest and was in breach of the duty of confidence which
Peter Wright owed the Crown. His action reeked of

438
Supra note 131.
 DEFENCES TO COPYRIGHT INFRINGEMENT 177

turpitude. It is in these circumstances inconceivable that a

United Kingdom court would afford to him or his
publishers any protection in relation to any copyright which
either of them may possess in the book. That being so,
anyone can copy Spycatcher in whole or in part without
fear of effective restraint by Peter Wright or those claiming
to derive title from him. It follows that the future ability of
Sunday Times to serialize Spycatcher does not derive solely
from their licence. They are free to publish without
reference thereto and are thus for practical purposes in no
better position than any other newspaper.

In Ashdown v. Telegraph Group Ltd,439 the claimant, A, was the former

leader of the Liberal Democrats. During his period as party leader, A
kept detailed diaries and other records of his life and political career. He
treated them as confidential and kept them secure. His records included
a confidential minute (the minute) made by A of a meeting attended by
him, the Prime Minister and three others in October 1997, concerning
the possible formation of a coalition cabinet containing two Liberal
Democrats. In 1999, when it was known that A was standing down as
party leader, it also became known that he was thinking of publishing his
diaries. Shortly afterwards, a newspaper owned by the defendant
newspaper group was given a copy of the minute by a third party, without
A’s knowledge or approval, and subsequently published an article which
contained several verbatim quotations from the minute.
A brought proceedings against the group for, inter alia, copyright
infringement, and applied for summary judgment in respect of the claim.
On the application, the newspaper group relied on the defence of fair
dealing, defence of public interest and on right to freedom of expression.
Lord Phillips of Worth Matravers, MR for the Court held:

Rare circumstances could arise in which the right to

freedom of expression guaranteed by the article 10 of the
convention440 would come into conflict with the protection
afforded by the 1988 Act, notwithstanding the express
exceptions to be found in that Act. In those circumstances,
the court was bound, insofar as it was able, to apply the
1988 Act in a manner which accommodated the right to
freedom of expression, and that made it necessary for the
court to look closely at the facts of individual cases. The
first way in which it might be possible to do that was by
declining the discretionary relief of an injunction, and such
439
[2001] EWCA Civ 1142.
440
European Convention for the Protection of Human Rights and Fundamental Freedoms.
178 INTELLECTUAL PROPERTY LAW

a step would usually be likely to be sufficient. If a

newspaper considered it necessary to copy the exact words
created by another, there was no reason in principle why
the newspaper should not indemnify the author for any
loss caused to him, or alternatively account to him for any
profit made as a result of copying his work. Freedom of
expression should not normally carry with it the right to
make free use of another’s work.
There was, however, the clearest public interest in giving
effect to the right to freedom of expression in those rare
cases where that right trumped the rights conferred by the
1988 Act. In such circumstances, section 171 (3) of that
Act permitted the defence of public interest to be raised,
although it would be very rare for the public interest to
justify the copying of the form of a work to which copyright
attached. In the instant case, whilst there might in law have
been justification for the publication of the confidential
information that was contained in the minute, it was not
arguable that there was any justification for the extent of
the reproduction of A’s own words. The minute had been
deliberately filleted in order to extract colourful passages
that were most likely to add flavour to the article and thus
to appeal to the newspaper’s leadership. A’s work product
had been deployed in that way for reasons that were
essentially journalistic in furtherance of the commercial
interests of the newspaper group. It was not arguable that
article 10 required that the group should be able to profit
from the use of A’s copyright without paying compensation.
… Copyright is essentially not a positive but negative
right. No provision of the 1988 Act confers in terms, upon
the owner of copyright in a literary work, the right to
publish it. The Act gives the owner of the copyright the
right to prevent others from doing that which the Act
recognises the owner alone has the right to do. Thus
copyright is antithetical to freedom of expression. It
prevents all, save the owner of the copyright, from
expressing information in the form of the literary work
protected by the copyright.
It is important to emphasise in the present context that
it is only the form of the literary work that is protected by
copyright. Copyright does not normally prevent the
publication of the information conveyed by the literary
work. Thus it is only the freedom to express information
using the verbal formula devised by another that is
 DEFENCES TO COPYRIGHT INFRINGEMENT 179

prevented by copyright. This will not normally constitute

a significant encroachment on the freedom of expression.
The prime importance of freedom of expression is that it
enables the citizen freely express ideas and convey
information. It is also important that the citizen should be
free to express the ideas and convey the information in the
form of words of his choice. It is stretching the concept of
freedom of expression to postulate that it extends to the
freedom to convey ideas and information using the form
of words devised by someone else.

Fair Dealing

The Copyright and Performance Rights Act, in certain circumstances

does allow anyone to do some acts restricted by copyright without the
consent of the copyright owner if the said acts are considered fair dealing
in relation to the work.441 Examples of ‘fair dealing’ or ‘fair use’ in case
of the USA, in relation to the work include reproduction of a work
exclusively for personal and private use; making of quotations from a
protected work, provided that the source of the quotation, including the
name of the author is mentioned.
Fair dealing provisions allow the copying or other use of the work
which would otherwise be an infringement. However, fair dealing in
relation to the work can only be safely enjoyed if the part taken from the
work is not substantial. In Independent Television Publications Ltd v.
Time out Ltd,442 the publishers of T.V. Times and Radio Times asserted
literary copyright in the schedules of television and radio programmes
which they published each week. Time out the entertainment listings
magazine began to publish selections from these schedules without
permission. The court held that the defendant’s selections amounted to
substantial reproductions of the plaintiffs’ schedules; and that what was
being taken did not amount to fair dealing for purposes of criticism or
review, or for reporting current events. Hence the defendant infringed
copyright in the work.
Whitford, J. for the Court stated:

Indeed once the conclusion is reached that the whole or a

substantial part of the copyright work has been taken, a
defence under the fair dealing, section 6 (2) or (3) of the
Copyright Act 1956, is unlikely to succeed.

441
Supra note 184.
442
[1984] FSR 64.
180 INTELLECTUAL PROPERTY LAW

The Copyright and Performance Rights Act does not define ‘fair dealing’,
but only restricts the defence of fair dealing for purposes of criticism or
review, reporting current events, research and dealing a work for private
study or use.443 In describing the scope of fair dealing for purposes of
criticism or review, Lord Denning, in Hubbard v. Vosper,444 stated:

you must first consider the number of and the extent of

the quotations … Then you must consider the use made of
them. If they are used as a basis of comments, criticism or
review, that may be fair dealing. If they are used to convey
the same information as the author, for a rival purpose,
they may be unfair. Next you must consider the
proportions. To take long extracts and attach short
comments may be unfair. But short extracts and long
comments may be fair. Other considerations may come to
mind also. But … it must be a matter of impression.

Similarly, in Beloff v. Pressdram Ltd,445 Ungoed Thomas, J. in discussing

factors relevant to fair dealing stated:

Fair dealing is a question of fact and of impression, to

which factors that are relevant include the extent of
quotation and its proportion to comment (which may be
justifiable although the quotation is of the whole work):
whether the work is unpublished; and the extent to which
the work has been circularised, although not published to
the public …

Thus the factors that are relevant in determining fair dealing include:

(a) Purpose: it is fair dealing to reproduce a copy of a

work for purposes of research or private study. But it
will not be fair dealing to reproduce copies of
protected work for commercial purposes without the
consent of copyright owner.446
(b) Proportion: it may be fair dealing to make quotations
from a protected work provided that the source of
the quotation and name of the author is mentioned,
and that the extent of the quotation is compatible with
fair practice. Thus long extracts taken from a protected
443
S. 21 (1)(a) (b) and (c).
444
[1972] 2QB 84 at 94; [1972] 1 All ER 1023, per Lord Denning, MR.
445
[1973] 1 All ER 240.
446
Supra note 444.
 DEFENCES TO COPYRIGHT INFRINGEMENT 181

work, with minor comments on the same may be

unfair dealing with the work.447
(c) Motive: If the motive that led to doing an act, such as
copying, in relation to the work was to compete with
the original work, this is not likely to be fair dealing.448
(d) Status of the work: Is the work published or
confidential? If the work is not published, confidential
or ‘leaked’ the defence of fair dealing is not likely to
succeed.449

It is worth noting that an act which conflicts with the normal commercial
exploitation of a work; or unreasonably prejudices the legitimate
commercial interests of the owner of the copyright in a work shall not be
treated as fair dealing with the work.450

Private Study and Research

Fair dealing in relation to a work for the purposes of study and research
does not constitute infringement of copyright. The Copyright and
Performance Rights Act provides that fair dealing with a work for private
study or for purposes of research done by an individual for his personal
purposes otherwise than for profit shall not constitute infringement.451
Therefore, where a student makes a copy of a book on banking law for
purposes of study or research, this may be considered fair dealing.
However, where a lecturer makes multiple copies of the said book and
distributes them to his students for the purposes of study or research it
will not be considered to be fair dealing. Thus, in Sillitoe v. McGraw-
Hill Book Co Ltd452 the defendant had published study notes intended to
assist students taking ‘O’ level examinations in literature, and had
reproduced a substantial part of the plaintiff’s works in the study notes.
The defendant raised, inter alia, the defence of fair dealing for purposes
of research or private study, or for purposes of criticism or review as
provided for by the Copyright Act in section 6 (1). The court refused to
accept the argument advanced by the defence, as the defendant was not
himself engaged in research or private study but was merely facilitating
this for others, that is the students purchasing copies of the study notes.

447
Ibid.
448
Weatherby & Sons Ltd v International Horse Agency & Exchange Ltd [1910] 2 Ch. 297.
449
Beloff v. Pressdam Ltd [1973] 1 All ER 241; The Court held that the publication of ‘leaked’ confidential and
unpublished document was an unfair dealing.
450
S. 21 (2), Copyright and Performance Rights Act.
451
S. 21 (1)(a), Copyright and Performance Rights Act.
452
[1983] FSR 545.
182 INTELLECTUAL PROPERTY LAW

Mervyn, J. stated:

The onus of showing that an exception of fair dealing

applies is on the defendants. The defendant contended that
section 6 (1) is widely drawn and not limited to the actual
student, so that if a dealing is fair and for the purposes of
private study the subsection applies whether the private
study in mind is one’s own or that of somebody else. Here,
he said, the dealing was for the purpose of private study
by the examinees who would acquire the notes. I do not
accept that argument. To my mind section 6 (1) authorises
what would otherwise be an infringement if one is engaged
in private study or research. The authors of the notes when
writing the notes and thus ‘dealing’ with the original work,
were not engaged in private study or research.

The defence of fair dealing for the purposes of study or research is

available to works in which copyright subsists, namely original literary,
musical, dramatic and artistic works, computer programmes, audiovisual
works or films, sound recordings, broadcasts, cable programme,
compilations and typographical arrangements of published editions.453
An act done to a work for the purposes of study or research which
conflicts with the normal commercial exploitation of a work or
unreasonably prejudices the legitimate commercial interests of the owner
of the copyright in a work shall not be treated as fair dealing with a
work.454

Criticism and Review

Fair dealing for purposes of criticism applies to any form of work or a

performance of a work.455 The Copyright and Performance Rights Act
states that fair dealing with a work for the purposes of criticism or review,
whether of that work or any other work, provided there is sufficient
acknowledgement, shall not constitute copyright infringement.456 The
Act defines the term ‘sufficient acknowledgement’ and requires that it
identifies both the work by its title or other description, and the author.457
In Sillitoe v. McGraw-Hill Book Co (UK) Ltd,458 the court held that a
sufficient acknowledgement must recognise the position or claims of the
author.
453
Ibid.
454
S. 21 (2)(a) and (b) Copyright and Performance Rights Act.
455
S. 21 (1)(b).
456
Ibid.
457
S. 21 (4).
458
[1983] FSR 545.
 DEFENCES TO COPYRIGHT INFRINGEMENT 183

It should be noted that if the work is published anonymously, or the

author’s identity cannot be ascertained by reasonable enquiry,459 or there
is no requirement for the author’s name to be included in the
acknowledgement.460 The identification has to be to the audience and
any wording or other indication that would make the reasonably alert
member of the audience to realise that the person that is identified is the
author of the works will be sufficient. Thus in Pro Sieben Media AG v.
Carlton UK Television Ltd,461 the plaintiffs, Pro Sieben, conducted an
interview with Mandy Allwood and her boy friend about Mandy’s decision
to carry on with her pregnancy after it had been revealed that she was
carrying eight fetuses, and a television programme had resulted from the
said interview. The defendants, Carlton, copied and included in its
television programme a 30-second clip of Mandy’s interview. The
defendant relied on the defence to fair dealing for the purposes of criticism
and review. The High Court held that the defendants could not rely on
the fair dealing defence to justify their copying, because their programme
did not criticise or review the plaintiffs’ programme, but rather the
plaintiffs’ decision to pay for an interview. However, the Court of Appeal
overturned the decision of the High Court and held that Carlton
programme was criticising various works representing the fruits of
‘cheque-book journalism’, of which the allegedly copied work was only
one example. In that context, there was reason to allow the application of
the fair dealing defence.
Walker, LJ said:

Indeed, fair dealing refers to the true purpose of the

allegedly infringing activity in the sense of its good faith,
intention and genuineness. The Court held that in this case
the programme incorporating the infringing material was
genuine piece of criticism or review, rather than an attempt
to dress ordinary copyright infringement up as criticism.
In the latter case the defence should not apply. One should
be careful though not to rely solely on the intentions and
motives of the alleged infringer. The notion that all that is
required is for the alleged infringer to have the sincere
belief, however misguided, that he is criticising a work
should not be encouraged. It is therefore better to construe
the phrase for the purposes of review and criticism as a
whole and to treat it as the equivalent of making use of the
work in the context of review and criticism. Once it has
been established that proper criticism is at stake, that
criticism should not be limited to criticism of style. The
ideas that are found in the work and its social or moral
459
PCR Ltd v. Dow Jones Telerate Ltd [1998] FSR 170.
460
Ibid.
461
[1998] FSR 43.
184 INTELLECTUAL PROPERTY LAW

implications can also be criticized. Carlton could therefore

use the extracts of the Pro Sieben programme to criticise
‘cheque-book journalism’ and its consequences.462

Section 21 (1)(b) of the Copyright and Performance Rights Act allows

fair dealing with one work in order to criticise or review another work.
For instance, it is fair dealing to include extracts from a work by A in a
work which is a critical analysis of the work of B. However, the work
must not be merely copied, but criticised or reviewed. In Ashdown v.
Telegraph Group Ltd,463 Paddy Ashdown, then leader of the Liberal
Democrats, attended a meeting with the Prime Minister.
In granting summary judgment, it was held that it was not necessary
to publish the minute at all as the criticism was directed at the claimant
and the Prime Minister, not at the minute itself.
The Vice-Chancellor stated:

… I accept that it is necessary to have regard to the true

purpose of the work. Is it a genuine piece of criticism and
review or is it something else, such as an attempt to dress
up the infringement of another’s copyright in the guise of
criticism, and so profit unfairly from another’s work.

Reporting Current Events

The third fair dealing exception permits works to be used for reporting
current events in a newspaper, magazine or similar periodical, provided
there is sufficient acknowledgement; or by broadcasting or by inclusion
in a cable programme service or by its use in an audiovisual work.464 The
term ‘sufficient acknowledgement’ is defined as an acknowledgment
identifying the work in question by its title or other description and,
unless the work is anonymous or the author has previously agreed or
required that no acknowledgement of his name should be made, also
identifying the author.465

Incidental Inclusion

The Copyright and Performance Rights Act exempts from infringement

acts which allow some incidental inclusion of protected works without
obtaining permission in advance from the owner of the work. An example
would be where a television news crew films a demonstration and the
report is broadcast or where one takes a photograph of an artistic work.
462
Pro Sieben Media AG v. Carlton UK television Ltd; [1999] 1 WLR 605; [1999] FSR 610, at 620 per Robert
Walker, L.J.
463
[2001] RPC 659.
464
S. 21 (1)(c), Copyright and Performance Rights Act.
465
S. 21 (4), Copyright and Performance Rights Act.
 DEFENCES TO COPYRIGHT INFRINGEMENT 185

Thus incidental inclusion of a work in an artistic work, audiovisual work,

sound recording, broadcast or cable programme does not constitute
infringement.466
Copies can be issued to the public, the work can be shown or played,
broadcast or included in the cable programme service.467 The inclusion
must however, be accidental. Thus, the incidental inclusion defence will
not be available if the work is included deliberately. In Hawkes & Sons
(London) Ltd v. Paramount Film Service Ltd,468 the incidental inclusion
defence failed because the twenty-eight bars of the march ‘Colonel Bogey’
were included deliberately in the newsreel as background music.

Judicial Proceedings

The copyright in a work will not be infringed if the work is reproduced

for the purposes of judicial proceedings, or of any other proceedings
before a tribunal established by law, for the purposes of a report of judicial
proceedings or any other such proceedings.469 Therefore, a reporter who
writes verbatim of the court proceedings in a trial case or documents
filed in court and publish them in a newspaper will not infringe the
copyright in the said work.

Educational Use

Instruction and examination

Copyright will not be infringed if a literary, dramatic, musical or artistic

work is reproduced for the purposes of the education system in Zambia.470
For the defence of educational use to be available, certain conditions
must be met, namely, the reproduction or copying must be done by a
teacher or pupil in the course of instruction, and reproduction must not
be made by means of an appliance capable of reproducing multiple copies;
or as part of the questions to be answered in an examination; or in answer
to such questions.471 The educational use exception does not cover any
subsequent dealings in the copies made for educational purposes.
Copyright will therefore be infringed when the copies are sold, let for
hire, or offered or exposed for sale or hire.
However, acts which conflict with the normal commercial exploitation
of a work, or unreasonably prejudices the legitimate commercial interests
of the owner of the copyright in a work will not qualify for exemption
for education use.472
466
S. 21 (1)(h), Copyright and Performance Rights Act.
467
S. 21 (1)(i), Copyright and Performance Rights Act.
468
[1934] Ch. 593.
469
S. 21 (1)(d), Copyright and Performance Rights Act.
470
S. 21 (1)(f), Copyright and Performance Rights Act.
471
Ibid.
472
S. 21 (2)(a)(b)(ii).
186 INTELLECTUAL PROPERTY LAW

Performance, playing or showing a work

Literary, dramatic, musical works can be shown, played or performed at

an educational institution without infringing the copyright. The
performance of a work must be done by the staff and students of a school
or other educational institution for the purposes of the education system
of Zambia in the course of the activities of the school or institution, and
the audience must be composed exclusively of:
(i) the staff and students of the school or institution; or
(ii) the parents and guardians of the students; or
(iii) other persons directly connected with the activities of the school
or institution.473

Libraries and Archives

The Copyright and Performance Rights Act also extends exceptions to

copyright infringement to works by libraries or archives. The exceptions
for libraries or archives only apply to those libraries or archives that are
prescribed by the statutory instrument issued by the Minister.474 A library
or archive can make a copy of any item, where it is not reasonably
practicable to purchase a copy of the item in question, in the permanent
collection of the library or archive in order to preserve or replace that
item by placing the copy in permanent collection either in addition to or
in place of the item; or in order to replace in the permanent collection of
another designated library or archive an item which has been lost,
destroyed or damaged.475

Computer Programme

Reproduction of a copy of a computer programme made from a copy of

the programme by the owner of that copy for the purpose of being used
in place of that copy in the event that it is lost, destroyed or corrupted is
permitted under the Act.476

Broadcast or Cable Programme

The Copyright and Performance Rights Act permits the recording of a

broadcast or cable programme by an individual for the purpose of allowing
the individual to listen to or view the broadcast or programme at a time
more convenient to him.477
473
S. 21 (1)(g), Copyright and Performance Rights Act.
474
Section 21 (1)(j), Copyright and Performance Rights Act.
475
Ibid.
476
S. 21 (1)(k), Copyright and Performance Rights Act.
477
S. 21 (1)(l), Copyright and Performance Rights Act.
 187

Chapter Twelve

ENFORCEMENT AND REMEDIES

Introduction

The Copyright and Performance Rights Act divides copyright enforcement

into the following categories, namely, conservatory or provisional
measures, civil remedies, criminal sanctions and measures to be taken at
the border.
Conservatory or provisional measures aim to prevent infringement
from happening by preventing the entry of infringing works protected
by copyright into the channels of commerce including entry of imported
goods after clearance by customs and to preserve relevant evidence
concerning an alleged infringement. Thus, the court may exercise
discretion to order that provisional measures be carried out without
advance notice of the infringer. In this way, the alleged infringer is
prevented from relocating the suspected infringing materials to avoid
detection. The most common provisional measure is a search of the
premises of the alleged infringer and seizure of suspected infringing
copyright material, the equipment used to manufacture them, and all
relevant documents and other records of the alleged infringing business
activities.478
Civil remedies compensate the copyright owner for economic injury
suffered because of the infringement, usually in the form of monetary
damages, and create an effective deterrent from further infringement,
often in the form of a court order to destroy the infringing copyright
works, materials and implements that have been used for producing them.
Where there is a danger that infringing acts may be continued or likely to
continue, the court may also issue injunctions against such acts, failure
to comply with which would subject the infringer to payment of a fine.479
Criminal sanctions, on the other hand, are intended to punish those
who wilfully infringe copyright works and related rights on a commercial
scale, and like civil remedies, to deter further infringement. The purpose
of punishment is served by the imposition of substantial fines, and by
sentences of imprisonment to those applied to crimes of a similar nature.
The purpose of deterrence is served by orders for the seizure, forfeiture
and destruction of copyright works as well as the materials and implements
used in committing the offence.480
478
S. 26, Copyright and Performance Rights Act.
479
S. 25, Copyright and Performance Rights Act.
480
S. 28, Copyright and Performance Rights Act.
188 INTELLECTUAL PROPERTY LAW

Measures to be taken at the border deal with actions taken by the

customs authorities rather than by the courts. Border measures allow the
copyright owner to apply to the Controller of Customs to prohibit the
importation of infringing copies.481 Border measures also allow the
copyright owner to apply to Customs authorities to suspend the release
into circulation of goods which are suspected of infringing copyright.
The copyright is required to satisfy the Controller of Customs that there
is prima facie evidence of infringement.482

Conservatory or Provisional Measures

Obtaining and preserving evidence is very crucial if the copyright owner

has to prove infringement of his protected works. Often, if the person
infringing the copyright in the work realises that he is to be sued for that
infringement, he may be tempted to destroy those copyright materials or
articles that are likely to incriminate him. Therefore, where a copyright
owner believes that his rights are being infringed and there is a real danger
that the person involved will dispose of the evidence before the trial, the
copyright owner should apply to the court for a search order to enable
him to enter the premises where the infringing copyright materials and
articles are kept and remove them, or have copies made, so they can be
produced at the trial.
In Anton Piller AG v. Manufacturing Process Limited,483 a German
manufacturer had evidence that its English agent was passing the German
company’s confidential manufacturing drawings and other information
to a competitor. It applied to the High Court in London, without notice to
the agents, for a pre-trial injunction stopping them from infringing
copyright or passing on confidential information. The court granted the
injunction, but refused an order requiring the agents to allow up to two
representatives of the applicant and two of their lawyers to enter the
agents’ premises and inspect and remove into the lawyers’ custody any
documents or articles relating to the design or manufacture of copies of
the German company’s equipment. The applicant appealed against the
refusal. The court held that, in exceptional circumstances, where the
claimant has an extremely strong prima-facie case, where the actual or
potential damage to the claimant is very serious, where it was clear that
the defendant possessed vital evidence and where there was a real
possibility that he might destroy or dispose of such material so as to
defeat the ends of justice, the court had the jurisdiction to order the
defendant to permit the claimant’s representatives to enter the defendant’s
481
S. 27, Copyright and Performance Rights Act.
482
Ibid.
483
[1976] 1 Ch. 55.
 ENFORCEMENT AND REMEDIES 189

premises and inspect and remove such materials. The object of the search
order in this context is the preservation of evidence. When an order is
granted, the claimant has to give an undertaking in damages in case the
claimant is wrong and the defendant suffers damage as a result of the
execution of the order.
Lord Denning, MR stated:

The order sought in this case is not a search warrant. It

does not authorise the plaintiffs’ solicitors or anyone else
to enter the defendants’ premises against their will. It does
not authorise the breaking down of any doors, or the
slipping in by a back door, or getting in by an open door
or window. It only authorises entry and inspection by the
permission of the defendants. The plaintiffs must get the
defendants’ permission. However, it does do this: it brings
pressure on the defendants to give permission. It does more.
It actually orders them to give permission, which I suppose,
with the result that if they do not give permission, they are
guilty of contempt of court.
It seems to me that such order can be made by a judge
ex parte, but it should only be made where it is essential
that the plaintiff should have inspection so that justice can
be done between the parties: and when, if the defendants
were forewarned, there is a grave danger that vital evidence
will be destroyed, that papers will be burnt or lost or hidden,
or taken beyond the jurisdiction, and so the ends of justice
be defeated, and when the inspection would do no real
harm to the defendant or his case.
Nevertheless, in the enforcement of this order, the
plaintiffs must act with due circumspection. On the service
of it, their solicitor, who is an officer of the court, should
attend the plaintiffs. They should give the defendants an
opportunity of considering it and of consulting their own
solicitor. If the defendants wish to apply to discharge the
order as having been improperly obtained, they must be
allowed to do so. If the defendants refuse permission to
enter or to inspect, the plaintiffs must not force their way
in. they must accept the refusal, and bring it to the notice
of the court afterwards, if need be on an application to
commit. You might think that with all these safeguards
against abuse, it would be of little use to make such an
order. But it can be effective in this way in that it serves to
tell the defendants that, on the evidence put before it, the
190 INTELLECTUAL PROPERTY LAW

court is of the opinion that they ought to permit inspection

and that they refuse at their own peril. It puts them in peril
not only of proceedings for contempt, but also of adverse
inferences being drawn against them.
On the evidence in this case, we decided last Tuesday
that there was sufficient justification to make on order. It
contains an undertaking in damages which is to be
supported by a bond of £10,000.00. It gives an interim
injunction to restrain the infringement of copyright and
breach of confidential information. It orders that the
defendants do permit one or two of the plaintiffs and one
or two of their solicitors to enter the defendants’ premises
for the purpose of inspecting documents, files or things,
and removing those which belong to the plaintiffs. This
was, of course, only an interim order pending the return of
summons.484
Lord Justice Ormrod, in the same case stated as follows:

There are three essential pre-conditions for the making of

such an order, in my judgement. First, there must be an
extremely strong prima facie case. Secondly, the damage,
potential or actual, must be very serious for the applicant.
Thirdly, there must be clear evidence that the defendants
have in their possession incriminating documents or things,
and that there is a real possibility that they may destroy
such material before any application inter partes can be
made. In the circumstances of the present case, all those
conditions to my mind are satisfied, and this order is
essential in the interests of justice.485

It is worth noting that search under Anton Piller orders or provisions

have at times been abused in their exercise. To curb the said abuses,
guidelines for search orders have therefore been developed. In Universal
Thermo Sensors Limited v. Hibben,486 where the search order was executed
at a private house occupied by a woman and her children at 7:15 am, the
Vice-Chancellor made the following points:
(i) the order should be executed during normal office hours so
that the defendant could take legal advice;
(ii) if the order was to be executed at a private dwelling and there
was a chance that a woman might be alone there, the solicitor
executing the order should be accompanied by a woman;
(iii) a list of items taken should be made, giving the defendant an
opportunity to check it;
484
Supra note 113, at pp. 158-159.
485
Ibid., p. 159.
486
[1992] 3 All ER 257.
 ENFORCEMENT AND REMEDIES 191

(iv)
if the order contained an injunction restraining the defendant
from informing others (for example, co-defendants), the period
should not be too long;
(v) in the absence of good reason otherwise, orders should be
executed at business premises in the presence of a responsible
officer or representative of the defendant’s company;
(vi) provision should be made to prevent the claimant going through
all the defendant’s documents, where for instance, the parties
were competitors and the claimant could thereby gain useful
and sensitive information about the defendant’s business
unrelated to the alleged infringement; and
(vii) ideally, the order should be executed by a neutral solicitor who
was experienced in the execution of search orders.
In the practice direction: Mareva injunctions and Anton Piller orders,487
the practice direction was issued to standardise the wording of Anton
Piller orders and the procedure for executing them. The order requires
the addressee to allow the person listed to enter the named premises, to
hand over articles and provide information as required. It also states that
the addressee may insist that, apart from the claimant’s solicitor, any
person who could gain commercially from what he might read or see is
not present and that entry be refused before 9:30 am or after 5:30 am, or
on Saturday or Sunday.
Furthermore, the Practice Direction also included a specimen order
and the following provisions:

1. (a) The specimen order provides for it to be served

by a supervising solicitor and carried out in his
presence and under his supervision. The
supervising solicitor should be an experienced
solicitor, having some familiarity with the
operation of Anton Piller orders, who is not a
member or employee of the firm acting for the
applicant. The evidence in support of the
application should include the identity and
experience of the proposed supervising solicitor.
(b) If in any particular case the judge does not think it
appropriate to provide for the order to be served
by a supervising solicitor, his reasons should be
expressed in the order itself.
2. Where the premises are likely to be occupied by an
unaccompanied woman and the supervising solicitor
is a man, at least one of the persons attending on the
service of the order should be a woman.
487
[1994] RPC 617; [1994] 1 WLR 1233.
192 INTELLECTUAL PROPERTY LAW

3. Where the nature of the items removed under the order

makes them appropriate, the applicant should be
required to insure them.
4. The applicant should undertake not to inform any third
party of the proceedings until after the return date.488

Civil Remedies

The Copyright and Performance Rights Act provides a number of

remedies for copyright infringement. Section 25 of the Act provides that
copyright infringement is actionable in the court at the suit of the owner
of the copyright. The remedies or relief available for copyright
infringement are the same as those available in respect of the infringement
of any other property right.489 These remedies include:
(i) damages;
(ii) injunctions;
(iii) accounts (of profits); and
(iv) delivery up.
It is worth stating that in an action for copyright infringement, proof of
actual damage shall not be required.490 Besides, the plaintiff shall not be
entitled to damages if the defendant shows that he reasonably believed
that no copyright subsisted in the work.491 In addition, no injunction shall
be issued which requires a completed or partly built building to be
demolished or which prevents the completion of a partly built building.492
In a copyright infringement the plaintiff is entitled to claim cumulative
remedies. Thus, in Sutherland Publishing Company Limited v. Caxton
Publishing Company Limited493, in an action for alleged infringement of
the plaintiff’s copyright in a certain publication, the plaintiffs claimed,
inter alia, an inquiry as to (i) damages suffered by reason of the
infringement and (ii) damages for conversion. The defendants admitted
the infringement, but contended that the remedies given by the sections
6 and 7 of the Copyright Act, 1911, were alternative and not cumulative
and that the plaintiff must elect their remedy. The Court held that the
remedies were cumulative and not alternative and the plaintiffs could
recover damages under both sections. Each claim was in respect of a
different wrong, the former for a wrong done to an incorporeal right, the
copyright; and the latter for conversion of particular chattels, the infringed
copies, which by section 7 are deemed to be the property of the plaintiff.

488
Supra note 113, at pp. 159-160
489
S. 25 (2) Copyright and Performance Rights Act.
490
S. 25 (3) Copyright and Performance Rights Act.
491
S. 25 (4) Copyright and Performance Rights Act.
492
S. 25 (5) Copyright and Performance Rights Act.
493
[1936] 1 All ER 186.
 ENFORCEMENT AND REMEDIES 193

Damages

Damages for copyright infringement are similar to those in tort. The

copyright owner should receive monetary compensation so as to restore
him to the position he would have been in had the infringement not
occurred. However, the damages the copyright owner is entitled to are
for the actual loss suffered. Thus, in Claydon Architectural Metalwork
Limited v. DJ Higgins and Sons,494 secondary damages associated with
cash flow problems caused to the claimant by the defendant’s acts were
held to be too remote.
The factors that may be taken into account when assessing damages
as compensation for copyright infringement include:

(i) Lost sales

The damages for copyright infringement may be assessed on the basis of

the profits the copyright owner would have derived from the sales lost as
a result of the infringement. In Hay v. Sloan,495 where a builder sued
another builder for copying the architectural work, the ‘Belaire’ model
home, by constructing a virtually identical house for a buyer. The
defendant builder was encouraged to copy by a real estates broker, who
profited from the sale. The court found infringement and granted an
injunction to prevent further copying by both the builder and the broker.
The court also granted damages.
MR Justice Steward stated:

Where the plaintiff can establish clearly that the defendant’s

profit would have been his but for the infringement, these
profits then become the plaintiff’s loss and, in that sense,
are an element of damages sustained by him. It was
suggested here that the damages to be assessed against the
builder and the real estate broker would be their respective
profit. It has not been established, however, that the plaintiff
would have received such sums had the infringement of
his copyright not occurred. Only such loss as is the natural
and direct consequences of the infringer’s acts can be
assessed on this basis….punitive or exemplary damages
may be awarded…and if damages cannot be proved,
nominal damages may be allowed, which are not
necessarily small.496
494
[1997] FRS 475.
495
[1957] 12 DLR 2d 397.
496
Supra note 113, at p. 164.
194 INTELLECTUAL PROPERTY LAW

(ii) Amount of Royalties

Damages for copyright infringement might be assessed on the basis of

the amount of royalties the copyright owner would have secured had the
infringer obtained and paid for a licence to carry out infringing acts.497
Thus, a video store that wrongly copies video tapes for rental has to pay
as damages the licence fee the copyright owner charges comparable to
video stores that acquire lawful copies.
It is imperative to note that knowledge on the part of the copyright
infringer is not required for establishing liability for the primary
infringement of copyright. However, knowledge on the part of the
copyright infringer is essential for the copyright owner if he granted
damages. Section 25 (4)498 provides that the plaintiff shall not be entitled
to damages if the defendant shows that he reasonably believed that no
copyright subsisted in the work. This does not extend to other remedies
such as injunctions or accounts of profits. Also in the claim for damages
for copyright infringement, the copyright owner is not required to provide
proof of actual damage of his work.499

Punitive or Exemplary Damages

Courts sometimes grant, in addition to ordinary damages, punitive or

exemplary damages for copyright infringement so as to punish for
flagrant, scandalous or deceitful conduct and to deter future infringement.
Thus, in Profekta International Incorporation v. Lee,500 the defendant
copied and rented out video tapes from her variety store, without the
consent of the copyright owner. In 1988, she pleaded guilty to a criminal
charge of deliberate copyright infringement and was fined $50.00. Six
years later, however, an ex parte order (an Anton Piller order) was served
on the plaintiff to search her store, and 300 tapes containing the plaintiff’s
works were found. The defendant had earlier refused to take a licence
from the plaintiff. The trial court awarded the plaintiff compensatory
damages of $9,500 based on the usual charges made by the plaintiff for
licensing reproduction and rental, plus costs of $2,500, but refused to
grant any additional punitive award. The plaintiff appealed
Linden, J. for the court held:

Exemplary damages should only be awarded in cases where

the combined award of general damages and aggravated
damages would be insufficient to achieve the goal of
497
Redwood Music v. Chappell [1982] RPC 109.
498
Copyright and Performance Rights Act.
499
Supra note 490.
500
[1997] 75 CPR (3d) 369.
 ENFORCEMENT AND REMEDIES 195

punishment and deterrence. The question which this court

must ask itself is: ‘was the misconduct of the defendant so
outrageous that punitive damages were rationally required
to act as deterrence?’
While courts of appeal rarely interfere with such
decisions of first instance judges not to award punitive
damages, we feel we must do so in this case for several
reasons. First, the conduct of the respondent, in continuing
to violate the copyright before the injunction was issued,
was flagrant in the light of the criminal conviction earlier,
the warning issued to her by Profekta and her irresponsible
attitude as reflected in her statements that she would rather
spend $5,000 on legal fees to fight Profekta, than abide
by the copyright and enter a licence agreement. Second,
the compensatory damage award, while not so low as to
be altered by this court, was modest, considering the
financial benefit obtained by the respondent in violating
the copyright. Third, the extra profit made by the
respondent in not paying any licence fees cannot be
ignored.
Thus, in our view, an award of punitive damages was
required in addition to the compensatory damages in order
to punish the respondent for the flagrant conduct and to
deter her and others from similar conduct in the future. In
view of the amounts awarded in similar cases, the amount
of $10,000.00 in punitive damages should be awarded.501

Injunctions

An injunction is an order from the court to a person either to refrain from

doing some act or continuing doing some act; or to order a person to
perform some act. For instance, the court may grant an injunction to
order a person to cease making infringing copies of copyright work, or
an order to destroy some article in his possession which is used for making
the infringing copies. While damages are awarded as of right, an injunction
as an equitable remedy is awarded at the discretion of the court. Therefore,
where ordinary damages would be an adequate remedy, the court would
not grant injunction. Nonetheless, injunctions are often granted in
copyright matters in order to stop the copyright infringer from the
continuation of the infringement. The copyright infringer is also usually
ordered to hand over infringing stock to the plaintiff, so that the injunction
is made effective and any continuing temptation to infringe is removed.
501
Supra note 113, at p. 165.
196 INTELLECTUAL PROPERTY LAW

It should be stated that an injunction and order for delivery up of

infringing items may be granted, even where the plaintiff would suffer
no loss from a continuing infringement. In The Queen v. James Lorimer
and Company Limited,502 the Canadian government department in charge
of anti-competitive practices held an inquiry into the petroleum industry
and produced a seven-volume report at the end of it. The copyright of
the report was owned by the Government of Canada, which sold the
work for $70.00 per copy but also gave away free copies to institutions
such as public libraries. Without the government’s authorisation, the
defendant publisher condensed the report into a one-volume paperback,
which it sold for $14.95. The government claimed an injunction and
damages for the infringement. The first instance court found infringement
but refused an injunction or delivery up of existing stocks. Instead, it
awarded damages equivalent to an 8 per cent royalty on the retail sale of
the defendant’s books, both for the past and the future. The government
appealed. The Court of Appeal agreed that the government was entitled
to an injunction and an order that the defendant deliver up the infringing
stocks in his possession.
MR Justice Mahoney for the court held:

In exercising his discretion to refuse the injunctive relief,

the learned trial judge found persuasive the facts that the
infringement had not adversely affected the revenue
deriving from its sales as well as the unusual character of
the appellant as a plaintiff. The characterisation of the
Crown is to be treated differently than other litigants.
The Copyright Act is clear. Infringement does not
require that the infringing work competes in the market
place with that infringed; it requires only that the infringer
does something that the copyright owner alone has the right
to do. It follows that, where infringement of the copyright
has been established, the owner of the copyright is prima
facie entitled to an injunction restraining further
infringement. The onus is on the infringer to establish
grounds upon which the court may properly exercise its
discretion against granting such relief. Those grounds must
lie in the conduct of the copyright owner, not in the motives
of the infringer. The fact that the copyright owner has
suffered no damages as a result of the infringement is not
a basis for refusing an injunction.
A computation of damages based on an appropriate
royalty is acceptable where the copyright owner does not
502
(1984) 77 CPR 2d 262.
 ENFORCEMENT AND REMEDIES 197

prove that he would have made the sales the infringer did.
However, I find no authority for requiring a copyright
owner to acquiesce in a continuing infringement against
payment of a royalty. That is tantamount to the imposition
of a compulsory licence. In the absence of legislative
authority, the court has no power to do that. I am of the
opinion that the learned trial judge applied wrong principles
and erred in law in denying the relief of injunction and
delivery up of existing stocks substituting for that relief, a
royalty on the future sale of infringing copies.503

An injunction being a discretionary remedy, the court will have to take

into account certain factors before deciding to grant an interim injunction.
Thus in Serie 5 Software Limited v. Phillip Clarke,504 Laddie, J. said that,
when deciding whether to grant interim relief, the court should bear the
following matters in mind:
(a) the grant of an order of an interim injunction was a matter of
discretion and depended on all the facts of the case;
(b) there were no fixed rules;
(c) the court should rarely attempt to resolve complex issues of
disputed fact or law;
(d) major factors to be taken into account are:
(i) the extent to which damages would be likely to be an
adequate remedy and the ability of the other party to
pay,
(ii) the balance of convenience,
(iii) the maintenance of the status quo, and
(iv) any clear view the court may reach as to the relative
strength of the parties’ case.
An injunction will not be granted if the claimant’s claim is frivolous or
vexatious or if there is some doubt about whether the claimant would be
granted an injunction and substantial damages at the full trial.505
It should be stated that no injunction shall be granted in an action for
infringement of copyright which requires completed or partly built
building to be demolished or which prevents the completion of a partly
built building.506

503
Supra note 113, at pp. 160-161.
504
[1996]FRS 273.
505
Entec Pollution Control Limited v. Abacus Mouldings, [1992] FRS 332.
506
Supra note 492.
198 INTELLECTUAL PROPERTY LAW

Accounts (of Profits)

The Copyright and Performance Rights Act provides that in an action for
infringement of copyright, relief by way of accounts (of profits) shall be
available to the plaintiff as is available in respect of the infringement of
any other property right.507 Thus, the court will allow successive claimants,
usually as an alternative to damages, to recover the net profits or account
of profits the infringer has made from the copyright infringement.
The purpose of the accounts of profit is to prevent the defendant from
enriching himself at the plaintiff’s expense. In Sheldon v. Metro-Goldwyn
Pictures Corporation,508 the defendant was found to have infringed the
plaintiff’s copyright by making a movie based on the plaintiff’s play.
The plaintiff was awarded an account of profits against the defendant.
The defendant then claimed that the plaintiff should be awarded only a
small part of the defendant’s film profits, since they were mainly
attributable to the defendant’s endeavours, not to the plaintiff’s relatively
unknown play. The court agreed that the plaintiff should not have the
whole of the defendant’s net profit, but decided that she should be awarded
more than what the defendant proposed.

Delivery Up

In an action for copyright infringement, the plaintiff will be entitled to a

relief of delivery up of infringing copies of works of copyright. The
Copyright and Performance Rights Act provides that where a person
has:
(a) an infringing copy of a work in his possession, custody or
control in the course of a trade or business; or
(b) in his possession, custody or control an article specifically
designed or adapted for making copies of a particular
copyright work; the court may, on the application of the
owner of the copyright in the work, order that the infringing
copy or article be forfeited and delivered up to the owner of
the copyright.509

Presumptions

The Copyright and Performance Rights Act provides for certain

presumptions which shall apply in proceedings for copyright infringement
in a work. The presumptions relate to:

507
Supra note 489.
508
106 F. 2d 45 (US Court of Appeals, 2nd Circuit, 1939).
509
Supra note 26.
 ENFORCEMENT AND REMEDIES 199

(i) presumption as to the possession of copies;

(ii) presumption as to the existence of copyright in a work; and
(iii) presumption as to the authorship and date of publication of
a work.

Presumption as to the possession of copies

In any proceedings instituted concerning copyright infringement, a person

who has in his possession, custody or controlled five or more infringing
copies of a work in the same form shall be presumed to be in possession
of or to have imported, the copies otherwise than for private or domestic
use.510

Presumption as to the existence of copyright

The Copyright and Performance Rights Act provides that copyright shall
be presumed to subsist in a work if the defendant does not put in issue
the question whether copyright subsists.511 Where the subsistence of the
copyright is proved or admitted or is presumed, the plaintiff shall be
presumed to be the owner of the copyright, if he claims to be the owner
of the copyright and the defendant does not put in issue the question of
his ownership.512 Furthermore, if the question arises on whether an article
is an infringing copy of a work and it is shown that the article is a copy of
the work, and that copyright subsists in the work or has subsisted at any
time, it shall be presumed that the article was made at a time when
copyright subsisted at any time.513

Presumption as to authorship and date of publication

Where a published work, in its published form, states, or carries a label

or other mark that states:
(a) that a named person was the author of the work;
(b) in the case of an audiovisual work, that a named person was the
director or producer of the audiovisual work;
(c) that a named person was the owner of the copyright at a specified
time, being a time not later than the time of publication; or
(d) that the work was first published in a specified year or in a
specified country;
the statement shall be admissible as evidence of the fact stated and shall
be presumed to be correct.514
510
S. 29 Copyright and Performance Rights Act.
511
S. 30 (2) Copyright and Performance Rights Act.
512
S. 30 (3) Copyright and Performance Rights Act.
513
S. 30 (4) Copyright and Performance Rights Act.
514
S. 31 (2) Copyright and Performance Rights Act.
200 INTELLECTUAL PROPERTY LAW

It should be noted that similar presumptions apply in case of a work

of joint authorship.515
Where an audiovisual work, whether published or not, is shown in
public, broadcast or included in a cable programme service and the work
as so shown, broadcast or included in the cable programme service states:
(a) that a named person was the director or producer of the work;
(b) that a named person was the owner of the copyright at a specified
time, being a time not later than the time of showing, broadcast
or inclusion in the programme; or
(c) that the work was first published in a specified year or in a
specified country;
the statement shall be admissible as evidence of the fact stated and shall
be presumed to be correct.516
In case of an original artistic work which carries a name purporting to
be the name of the author, that person shall be presumed to be the author
of the work.517
Where in an action for infringement in respect of a literary work,
musical, dramatic or artistic work, a compilation or a computer
programme, it is established that the author of the work is dead, the work
shall be presumed to be an original work, and if it is alleged by the
plaintiff that a publication on a specified date in a specified country was
the first publication of the work, that publication shall be presumed to
have been the first publication of the work and to have taken place in that
country and on that date.518

Criminal Offences

The Copyright and Performance Rights Act provides for certain criminal
offences for copyright infringement.

Making, selling, dealing etc

Section 28 (1) of the Act states that any person who during the subsistence
of copyright in a work:
(a) makes for sale or hire any infringing copy;
(b) sells, lets for hire or by way of trade, exposes or offers for sale
or hire any infringing copy;
(c) distributes infringing copies;
(d) possesses, otherwise than for private and domestic use, any
infringing copy;
(e) by way of trade, exhibits in public any infringing copy;
515
S. 31 (5) Copyright and Performance Rights Act.
516
S. 31 (3) Copyright and Performance Rights Act.
517
S. 31 (3) Copyright and Performance Rights Act.
518
S. 31 (7) Copyright and Performance Rights Act.
 ENFORCEMENT AND REMEDIES 201

(f) imports into Zambia, otherwise than for his private and domestic
use, and as items accompanying him on his entry into Zambia;
(g) makes or has in his possession any article used or intended to be
used for the purpose of making infringing copies;
shall, unless he satisfies the court that he acted in good faith and had no
reasonable grounds for supposing that the copyright would or might
thereby be infringed, be guilty of an offence and shall be liable on the
first conviction, to a fine not exceeding fifty thousand penalty units or
ten penalty units for each infringing copy whichever is greater, or to
imprisonment for a term not exceeding five years, or to both.519

Articles specifically designed or adapted to make copies

A person who makes or imports for sale or hire any article specifically
designed or adapted to circumvent the operation of a device or system
designed or adapted to prevent or control the reproduction of a recording
of a work shall be guilty of an offence and shall be liable on conviction
to a fine not exceeding fifty thousand penalty units or to imprisonment
for a term not exceeding five years or to both.520

Receiving illegal programme included in a broadcast or programme

service

Anyone who dishonestly receives a programme included in a broadcast

or in a cable programme service provided from a place in Zambia with
intent to avoid payment of any charge applicable to the reception of the
programme shall be guilty of an offence and shall be liable to a fine not
exceeding fifty thousand penalty units or to imprisonment for a term not
exceeding five years or to both.521
It should be stated that where a person is charged with an offence of
copyright infringement, the court may, whether or not he is convicted of
the offence, order that any article in his possession which appears to the
court to be an infringing copy, or to be an article used or intended to be
used for making infringing copies or for the commission of an offence,
be destroyed or delivered up to the owner of the copyright in question or
otherwise dealt with as determined by the court.522

519
One penalty unit is equivalent to K180.00.
520
S. 28 (2), Copyright and Performance Rights Act.
521
S. 28 (3), Copyright and Performance Rights Act.
522
S. 28 (4), Copyright and Performance Rights Act.
202 INTELLECTUAL PROPERTY LAW

Search Warrants and Seize of Infringed Copies or Articles

The Copyright and Performance Rights Act provides for the issuance of
warrants by a Magistrate to authorise a police officer to enter and search
any house or premises and seize any suspected infringing copies or articles.
Section 33 (1) of the Act provides that where information is given on
oath to a magistrate that there is in any house or premises any infringing
copy or any article used or intended to be used for making infringing
copies, or any other article, book or document by means of or in relation
to which an offence under section 28 of the Act has been committed, the
Magistrate may issue a warrant under his hand which shall authorise any
police officer, of or above the rank of Inspector, named or referred to in
the warrant to enter the house or premises at any reasonable time by day
or night and search for and seize any such copy, contrivance, article,
book or document.
The Act requires any police officer who conducts a search and seizes
anything to produce the same before the Magistrate within forty-eight
hours after the seizure.523 The Act further authorises a police officer to
use force when enforcing the search warrants. Thus, any police officer of
or above the rank of Inspector may in the exercise of powers enforce a
search warrant, if it is necessary so to do:
(a) break open any outer or inner door of a dwelling house or any
other premises;
(b) forcibly enter any part of the premises;
(c) remove by force any obstruction to entry, search, seizure or
removal; and
(d) detain every person found on the premises until the premises
have been searched.524
Where a forced entry is made when conducting a search, the police officer
concerned shall make arrangements to ensure that the premises are left
as secure as they were before the entry.525 Where it is not practical to
seize and remove from where they found anything or document what is
to be seized by reason of their nature, size or amount, a police officer
may by any means seal the things or documents in the premises or
container in which they are found. 526 It should be noted that any
proceeding for copyright infringement or for an offence under the Act,
where a package, container or other receptacle containing articles alleged
to be infringing copies or to be subject to seizure, has been seized, it
shall be sufficient to examine a sample consisting of 1 per cent of the
articles, or five articles, whichever is the smaller number. If it is established
523
S. 33 (2), Copyright and Performance Rights Act.
524
S. 34 (1), Copyright and Performance Rights Act.
525
Ibid.
526
S. 35 (1), Copyright and Performance Rights Act.
 ENFORCEMENT AND REMEDIES 203

that all the articles in the sample are identical with each other, it shall be
presumed that the remainder of the articles in the package, container or
receptacle are identical with the articles in the sample.527

Border Measures

The Copyright and Performance Rights Act allows the copyright owner
to request the Controller of Customs to prohibit the importation of copies
that infringe his copyright in the work. Section 27 of the Act provides
that the owner of the copyright in a literary or musical work, compilation,
audiovisual work or sound recording, may, if the work has been published,
give notice in writing to the Controller of Customs that he is the owner
of the copyright in the work, and that he requests the Controller of Customs
to treat as prohibited goods, copies of the work which are infringing
copies, during a period of five years or the remainder of the duration of
the copyright, whichever is less.528 The Controller of Customs may
require, in addition to the notice given to him by the copyright owner,
evidence to support such a notice.529
Where the Controller of Customs is satisfied that there is a reasonable
probability that attempts may be made to import infringing copies of the
work, and that it is in the public interest that the copies be made prohibited
imports, he shall issue a notice in the gazette to the effect that, during the
period specified in the application infringing copies of the work concerned
shall be prohibited imports. Furthermore, that during the specified period
a person shall not import infringing copies of the work concerned,
otherwise than for domestic and private use, and any infringing copies
so imported shall be subject to forfeiture.530

527
S. 37, Copyright and Performance Rights Act.
528
Ss 27 (1) and (2), Copyright and Performance Rights Act.
529
S. 27 (3), Copyright and Performance Rights Act.
530
S. 27 (4), Copyright and Performance Rights Act.
204 INTELLECTUAL PROPERTY LAW
 205

Chapter Thirteen

RIGHTS IN PERFORMANCES

Introduction

Not so long ago, performers and holders of a recording right (recording

company) in relation to the performance were denied copyright protection
in their live performances. If, for example, a performer such as a musician
was giving a live musical performance, anyone in the audience could
make a record of his live performance, or could broadcast live the musical
performance or include it live in a cable programme service without the
consent of the performer and also without infringing the copyright in
such a performance.
This lack of protection and recognition of rights of performers and
recording companies was felt to be undesirable and increased the demand
for the extension of copyright protection to the performances. The
extension of copyright protection to performances was demanded for
various reasons, which included:
Firstly, both performers and recording companies make a substantial
contribution to the production of the performance and would be less
inclined to do so if they were unable to secure a proper return for their
contribution. Secondly, apart from the financial implications, the
performer contributes to the artistic work in bringing it to life and
recording company’s entrepreneurial investment is considerable.531
Thirdly, performers were deprived of their income and livelihood as
others could freely profit from their performances by making recordings
of the live performances and deal commercially with such recordings.
Fourthly, the technological developments such as the radio, motion
picture, television, videogram and satellites made it possible and easy to
fix live performances on a variety of materials namely records, cassettes,
tapes and films; and also to broadcast and communicate the performances
to the public on a world wide scale.
The earliest countries to see the need to introduce and recognise the
rights of performers in their legislations were civil law countries, namely,
Argentina and Austria, which in 1936 granted specific civil rights to
performers.532 The recognition of performers rights in various jurisdictions
was boosted and influenced by the adoption of the Rome Convention
for the protection of performers, producers of phonograms and
531
Torremans, P., Intellectual Property Law (3rd ed.). Butterworths (2001), pp. 270 - 271.
532
Supra note 15, at pp. 64 - 65.
206 INTELLECTUAL PROPERTY LAW

broadcasting organisations in 1961. It should be stated, however, that the

common law countries, though protecting performers by criminal
sanctions, have not been very keen to make available civil remedies to
performers in infringement cases. Thus, countries like the United
Kingdom only granted civil remedies to performers in 1988.533 In Zambia,
grant of civil remedies to performers in their performances was recognised
and introduced in 1994, through the Copyright and Performance Rights
Act.

Subsistence of Rights in Performance

The Copyright and Performance Rights Act grants rights in performances

to the performers and to the person who has recording rights in relation
to the performance. 534 The Act defines a performance as a live
performance given by one or more individuals which is a performance
of drama, dance or mime, a musical performance, a ready or recitation
of a literary work, or a performance of a variety act or any similar
presentation.535
The Act grants a performer a right called the ‘performer’s rights’ to
exploit a qualifying performance by means of the recording, broadcast
or inclusion in a cable programme service of the performance.536 In
addition to the grant of the ‘performer’s right’ the Act also grants a
‘recording right’ to a qualifying person who has the benefit of an exclusive
recording contract in relation to a performance or the qualifying person
who has been licensed by a person who has the benefit of an exclusive
recording contract in relation to the performance, and is not qualifying
person, to make recordings of the performance with a view to their being
sold, let for hire or shown or played to the public whether or not the
performance is a qualifying performance.537 The ‘recording right’ granted
to the qualifying person shall entitle him to exploit the qualifying
performance by him by means of the recording, broadcast or inclusion
in a cable programme service of the performance.538 A person is deemed
to have an ‘exclusive recording contract’ with the performer if the person
is entitled under the contract to the exclusion of all other persons including
the performer to make the recordings being sold or let for hire, or shown
or played in public.539
Though the Copyright and Performance Rights Act does not define a
‘performer’, it does define ‘qualifying person’ to mean a person who is a
533
Part II of the Copyright, Designs and Patents Act, 1988.
534
Supra note 268.
535
Supra note 266.
536
S. 45 (1), Copyright and Performance Rights Act.
537
S. 45 (2), Copyright and Performance Rights Act.
538
Ibid.
539
S. 45 (3), Copyright and Performance Rights Act.
 RIGHTS IN PERFORMANCES 207

citizen or habitual resident of, or body corporate incorporated in Zambia

or another country which is a party to a relevant convention or treaty
relating to copyright to which Zambia is also a party.540 Furthermore, the
Act defines ‘qualifying performance’ as a performance given by a person
who is a citizen of, or habitual resident in, or which takes place in Zambia
or another country, which is a party to a relevant convention or treaty
relating to copyright to which Zambia is also a party.541

Qualification Requirement

Like copyright, the qualification requirement also exists for rights in

performances. The performances must be a qualifying performance, that
is a performance which takes place in a qualifying country or given by a
person who is a citizen of or habitual resident in a qualifying country.542
The qualifying country is Zambia or any other country which is party to
a relevant convention or treaty relating to copyright such as Berne
Convention and Rome Convention for the protection of performers,
producers of phonograms and broadcasting organisations. 543 The
performer’s right and recording right in relation to a performance shall
subsist for fifty years from the end of the calendar year in which the
performance takes place.544

Nature of Performer’s Rights

The Copyright and Performance Rights Act prohibits the assignment or

transfer of the performer’s right and the recording right. Section 46 (1)
of the Act provides that the performer’s right shall be a property right,
but shall not be assignable or transferable except on death by testamentary
disposition or by the operation of law. Recording right shall not be
assignable or otherwise transferable.545 However, this restriction does
not prevent or bar the owner of the recording to enter into a licensing
agreement.546

Rights Granted to Performers

The Copyright and Performance Rights Act grants to the performer the
following rights:

540
Ss 44 and 56, Copyright and Performance Rights Act.
541
Ibid.
542
Supra note 266.
543
Ibid.
544
S. 47, Copyright and Performance Rights Act.
545
S. 46 (2), Copyright and Performance Rights Act.
546
S. 46 (3), Copyright and Performance Rights Act.
208 INTELLECTUAL PROPERTY LAW

(i)reproduction right;547
(ii)
broadcasting live performance or inclusion in a live broadcast
in a cable programme service;548
(iii) distribution right;549
(iv) public performance right.550
In Performing Right Society Ltd v. Gillette Industries Ltd,551 plaintiffs
were the owners of the performing rights of five pieces of music, which
were broadcast by the BBC in their programme of ‘Music while you
work,’ such broadcast being for the purpose of diffusion in factories.
The defendants had a wireless installed in their factory with thirty-three
loud speakers and the broadcasts were heard in nineteen different
departments of the factory. The plaintiffs contended that such
performances of the said pieces of music were infringement of their
copyright in the music. The Court held that such performances constituted
performances in public and were, therefore, an infringement of the
plaintiffs’ rights.
Bennett, J. for the Court stated:

It is settled law that a man in control of a wireless receiving

set who tunes in his set and picks up and makes audible a
musical composition which is being broadcast, either by
the BBC or by anybody else, performs that musical
composition.552 I find it impossible to escape from the
conclusion that the owner of a receiving set who puts it
into operation causes an acoustic representation of a
musical work which is being broadcast to be given at the
place where the receiving set is installed and is therefore
himself performing or authorising the performance of the
musical work within the meaning of the Copyright Act,
1911.
It is quite plain upon the admitted facts in this case that
the defendants performed the five musical compositions
in question. The five musical compositions were broadcast
throughout the defendants’ factory; they were made audible
on every floor and to at least 600 people. The performances
were given for the purpose of refreshing, stimulating and
entertaining those who heard them. The performances were
all given for business reasons, namely, in order that the
547
Supra note 18.
548
Supra note 19.
549
Supra note 20.
550
Supra note 21.
551
[1943] Ch.
552
See Performing Right Society Ltd v. Hammond’s Bradford Brewery Co.; [1934] Ch. 121 CA.
 RIGHTS IN PERFORMANCES 209

defendants might get from their servants better service.

Without attempting to define anything, I think that when
you have got all those facts in combination, the conclusion
that the performances were not in private but were in public
is irresistible upon any reasonable interpretation of the
words ‘in public’. …Upon examining similar cases
(Jennings v. Stephens [1936] Ch. 469) I have to the clear
conclusion that these defendants when every day they
broadcast these half-hourly performances of ‘Music while
you work’ are giving performances in public and that any
item of music included in the programme is therefore being
performed in public. For these reasons, in my judgment,
the plaintiffs have established that their rights in the five
musical compositions have been infringed by the
defendants.

Infringement

A performer’s right is infringed whenever a performance is exploited

without the authorisation of the performer or whenever the performance
is recorded without the consent of the person who owns the exclusive
recording right. The consent of the owners of the right in the performance
is essential if one has to avoid the infringement.553 However, consent
given in respect of a particular use does not necessarily prohibit, by
implication, other uses unless it is shown that the new intended use raises
an implication to require further consent. Thus, in Grower v. British
Broadcasting Corporation,554 the BBC had made a recording of a
performance of ‘Hoochie Coochie Man’ by the Jimi Hendrix Experience
for the immediate purpose of broadcasting on a radio programme hosted
by Alexis Korner who had, at the invitation of Hendrix joined in the
performance, playing a guitar. It appeared that Korner had consented to
the making of the recording and the broadcasting of that recording. The
licence included a term that a Californian company obtain the consent of
any artists who had contributed to the recording before exploiting the
record. The claimants, the executors of Korner’s estate, sued BBC, as
joint tortfeasor, on the basis that the Californian company had exploited
the sound recording without their consent and that this was a breach of
the performer’s rights under the Copyright, Designs and Patents Act,
1988, Part II. It was held, inter alia, that the claimant would have to
establish that there was an implied term that the BBC would guarantee
that a licensee or assignee of the copyright in the sound recording would
553
Sections 48 & 49, Copyright and Performance Rights Act.
554
[1990] FSR 595.
210 INTELLECTUAL PROPERTY LAW

obtain the consent of all the performers, and neither implication was
necessary or reasonable in the circumstances.
The Copyright and Performance Rights Act provides that the
performer’s rights in a qualifying performance are infringed by a person
who, without the consent of the performer, does any of the following
acts in relation to the whole or any substantial part of the qualifying
performance:
(a) makes a recording directly from the live performance, other
than for that person’s private or domestic use;555
(b) broadcasts live, or includes live in a cable programme service;556
(c) makes a recording of the performance, other than for that
person’s private and domestic use;557
(d) shows or plays in public, or broadcasts or includes a cable
programme service, by means of a recording which was, and
which that person knows or has reason to believe was made
without the consent of the performer or holder of the recording
right;558
(e) imports into Zambia otherwise than for his private and domestic
use, or in the course of business possesses, sells or lets for hire,
offers or exposes for sale or hire, or distributes a recording of a
qualifying performance which was, and which that person knows
or has reason to believe was made without the consent of the
performer or holder of the recording right.559
Like copyright infringement, infringement of a performer’s right shall
be actionable in the court of law at the suit of the performer or his successor
in title. 560 Similarly, an infringement of a recording right shall be
actionable in the court at the suit of the holder of the recording right.561
It should be sated that in an action for infringement of performer’s right
and recording right, all such relief by way of damages, injunctions,
accounts of profits or otherwise shall be available to the plaintiff as is
available in respect of the infringement of any other property right.562

Criminal Offences

In addition to civil remedies, the Copyright and Performance Rights Act

provides for criminal offences in respect of the performer’s right or holder
of the recording right. The Act provides that any person who does such
555
Supra note 18.
556
Supra note 19.
557
S. 49 (1), Copyright and Performance Rights Act.
558
S. 48 (2) & 49 (2), Copyright and Performance Rights Act.
559
S. 48 (3) & 49 (3), Copyright and Performance Rights Act.
560
S. 51 (1), Copyright and Performance Rights Act.
561
S. 51 (2), Copyright and Performance Rights Act.
562
S. 51 (3), Copyright and Performance Rights Act.
 RIGHTS IN PERFORMANCES 211

act which constitutes an infringement of performer’s right or recording

right in relation to a performance knowing or having reason to believe
that the act would constitute such an infringement shall be guilty of an
offence, and shall be liable on conviction to a fine not exceeding twenty
thousand penalty units or to imprisonment for a term not exceeding one
year or to both.563
The criminal offences committed under the Act in relation to the
performance include:
(a) making for sale or hire;
(b) importing into Zambia, otherwise than for private and domestic
use;
(c) in the course of business possesses, selling or letting for hire,
offering or exposing for sale or hire;
(d) distributing;
a recording of a performance which the person knows or has reason to
believe was made without the consent of the performer or holder of the
recording right.564
The Copyright and Performance Rights Act makes it an offence,
punishable by either a fine or imprisonment, or both for a person who
falsely represents himself that he is authorised to give consent in relation
to the performance.565 Such person, however, shall not be liable if he
proves that he believed on reasonable grounds that he had the represented
authority.566

Defences Against Alleged Infringement

The Copyright and Performance Rights Act provides defences to

infringement of performer’s right. The defences available for alleged
performer’s right infringement are similar in nature to those available to
copyright infringement. Section 50 (1) of the Act provides that, the
following acts shall not constitute infringement of performer’s right or
recording right:
(a) fair dealing with a performance or recording for private study
or for the purpose of research done by an individual for his
personal purposes otherwise than for profit;567
(b) fair dealing with a performance or recording for the purposes
of criticism or review, whether of that performance or any
other performance, provided there is a sufficient
acknowledgement;568
563
S. 52, Copyright and Performance Rights Act.
564
S. 48, Copyright and Performance Rights Act.
565
S. 53 (1), Copyright and Performance Rights Act.
566
S. 53 (2), Copyright and Performance Rights Act.
567
S. 50 (1)(a), Copyright and Performance Rights Act.
568
S. 50 (1)(b), Copyright and Performance Rights Act.
212 INTELLECTUAL PROPERTY LAW

(c) fair dealing with a performance or recording for the purposes

of reporting current events by broadcasting or by inclusion in
a cable programme service or by its use in an audiovisual
work;569
(d) the recording of a performance or reproduction of a recording
for the purpose of judicial proceedings, or of any other
proceedings before a tribunal established by law, or for the
purposes of a report of judicial proceedings or any other such
proceedings;570
(e) the incidental inclusion of a recording in an audiovisual work,
sound recording, broadcast or cable programme;571
(f) the publishing, broadcasting, inclusion in a cable program
service, or the communication to the public by any other means
of anything the making of which was not an infringement of
performer’s right or recording right.572
It is imperative to state that an act conflicts with the normal commercial
exploitation of a performance, or unreasonably prejudices the legitimate
commercial interests of the performer or holder of a recording right in a
work, shall not be treated as fair dealing.573

569
S. 50 (1)(c), Copyright and Performance Rights Act.
570
S. 50 (1)(d), Copyright and Performance Rights Act.
571
S. 50 (1)(e), Copyright and Performance Rights Act.
572
S. 50 (1)(f), Copyright and Performance Rights Act.
573
S. 50 (2), Copyright and Performance Rights Act.
 213

PART III: PATENTS

214 INTELLECTUAL PROPERTY LAW
 215

Chapter Fourteen

BACKGROUND AND BASIC PRINCIPLES

Introduction

A patent is an exclusive right granted for the protection of an invention,

which is a solution to a specific problem in the field of technology. An
invention may relate to a process, such as a new method of brewing beer,
or it may relate to a product such as a new medicine for curing a particular
illness like cancer or AIDS.
For the invention to be protected by a patent it must satisfy some
conditions, namely, it must be new or novel; it must involve an inventive
step, that is, it must not be obvious to a person skilled in that art; and it
must be capable of industrial application and must fall within the
patentable subject matter. The grant of a patent gives the inventor a
monopoly to work the invention to the exclusion of the others for the
duration of the invention, which is sixteen years. In return for this
monopoly enjoyed by the inventor, he is required to disclose details of
the invention so that any person skilled in the particular art or a person
having knowledge and experience of the science or technology, would
be able to work the invention.
Though a patent gives monopoly to the inventor, there are a number
of checks and balances that are designed to prevent the owner of the
patent from abusing his rights. For instance, compulsory licences may
be available after three years of the grant of a patent,574 or it may be
indicated on the register of patents that a licence is available as of right.
A compulsory licence would be suitable if the patent was not being worked
or if the proprietor was limiting supply of the patented product so as to
maintain unrealistically high prices.
Patents, like any other intellectual property rights, can be assigned
and licences may be granted in respect of them. The owner of a patent is
the person who is registered as the proprietor and this may include the
inventor, an assignee or a legal representative.575 A large number of
inventions are made by employees and normally in such cases the
employer will be the proprietor though the inventor will be named as
such. If the invention turns out to be of outstanding benefit to the employer,
the employee may apply for a compensation award.576
574
S. 37 Patent Act, Chapter 400 of The Laws of Zambia.
575
S. 11 Patent Act.
576
S. 48 Patent Act.
216 INTELLECTUAL PROPERTY LAW

It should be noted that whilst the State may grant patent rights, it does
not automatically enforce them. Thus, it is up to the owner of the patent
to bring an action for any infringement of his patent rights. Once the
patent expires, which is normally after sixteen years, the invention falls
into the public domain and anyone is free to make use of it or exploit it
without infringement.

History of Patents

The history of patent law in Zambia traces its origins from the patent
laws of the United Kingdom. This is because Zambia, as a former colony
of the United Kingdom, laws relating to patents that were passed in the
United Kingdom were extended or applied to Zambia like any other
former colony of the United Kingdom. Section 2 of the English Law
(Extent of Application) Act Chapter 11 of the Laws of Zambia provides
that subject to the provisions of the Constitution of Zambia and any other
written law, the common law, and doctrine of equity, and the statutes
which were in force in England on the 17th August, 1911 (being the
commencement of the Northern Rhodesia577 Order in Council, 1911);
and any statute of later date in force in England, now applied to the
Republic, or which hereafter shall be applied thereto by any Act or
otherwise shall be in force in the Republic.
The origins of patents for invention are not clear and no one country
can claim to have been the first in the field with a patent system. However,
Britain does have the longest continuous patent tradition in the world,
which traces its origins from as far back as the 15th century, when the
Crown started making specific grants of privilege to manufacturers and
traders.578 Such grants were signified by Letters Patent, open letters
marked with the King’s Great Seal. The earliest known English patent
for invention was granted by Henry VI to Flemish-born, John of Utynam
in 1449. The patent gave John a twenty-year monopoly for a method of
making stained glass, required for the windows of Eton College that had
not been previously known in England.579
With the increase in inventions that were created and demand by the
inventors to stop others from copying their inventions, as well as the
desire by the Tudor Monarchs to raise revenue through the system of
monopolies, it became a common practice for the Crown to grant
monopolies for patents for inventions, including traders and
manufacturers. Thus, from 1561 to 1590, Elizabeth I granted about fifty
patents whereby the recipients were enabled to exercise monopolies in
577
Now known as Zambia.
578
www.patent.gov.uk.
579
www.patent.gov.uk/patent.
 BACKGROUND AND BASIC PRINCIPLES 217

the manufacture and sale of commodities. However, the Queen did, in

certain cases refuse to grant patents. For instance, in 1596 Sir John
Harrington’s request for a patent of his design for a water closet was
rejected on the grounds of propriety.580
Under both Elizabeth I and her successor James I, the granting of
monopolies for particular commodities became increasingly subject to
abuse. Therefore, in 1610, due to mounting judicial criticism and public
outcry, James I revoked all previous patents and declared in his Book of
Bounty that ‘monopolies are things contrary to our laws’ and ‘we expressly
command that no suitor presume to move us’. He stated an exception of
this ban for ‘projects of new invention so they be not contrary to the law,
nor mischievous to the State’.581 It can be stated that the doctrine of
public interest was therefore introduced into the patent system at a very
early date and the words of James I against monopolies were included
into the Statute of Monopolies of 1624.
Section 6 of the Statute of Monopolies stated:

provided…that any declaration before mentioned shall not

extend to any letters patent and grants of privilege for the
term of fourteen years or under…of the sole working or
making of any manner of new manufacturers within the
realm, to the true and first investor and inventors of such
manufactures which others at the time of making such
letters patent and grants shall not use, so as also they be
not contrary to the law, or mischievous to the State, by
raising prices of commodities at home, or hurt of trade, or
generally inconvenient…582

After the enactment of the Statute of Monopolies, the patent system

developed through the work of lawyers and judges in the courts without
government regulation.
During the reign of Queen Anne, the law officers of the Crown
established as a condition of the grant that ‘the patentee must by an
instrument in writing to describe and ascertain the nature of the invention
and the manner in which it is to be performed’.583 Thus, James Puckle’s
1718 patent for a machine gun was one of the first to be required to
provide a ‘specification’, as this instrument became known. Besides, the
patent of Arkwright for spinning machines was declared void for lack of
an adequate specification in 1785 after it had been in existence for ten
years.584
580
Ibid.
581
Ibid.
582
Supra note 10, at pp. 268 - 269.
583
Supra note 579.
584
Ibid.
218 INTELLECTUAL PROPERTY LAW

It is worth noting that though Britain’s patent system served the country
well during the industrial revolution. However, by mid-19th century it
had become extremely inefficient and expansive. Any prospective patentee
had to present a petition to no less than seven offices and at each stage to
pay certain fees. To address the public concern over this state of affairs,
the Patent Law Amendment Act of 1852, apart from establishing the
patent office also completely overhauled the British patent system and
laid down a simplified procedure for obtaining patents for inventions.
In 1883, the Patents, Designs and Trademarks Act was passed which
gave effect to the reciprocity provisions in the Paris Convention for the
protection of industrial property. It also replaced the issuing of separate
patents for each nation of the Paris Union and instead a single UK patent
was published. The 1883 Patent, Designs and Trademarks Act also
substituted the seal of the patent office for the Monarch’s great seal.585 It
also established the office of the Comptroller General of Patents and a
staff of patent examiners was brought into being to carry out a limited
form of examination, mainly to ensure that the specification described
the invention properly, but without any investigation into novelty.
An important milestone in the further development of the British patent
system was the Patent Act of 1902, which instituted a limited investigation
into the novelty of the invention before a patent was granted. This required
patent examiners to perform a search through the UK specifications
published within fifty years of the date of the application.
The Zambian Patents Act,586 which was passed on 1 April 1958, draws
its foundation on the United Kingdom patent system. The Patents Act
provides, inter alia, for the establishment of the patent office, procedure
for the registration of both local and foreign patents, rights granted to the
owner of the patent as well as the limitations on the said rights,
infringement and related offences.

Rationale of Patents

There are a variety of reasons advanced for the justification of the patent
system, and notable among them include:

(a) Incentive Theory

Developing an invention calls for significant investment in terms of

capital, time, labour and equipment. In order to recoup and get a fair
return on the investment as well as the risk taken to develop the invention,
the inventor should be given a limited monopoly right to use or exploit
the invention to the exclusion of all others. This monopoly gives the
inventor the incentive to invest more in developing other inventions which
585
Supra note 10, at p. 269.
586
Chapter 400 of the Laws of Zambia.
 BACKGROUND AND BASIC PRINCIPLES 219

are of benefit to society. It also enables him to prevent his invention from
‘free-riding’ by his competitors. A free-rider benefits from the work of
others without bearing the cost of making a creative work or invention.
By limiting free-riding, patent laws encourage investment of finance and
research efforts into long term outcomes.

(b) Reward Theory

Linked to the incentive theory is the reward theory. The grant of patents
to inventors is intended to encourage research, innovation and
development for the benefit of the society. It is intended to help them
benefit from their inventions by rewarding them for their ingenuity and
work put into developing their product or process.

(c) Contract Theory

An inventor is granted a monopoly, through a patent, for a limited duration

on condition that the inventor will disclose the details of his invention to
the public. This encourages the publication and dissemination of
information, which otherwise would not have been available to the public,
save for the monopoly granted to the inventor. Details of the patents are
published and are available to the public for inspection, and when the
patent expires anyone is free to either make the product or use the process.

(d) Natural Law/Moral Right

A patent granted for an invention is like any other property right which is
attached to the inventor and also capable of being owned. Therefore,
individuals who have been granted patents for their inventions have a
right of property in their inventions and this right should be protected
from being stolen or usurped by others. In short, the law should provide
reward for the inventor and enable him to control the use or exploitation
of his invention, and to prevent others from taking unfair advantage of
his efforts.587

(e) Stimulate Economic Development

The rationale for patents is that they stimulate economic and technical
development and promote competition by creating a financial motivation
for invention.588 This is evidenced in terms of manufacturing enterprises
established and respective jobs created; the products put on the market
and sales generated by the said products; amount of royalties and other
587
Supra note 10, at p. 272.
220 INTELLECTUAL PROPERTY LAW

revenues from licences granted for use of inventions as well as the huge
budgets for research and development (R&D) by enterprise.

(f) Business Asset

A patented invention is a business asset. Where the patentee chooses not

to exploit the invention by himself, he has the option of either selling it
or licensing it to another enterprise to commercialise it, thereby earning
some revenues in form of royalties. Furthermore, the patentee may, where
the patent has commercial value, use it to obtain funding from financing
institutions.
In Chiron Corporation v. Organon Teknika Limited (No.10),589 Aldous,
J. in justifying the patent system, stated that nearly every country had
chosen to adopt a patent system because:

…it is generally accepted that the opportunity of acquiring

monopoly rights in an invention stimulates technical
progress in at least four ways. First, it encourages research
and invention; secondly, it induces an inventor to disclose
his discoveries instead of keeping them a secret; thirdly, it
offers a reward for the expense of developing inventions
to the state at which they are commercially practical and,
fourthly, it provides an inducement to invest capital in new
lines of production which might not appear profitable if
many competing producers embarked on them
simultaneously.
It is inherent in any patent system that a patentee will
acquire a monopoly giving him a right to restrict
competition and also enabling him to increase or at least
maintain prices. That affects the public and is contrary to
the public interest, but it is the recognised price that has
been accepted to be necessary to secure the advantages to
which I have referred.

It should be stated that in considering the justification of patents stated

above, it is important to bear in mind that patents also, attract criticisms
more especially when the patent rights loudly conflict with the public
interest right such as people’s access to cheap and affordable medicines.590

588
Supra note 1, at pp. 78 - 81.
589
[1995] FRS 325 at 332.
590
see Implications of TRIPS Agreement on Access to Cheaper Pharmaceutical Drugs by Developing Countries:
Case Study of South Africa v The Pharmaceutical Companies, H. Mwakyembe and G. M. Kanja, Zambia Law
Journal, vol. 34, 2004, pp. 111 - 147.
 BACKGROUND AND BASIC PRINCIPLES 221

These criticisms of patents include, the arguments that patents:

(a) create unjustifiable monopolies to companies, which often
can be abused, especially where the patentee prevents or deters
potential competitors from developing products similar to his
own or threaten them with legal action;
(b) increase or force up the price of essential goods, such as
pharmaceuticals, and making them effectively unobtainable,
or alternatively prevent anyone from getting access to or
obtaining the product produced or sold cheaply in another
market; and
(c) block access to new technology especially by developing
countries.
To address some of the concerns raised by the monopolistic or exclusive
nature of patent rights, the Patent Act has put some limitations on the
said monopoly right of patents. These include:
(i) grant of compulsory licences in case of abuse or insufficient
use of patent rights591;
(ii) endorsement of patent ‘licences of right’592;
(iii) use or exploit patents for services of the State593;
(iv) use or exploit the patents by the State during ‘emergency’594;
(v) prohibition of certain restrictive conditions in contracts to sell,
lease or licence to use or work either the product or process
patent.595

591
Supra note 574.
592
S. 38 and s. 35.
593
S. 40.
594
S. 41.
595
S. 49.
222 INTELLECTUAL PROPERTY LAW
 223

Chapter Fifteen

SUBJECT MATTER AND CONDITIONS OF

PATENTABILITY

Introduction

A patent is a document issued, upon application, by a patent office which

describes the invention and grants the patentee, subject to the conditions
attached to the patent, full power, sole privilege and authority by himself,
his agents and licensees during the term of the patent to make, use, exercise
and vend the patent within Zambia, in such a manner as he sees fit, so
that he enjoys the whole profit and advantage accruing by reason of the
invention during the term of the patent.596
An invention, which is a solution to a technical problem, may relate
to either a product or a process. Section 2 of Patent Act defines invention
as any new and useful art (whether producing a physical effect or not),
process, machine, manufacture or composition of matter which is not
obvious, or any new and useful improvement which is not obvious,
capable of being used or applied in trade or industry.
It must be sated that not every new product or process qualifies as an
‘invention’. It is also not enough to have created an ‘invention’ to be
eligible for a patent. It has to be an invention that passes certain legal
tests, that is, tests for ‘patentability’.
For an invention to be eligible for patent protection, it must satisfy
the following conditions:
(i) it must be novel (new);
(ii) it must involve an inventive step (be non-obvious);
(iii) it must be capable of industrial application; and
(iv) it must fall within patentable subject matter.597

Novelty

An invention which is new or ‘novelty’ exists if there is a difference

between the invention and the current knowledge or the ‘prior art’. The
claimed invention must not be anticipated by the prior art at the effective
date of the patent application to prevent novelty from being destroyed.
‘Prior art’ is all the knowledge that existed before the relevant filing or
effective date of a patent application, whether it existed by way of written
or oral disclosure.
596
Ss 25 and 28 (4) Patents Act.
597
S. 2 Patents Act.
224 INTELLECTUAL PROPERTY LAW

The importance and requirement for novelty is best summarised in

the following passage:

An inventor does not become entitled to a patent merely

by exercising his creative faculties in the production of an
art, that is, process or instrument. The consideration for
the grant of his exclusive privilege is the benefit which he
confers upon the public by placing in their hands a means
through the use of which their wants may be supplied. If
the same means have already been made available to them
by the inventive genius of a prior inventor, or if though
they receive it first from him, it is incapable of useful
application, no benefit results to them from his inventive
art and there is no consideration for his patent. When this
want of consideration becomes apparent before a patent
has been granted it will be refused; when afterward, the
patent is defeated.598

Section 2 of the Patents Act defines the ‘invention’ to be new if on or

before the effective date of patent application the invention was not:
(a) known or used anywhere…599;
(b) worked anywhere other than by way of reasonable technical
trial or experiment by the applicant or any person or persons
from or through whom such applicant has derived his right or
title600;
(c) described in a patent for public inspection… and bearing a date
of less than fifty years prior to such effective date601;
(d) described in writing in any publication of which there was a
copy anywhere… at the effective date of the application, or in
a publication printed and published… less than fifty years prior
to such date602;
(e) claimed in any complete specification for a patent lodged though
not available to public inspection at the effective date of the
application…603;

Availability to the Public

An invention will not qualify for a patent if it relates to an invention that

is anticipated, that is, already published or made available to the public.
Thus, novelty of the invention will be destroyed if the information about
nd
598
Merges, R.P., Patent Law and Policy: Cases and Materials (2 ed.). Michie Law Publishers, pp. 221 - 222.
599
Supra note 697.
600
Ibid.
601
Ibid.
602
Ibid.
603
Ibid.
 SUBJECT MATTER AND CONDITIONS OF PATENTABILITY 225

the invention or the invention has been published, performed or exhibited

in public, before the effective or priority date. Similarly, an earlier patent
application that discloses the invention, even if it was actually published
at the effective date of the later application, destroys the novelty of the
later patent application for the same invention, whether or not the applicant
knew about the earlier publication or previous patent.
The requirement of novelty exists to ensure that public interest is not
prejudiced by the grant of the patent over something that is already in the
public domain. This is in line with the purpose of the patent system,
which exists to encourage fresh innovation.
An invention is deemed to be in the public domain if it is already
described in any published form or used in any sense in a public forum.
The requirement of novelty is tested by an examination of current
knowledge or the existing ‘prior art’ or ‘state of the art’. If an examination
of the prior art reveals that the invention has been anticipated by the
publication of its contents, in whole or in part, then no patent will be
granted.
Section 2 of the Patents Act defines ‘published’ as follows:

published means made available to the public and a

document shall be deemed, for the purposes of this Act, to
be published if it can be inspected as of right by members
of the public, whether upon payment of a fee or otherwise.

The courts have considered the meaning of the term ‘available to the
public’. In Fomento v. Mentmore,604 it was held that an invention is novel
if it has not been anticipated. The test of whether or not the invention has
been anticipated is whether or not it was available publicly before the
priority date. In this case the pursuers owned a patent granted in 1945 for
the manufacture of a particular type of improved ballpoint pen. The
patented process was designed to help ink flow more freely to the nib of
the pen. A revocation of the patent was sought on the basis of prior use.
It was alleged that making pilot models of the pen available in the 1944
to 1945 era, invalidated the patent, as the invention was available to the
public. It was held however, that mere use did not disclose how the pen
worked since the patent was in respect of a system which allowed a more
regular flow of ink. The facts showed that no one could determine how
the new ink flow system worked simply by using the pen or by watching
a demonstration and therefore, the patented system was not anticipated.
Similarly, in Lux Traffic Signals v. Faronwise & Pike Signals,605 it
was stated that if a prototype of an invention used in public and its internal
604
[1956] RPC 87.
605
[1993] RPC 107.
226 INTELLECTUAL PROPERTY LAW

working methods can be deduced by examination of this prototype, the

invention will lack novelty. In this case, the patent was in respect of
traffic light control systems, one system extended the green period by an
additional time when it detected the movement of a vehicle crossing to
ensure that opposing traffic was held by a red light. The purpose of the
invention was to provide a pause between the green light in one direction,
and a red light timing green in an opposing direction. The prototype
lights were demonstrated for development purposes in public. The
defendants claimed that, had a skilled engineer examined the lights system,
he would have discovered how it worked.
Aldous, J. considered that for an invention to be anticipated it must
be possible for the public to discover how to make or obtain the invention.
He stated:

Further, it is settled law that there is no need to prove that

anybody actually saw the disclosure provided the relevant
disclosure was in public. Thus, an anticipating description
in a book will invalidate a patent if the book is on the shelf
of a library open to the public, whether or not it was situated
in a dark and dusty corner of the library.606

The fact that the system was made publicly available and that if a skilled
person had examined it he would have seen how it worked, rendered the
relevant claim in the patent to be invalid on the grounds of lack of novelty.
In Windsurfing International Incorporation v. Tabur Marine (GB)
Limited, 607 the plaintiffs were the first manufacturers of the first
commercial windsurfer/sailboard and patented their design for sailboard
with a Bermuda rig and a wishbone spar in the UK and elsewhere. In this
case, the plaintiffs sued another company for patent infringement as a
result of making and selling a similar sailboard in the UK.
The validity of a patent can be challenged by an alleged infringer and
Tabur Marine based their challenge on the fact that in 1958, at least ten
years before the grant of a patent, a 12-year-old boy called Peter Chilver,
had built an early version of a sailboard which was evidenced by film
footage taken off the coast of Hayling Island. They alleged that this proved
that the subject of the plaintiff’s patent had been anticipated.
The court upheld Tabur Marine’s claim that the boy’s invention
predated the plaintiff’s application for a UK patent and the patent was
rendered invalid notwithstanding that Chilver’s sailboard was of a slightly
different design.

606
Ibid., at p. 133.
607
[1985] RPC 59.
 SUBJECT MATTER AND CONDITIONS OF PATENTABILITY 227

Disclosure

If there is any disclosure of the invention before the effective or priority

date, this may be fatal to the patent application as novelty will be
destroyed. Thus, in General Tyre and Rubber v. Firestone Tyre and Rubber
Company,608 the plaintiffs had patented a process for tyre manufacture
by combining a mixture of synthetic rubber, oil and carbon black. It was
held that this invention was anticipated by reason of the publication of
three earlier specifications in an article published in the journal, Rubber
Age. The Court of Appeal considered the evidence of earlier
documentation and articles and considered that:

To anticipate the patentee’s claim, the prior application

must contain clear and unmistakable directions to do what
the patentee claims to have invented. A signpost, however
clear, upon the road to the patentee’s invention will not
suffice. The prior inventor must be clearly shown to have
planted his flag at the precise destination before the
patentee.

Also, in Pall Corporation v. Commercial Hydraulics (Bedford) Limited,609

the patentee displayed samples of membranes in confidence to a number
of persons who were advised that the samples were being supplied for
experimental purposes only and on a confidential basis. It was held that
this did not constitute making the invention ‘available to the public’. If
an inventor only discloses inventions to those who are under an obligation
of confidence, there will be no question of anticipation of the invention.
However, in Monsanto Company (Brignac’s) Application,610 where a
patent was being sought for a process for colouring nylon was successfully
opposed on the grounds that thirty or forty copies of a brochure giving
information about the process had been given out to a salesman employed
by the patentees and these in turn, it was expected, would be passed on to
the potential customers. The court held that this amounted to publication
disclosure of invention, hence destroying the novelty.
In Merrell Dow Pharmaceuticals Incorporation v. H.N. Norton &
Company Limited. 612 Merrell Dow had held a patent on the drug
Terfenadine, which had been highly successful as an antihistamine
treatment. In the body, Terfenadine was in fact metabolised into an acid
metabolite and it was this substance that was almost exclusively
608
[1971] RPC 457.
609
[1990] FSR 329.
610
[1971] RPC 153.
611
[1996] RPC 76, HL.
612
Supra note 597 (see definition of ‘new’ (b)).
228 INTELLECTUAL PROPERTY LAW

responsible for its effectiveness. Nine years before the end of the
Terfenadine patent, Merrell Dow patented the acid metabolite.
After the first patent expired, the respondents sold Terfenadine. Merrell
Dow alleged that they were infringing the acid metabolite patent by
supplying consumers with the essential means of making of the acid
metabolite within the human body. The respondents argued that the
making of the acid metabolite within the human body by the ingestion of
Terfenadine formed part of the state of the art prior to the grant of the
patent, and therefore the invention was not ‘new’ within the meaning of
section 2 of the Patents Act 1977. They argued that the invention had
previously been made available to the public, first, though its use (by
persons taking Terfenadine) and, secondly, through disclosure in the
specification for the Terfenadine patent.
Lord Hoffman, for the House of Lords, held that there was no
anticipation through use, but found anticipation by disclosure. On finding
that there was anticipation by disclosure, Lord Hoffman stated:

My Lords… section 2 (2) of the Patents Act, 1977 does

not purport to confine the state of the art about products to
knowledge of their chemical composition. It is the
invention which must be new and which must therefore
not be part of the state of the art. It is therefore part of the
state of the art if the information which has been disclosed
enables the public to know the product under description
sufficient to work the invention.
In this case, knowledge of the acid metabolite was, in
my view, made available to the public by the Terfenadine
specification under the description ‘a part of the chemical
reaction in the human body produced by the ingestion of
the Terfenadine and having an antihistamine effect’. Was
this description sufficient to make the product part of the
state of the art? For many purposes, obviously not. It would
not enable anyone to work the invention in the form of
isolating or synthesising the acid metabolite. But for the
purpose of working the invention by making the acid
metabolite in the body by ingesting Terfenadine, I think it
plainly was. It enabled the public to work the invention by
making the acid metabolite in their livers. The fact that
they would not have been able to describe the chemical
reaction in these terms does not mean that they were not
working the invention. Whether or not a person is working
a product invention is an objective fact independent of
what he knows or thinks about what he is doing…. The
 SUBJECT MATTER AND CONDITIONS OF PATENTABILITY 229

Amazonian Indian who treats himself with powdered bark

for fever is using Quinine, even if he thinks that the reason
why the treatment is effective is that the tree is favoured
by the gods. The teachings of his traditional medicine
contain enough information to enable him to do exactly
what a scientist in the forest would have done if he wanted
to treat a fever but had no supplies of Quinine sulphate.
The volunteers in the clinical trials who took Terfenadine
were doing exactly what they would have done if they had
attended Merrell Dow’s Strasbourg symposium and
decided to try making the acid metabolite in their livers by
ingesting Terfenadine.
It may be helpful at this point to highlight the similarities
and the distinctions between the case for anticipation by
use, which I have rejected, and the case for anticipation by
disclosure, which I have accepted. In both cases, no one
was aware that the acid metabolite was being made. In the
case of anticipation by use, however, the acts relied upon
conveyed no information which would have enabled
anyone to work the invention, that is, to make the acid
metabolite. The anticipation in this form relies solely upon
the fact that the acid metabolite was made, as the
anticipation in Bristol-Meyers Company (Johnson’s)
Application [1975] RPC 127 relied solely upon the fact
that Ampicillin Trihydrate had been made and sold to the
public. It disavows any reliance upon extraneous
information, such as the formula for making Terfenadine
and the instruction to take it for its antihistamine effect.
Anticipation by disclosure, on the other hand, relies
upon the communication to the public of the information
which enables it to do an act having the inevitable
consequence of making the acid metabolite. The
Terfenadine specification teaches that the ingestion of
Terfenadine will produce a chemical reaction in the body
and for the purposes of working the invention in this form;
this is sufficient description of the making of the acid
metabolite. Under the description, the acid metabolite was
part of the state of the art.

Exceptions

The Patents Act provides a number of exceptions to allow the novelty

requirement of a patent not to be destroyed either because the patent has
230 INTELLECTUAL PROPERTY LAW

been made available to the public or has been disclosed or used. These
exceptions available are as follows:
(a) where a patent is worked or used by way of reasonable technical
trial or experiment by the applicant or any person or persons
from or through whom such applicant has derived his right or
title;612
(b) applications for patents relating to the Paris Convention for the
protection of industrial property if lodged in Zambia within
twelve months after the effective or priority date of the first
application for protection in the first convention country in which
the application was made;613
(c) where an invention is communicated through any agreement or
arrangement made by or on behalf of the government of Zambia
with the government of any country for the supply or mutual
exchange of information or articles relating to the invention, and
as a result of such agreement or arrangement the invention is
published, made, used, exercised or vended, or an application
for a patent has been granted on such an application;614
(d) where the invention applied for was published, used or known
prior to the effective or priority date of the application and the
applicant proves that the publication or use was made without
his knowledge or consent, and that the matter published or used
was derived or obtained from him.615

Inventive Step

Not everything that is new is patentable. The next requirement that the
invention must satisfy in order for it to qualify for patentability is that it
must involve an inventive step. This does not require an invention to be
revolutionary, but simply that the subject matter of the patent is not an
obvious or routine development.616
An invention involves an inventive step if it would not have been
obvious to the person skilled in the art at the priority or effective date of
the application for the patent, in view of the common knowledge of the
person skilled in the art. The key issues therefore, are whether the person
skilled in the art would find the results achieved ‘surprising’ or unexpected
or mere routine and what is considered to be ‘common general
knowledge’.
The Patent Cooperation Treaty guidelines provide that in assessing
inventive step or non-obviousness, the question is whether:
613
S. 8, Patents Act.
614
S. 10, Patents Act.
615
Ibid.
616
Supra note 597.
 SUBJECT MATTER AND CONDITIONS OF PATENTABILITY 231

At the relevant date of the claim, it would have been

obvious to a person skilled in the art to arrive at something
falling within the terms of the claim having regard to the
art known at that time…. The term ‘obvious’ means that
which does not go beyond the normal process of
technology but merely follows plainly or logically from
the prior art, that is something which does not involve the
exercise of any skill or ability beyond that to be expected
of the person skilled in the art.

In William v. Nye,617 the plaintiff patented a machine for making sausages

which was in effect a combination of a machine and a filling machine,
both of which were old. He brought an action for infringement against
the defendant who put in issue the validity of the patent on the ground
that the alleged invention consisted simply in joining two well-known
machines, and, therefore, lacked subject matter.
Lindley, L.J. in holding that the patent must be held invalid stated as
follows:

I also think that, having regard to Gilbert and Nye’s patent,

the present appeal cannot be supported. Gilbert and Nye’s
patent consisted of two things: first of all, there was the
cutting part; and then there was the filling part, that the
filling part being a screw which operated upon the cut meat
and forced it along into the skin which had to be filled.
Donald improved the cutting part. He did nothing to the
filling part, but left it out. Therefore, what has the plaintiff
done? He was simply taken, as far as I can see, Gilbert and
Nye’s invention, and substituted Donald’s cutter. That is
the whole of what he has done. I do not think a patent can
be granted for that considering that the object was perfectly
well known; that the utility of the forcing nozzle was
known; that the object of it had been attained before, and
there is nothing which amounts to what is understood by
an invention.

Similarly, in Pfizer Limited’s Patent, where the patented related to the

drug Viagra used to treat impotence in men. Laddie, J. held that it lacked
inventive step, inter alia, on the ground that it was obvious to attempt to
administer known inhibitors used to treat male impotence in a more
desirable way that is, orally.
617
(1890) 7 RPC 62, CA.
232 INTELLECTUAL PROPERTY LAW

Person Skilled in the Art

As regards the ‘person skilled in the art’, the Patent Cooperation Treaty
guidelines provide that:

The person skilled in the art should be presumed to be an

ordinary practitioner aware of what was common general
knowledge in the art at the relevant date. He [sic] should
also be presumed to have had access to every thing in the
‘prior art’, in particular, the documents cited in the
International Search Report, and to have at his disposal
the normal means and capacity for routine experimentation.
If the problem prompts the person skilled in the art to seek
its resolution in another technical field, the specialist in
that field is the person qualified to solve the
problem…There may be instances where it is more
appropriate to think in terms of a group of persons, for
example, a research or production team, than a single
person. This may apply, for example, in certain advanced
technologies such as computers or telephone systems and
in highly specialised processes such as the commercial
production of integrated circuits or of complex chemical
substances.

Factors to Consider when Determining Inventive Step

It is submitted that the question of assessing whether an invention is

obvious or not, or is sufficiently inventive to have an inventive step is
often not easy to determine. Each case is decided according to the specific
situation of the invention and technology in question. However, there are
some general principles that have been applied, and these include, inter
alia:
(a) Providing unexpected results: if the invention produces an
outcome that goes against the normal expectations at the time,
and confounds conventional thinking, then it is more likely to
have an inventive quality.
(b) Solving a long-standing problem: if the problem that the
invention claims to solve has been identified for some time,
but has resisted solution, then this raises the likelihood that the
invention claimed has a true inventive step. If it were obvious,
then the long-standing pressure to produce this outcome could
have been expected to deliver the solution earlier.
 SUBJECT MATTER AND CONDITIONS OF PATENTABILITY 233

(c) Unrecognised problem: if the invention in question solves a

previously unrecognised problem then this may add weight to
a claim for non-obviousness.
(d) Nature of the field of technology: the area of technology, and
the general nature of the innovative process in that field at the
relevant time, may influence judgments as to what is obvious.
The issue concerning factors to be taken into account when determining
whether or not an invention has an inventive step was considered by
Laddie, J. in Herbaman v. Jackel International Limited,618 Laddie, J. set
out a list of nine factors, which he admitted was not an exhaustive list, to
be considered when determining whether there was an inventive step.
These factors included:
(a) The problem addressed by the claimed invention.
(b) The period of time that problem had existed.
(c) The significance of the problem.
(d) How widely known the problem was and how many were
likely to have been seeking a solution.
(e) The prior art known to those seeking a solution.
(f) Alternative solutions put forward before the publication of
the patent.
(g) What, if any, factors may hold back exploitation of the
solution even if it was technically obvious.
(h) How well was the patentee’s development received? and
(i) The extent to which it could be shown that the commercial
success was due to the technical merits of the development
because it solves a problem.

Tests for Inventive Step

The test for obviousness was postulated by Oliver, L.J. in Windsurfing

International Incorporation v. Tabur Marine (Great Britain) Limited.619
In that case the patent for a windsurfer/sailboard was attacked as obvious
using two pieces of prior art namely (i) an article by Darby in a sailing
magazine describing the same concept, save that the board had been fitted
with a square sail; and (ii) use by Chilvers of a home-built craft for two
summers at Hayling Island, which embodied the same concept, save that
the booms were straight, at least when in use.
The Court of Appeal found that though the patentee had carried out
improvements on the patent, it was not sufficient to gain the protection
of a patent because there was no inventive step in making an improvement
that was considered as an obvious make.
618
[1995] FSR 683.
619
Supra note 607.
234 INTELLECTUAL PROPERTY LAW

Oliver, L.J. for the Court of Appeal said:

As regards the first step, we respectfully agree with the

learned Judge that the inventive concept of the patent is
the free-sail concept. It is that which constitutes the essential
difference between the patent in suit and other conventional
vehicles propelled by sail. Going back to the priority date,
anyone familiar with sailing and sailing craft would have
known, as part of his general knowledge, the difference
between square sail and Bermuda rigs and the
disadvantages as regards maneuverability presented by the
former. He would also be familiar with twin booms arcuate
in shape known as ‘wishbone’ booms which, though not
in wide use in the 1960s, were well known to anyone
interested in constructing light craft.
Darby’s article disclosed to persons knowledgeable in
the art, the self-same inventive step claimed by the patent
in suit, the only difference of any substance being the use
of the kite rig held by the crossed spar and boom instead
of a Bermuda rig with a wishbone boom. In the light of
the evidence, it seems to us inescapable that anyone skilled
in the art and contemplating Darby’s article in 1966 would
immediately recognise, as the witnesses did, that the kite
rig suggested for this very simple and elementary device
would suffer from the disadvantages that it would perform
poorly upwind and require to be manipulated from the
side of the sail.

As regards Chilvers craft prior art Oliver, L.J. said:

If Peter Chilvers had adopted, as part of his device, the

conventional wishbone boom in place of the more primitive
straight split boom which he in fact used, it would, we
should have thought, have been quite unarguable that this
would not have been an anticipation under the Patents Act
1949, s. 32 (1)(e)J, for the notion behind anticipation is,
as we understand it, that it would be wrong to enable the
patentee to prevent a man from doing what he has lawfully
done before the patent was granted. No doubt, the
philosophy behind sub-paragraph (f) is different to this
extent, that a patent is granted only for an invention and
that which is obvious, is not inventive, but it also must, we
think, take into account the same concept as anticipation,
 SUBJECT MATTER AND CONDITIONS OF PATENTABILITY 235

namely that it would be wrong to prevent a man from doing

something which is merely an obvious extension of what
he has been doing or of what was known in the art before
the priority date of the patent granted.

Oliver, L.J. postulated a test for inventive step, involving four steps,
being620:
(a) the court must identify the inventive concept embodied in the
patent;
(b) it must assume the mantle of the normally skilled but
unimaginative addressee in the art at the priority date and impute
to him what was, at that date, common general knowledge in the
art in question;
(c) it must identify what, if any differences exist between the
materials cited as being ‘known or used’ and the alleged invention;
(d) it must ask itself whether, viewed without any knowledge of the
alleged invention, those differences constituted steps which would
have been obvious to the skilled man or whether they required
any degree of invention.

Industrial Application

The third key requirement of the Patents Act is that in order to be eligible
for a patent, an invention must be capable of industrial application. Under
section 2 of the Act the invention, whether it relates to a product or process,
must be capable of being used or applied in trade or industry.
An invention must, therefore, be of a kind that can be applied for
practical purposes, not be purely theoretical. If the invention is intended
to be a product or part of a product, it should be possible to make that
product. If the invention on the other hand, is intended to be a process or
part of the process, it should be possible to carry that process out or use
it in practice.

Patentable Subject Matter

An invention, though it satisfies the requirements of patentability namely

novelty, inventive step and industrial application, will not qualify for
patentability if it does not fall within the scope of a patentable subject
matter. A Patentable subject matter is established by a patent law, and is
usually defined in terms of the exceptions to patentability the general
view being that patent protection shall be available for inventions in all
fields of technology.
620
Ibid., at p. 73.
236 INTELLECTUAL PROPERTY LAW

Examples of fields of technology that a patent law may exclude from

the scope of patentable subject matter include:
(i) discoveries of materials or substance already existing in nature;
(ii) scientific theories or mathe matical methods;
(iii) plant or animal varieties, or essentially biological processes
for the production of such plant or animal varieties, other than
microbiological processes;
(iv) schemes, rules or methods of doing business, performing
purely mental acts or playing games;
(v) methods for treatment of the human or animal body by surgery
or therapy, as well as diagnostic methods;
(vi) mere presentations of information; and
(vii) computer software in a certain limited context.621
The Patents Act provides circumstances under which a patent application
can be refused.622 These circumstances are:
(a) Where a patent application is frivolous on the ground that it
claims as an invention anything obviously contrary to well-
established natural laws;623
(b) Where the use of the invention in respect of which the
application is made would be contrary to law or morality;624
(c) Where it claims as an invention a substance capable of being
used as food or medicine which is a mixture of known
ingredients possessing only the aggregate of the known
properties of the ingredients, or that it claims as an invention a
process producing such a substance by mere admixture.625
The issue of whether an invention falls within the scope of patentable
subject matter has been a subject of judicial interpretation in many
jurisdictions. In Diamond, Commissioner of Patents and Trademarks v.
Chakrabarty,626 the Supreme Court of the United States addressed the
question of whether an artificially created life form, in this case a new
form of bacterium obtained by genetic alteration, is a patentable subject
matter. The court observed a boundary line between the discovery of a
naturally occurring life form which is not patentable, and the creation of
a new life form.
Chakrabarty had developed a new micro-organism, a pseudomonas
bacterium, which degraded hydrocarbons, and so was potentially useful
in clearing up oil spills. The U.S Patent Office had allowed patent claims
to the method of producing the bacterium and an inoculum, but objected
621
See Rule 67 of Patent Cooperation Treaty.
622
S. 18 Patents Act.
623
S. 18(a) Patents Act.
624
S. 18(b) Patents Act.
625
S. 18(c) Patents Act.
626
447 US 303 (US Supreme Court); 1980 US LEXIS 112 (1980).
 SUBJECT MATTER AND CONDITIONS OF PATENTABILITY 237

to a claim of ‘a bacterium from the genus pseudomonas containing therein

at least two stable energy-generating plasmids, each of the said plasmids
providing a separate hydrocarbon degradative pathway’. It rejected this
claim on the basis that ‘as living things, microbes are not patentable
subject matter.’
The Supreme Court overruled this decision and allowed this claim.
The court had to consider whether the fact that a bacterium was a living
thing was sufficient to exclude it from patent protection. It reviewed the
purpose of the patent system, including the statement by legislators
accompanying the 1952 Patent Act that Congress intended statutory
subject matter to ‘include anything under the sun that is made by man’.
The court acknowledged that, “the laws of nature, physical phenomena,
and abstract ideas have been held not patentable….Thus, a new mineral
discovered in the earth or a new plant found in the wild is not patentable
matter. Likewise, Einstein could not patent his celebrated law that E=
mc²; nor could Newton have patented the law of gravity. Such discoveries
are manifestations of nature, free to all men and reserved exclusively to
none. But the court decided that the microorganism ‘plainly qualifies as
patentable subject matter. His claim is not a hitherto unknown natural
phenomenon, but a non-naturally occurring manufacture or composition
of matter; a product of human ingenuity having a distinctive name,
character and use’. The court further stated that ‘the patentee has produced
a new bacterium with markedly different characteristics from any found
in nature and one having the potential for significant utility. His discovery
is not nature’s handiwork, but his own; accordingly, it is patentable subject
matter under s.101.
The Supreme court compared Chakrabarty case, with an earlier case
of Funk Brothers Seed Company v. Kalo Inoculant Company,627 in which
the patentee had discovered that there existed in nature certain species of
root nodule bacteria which did not exert a mutually inhibitive effect on
each other. He used that discovery to produce a mixed culture capable of
inoculating the seeds of leguminous plants. Concluding that the patentee
had discovered ‘only some of the handiwork of nature,’ the court held
the product non-patentable:

Each of the species of root-nodule bacteria contained in

the package infects the same group of leguminous plants
which it always infected. No species acquires a different
use. The combination of species produces no new bacteria,
no change in the six species of bacteria, and no enlargement
of the range of their utility. Each species has the same effect
it always had. The bacteria perform in their natural way.
627
333 US 127, 130 (1948).
238 INTELLECTUAL PROPERTY LAW

Their use in combination does not improve in any way

their natural functioning. They serve the ends nature
originally provided and an act quite independently of any
effort of the patentee.’628

Another important case in determining the scope of patentable matter is

the case of Harvard Onco-Mouse629. This is a transgenic mouse which
was particularly susceptible to developing cancer. Such a mouse is claimed
to be particularly valuable in researching cures for cancer in human beings.
The University of Harvard received US patent 4736866 for the invention
claimed as ‘a transgenic non-human mammal all of whose germ cells
and somatic cells contain a recombinant activated oncogene sequence
introduced into the said mammal, or an ancestor of the said mammal, at
an embryonic stage’. A mouse produced in this way was described as a
preferred embodiment of the invention. The patent document explained
the benefits of such animals as useful in testing potential carcinogens,
thus minimising one source of criticism of current methods, that their
validity is questionable because the amounts of the tested material used
is greatly in excess of amounts to which humans are likely to be exposed.
Equivalent patent applications in the European Patent Office (EPO)
and in Canada were initially rejected. In the EPO, the case revolved around
the European Patent Convention, Article 53, which provided that
European patents shall not be granted in respect of inventions the
publication or exploitation of which would be contrary to public order
or morality [and] plant or animal varieties or essentially biological
processes for the production of plants or animals…
The claims of the EPO patent application included:

1. A method of producing a transgenic non-human

mammalian animal having an increased probability
of developing neoplasms, said method comprising
introducing an activated oncogene sequence into a
non-human mammalian animal at a stage no later
than the 8-cell stage.
17. A transgenic non-human mammalian animal whose
germ cells and somatic cells contain activated
oncogene sequence introduced into the said animal,
or an ancestor of the said animal, at a stage no later
than the 8-cell stage.
18. An animal as claimed in claim 17, which is a rodent.

628
Ibid., at 131.
629
T 19/90 [1990] O.J EPO 476, Tech. Bd. App.; [1990] E.P.O.R 525, EX. D.
 SUBJECT MATTER AND CONDITIONS OF PATENTABILITY 239

The EPO Examining Division rejected these claims, because the claimed
animals were not patentable under the European Patent Convention.
Claims 17 and 18 were also rejected because they included further
generations or descendants of the animal, which would be produced by
biological processes, thus falling within the prohibition on patents on
essentially biological processes.
As to whether the claimed invention was contrary to morality, the
office observed that the patent law was not the right legislative tool for
resolving the questions of the morality of using animals for testing in
this way. In other words, if animal testing using transgenic mice raised
ethical issues, these were better addressed by direct legislation, rather
than indirectly through patent law.
The issue was then referred for consideration to the EPO Technical
Board of Appeal, which overturned the decision on these claims. It
concluded that the claims were directed to non-human mammals and
rodents, and not an animal variety as such, which was what the European
Patent Convention excluded. It also concluded that the animal was the
product of a biological process, not a biological process as such, which
was what the European Patent Convention excluded. But the EPO
Technical Board said it was correct for the Examining Division to consider
the morality test, and remitted the case for consideration.
The Examining Division considered three different issues that needed
to be balanced: the interests of mankind in providing remedies for
dangerous diseases; the interests in protecting the environment against
uncontrolled dissemination of unwanted genes; and the interest in avoiding
cruelty to animals.
It concluded that in this case, the benefits to humanity outweighed the
disadvantages, in that cancer is a frequent cause of death; the invention
meant that fewer animals would be needed for testing, thus lowering the
overall amount of animal suffering; animal testing is indispensable in
cancer research; and the invention does not envisage release into the
environment, so the uncontrolled spread of the gene was unlikely.
Similarly, in Plant Genetic Systems/Glutamine Synthetase
Inhibitors,630 where the invention related to the genetic engineering of
plants and seeds in order to make them herbicidal resistant. The EPO
Technical Board of Appeal rejected the opposition by the Greenpeace
against the invention. Though the EPO Technical Board’s decision
accepted in principle that the protection of the environment fell within
the concept of ordre public, it required that there be sufficient evidence
that the environment would be damaged. The suggestions that crops might
be transformed into weeds, that the herbicide resistant gene might be
spread to other plants or that the ecosystem might be damaged, had raised
only possible hazards.

630
[1995] E.P.O.R 357, Tech. Bd. App.
240 INTELLECTUAL PROPERTY LAW

As to the objections on the ground of morality, the EPO Technical

Board stated that it was necessary to show that publication or exploitation
of the invention would be contrary to conventionally accepted standards
of culture inherent in European society and civilisation. Survey and
opinion evidence among particular groups would not necessarily settle
the question; nor would the fact that some European Patent Convention
States permitted exploitation of the invention. The mere fact that the
genetic manipulation was used did not render an invention immoral.
Traditional selective breeding also brought about genetic alteration and
both must be treated as acceptable.
Unlike the Harvard Onco-Mouse case,631 the EPO Technical Board
decided that since no sufficient evidence of actual disadvantage has been
adduced, the assessment of the patentability may not be based on the so-
called ‘balancing exercise’ of benefits and disadvantages. Such a
‘balancing exercise’ is not the only way of assessing patentability with
regard to the European Patent Convention, Article 53(a), but just a possible
way, perhaps useful in situations in which an actual damage and/or
disadvantage (for example, suffering animals in the case of Decision T
19/90 above) exists.
In Howard Florey/Relaxin632, the EPO allowed a patent for the genetic
engineering of DNA from a pregnant woman’s body so as to produce
Human H-2 relaxin. This was opposed on moral grounds of sweeping
generality, that the procedure involve the patenting of human life, the
abuse of pregnant women, the return of slavery, the sale of women
piecemeal to industry, etc. The objections were held insufficient. In
particular, DNA was characterized, not as ‘life’ but as a substance carrying
genetic information which can be used to produce proteins that are
medically useful.
In order to ensure that there is clarity on patent system as it relates to
human and animal life forms, the European Union issued a Biotechnology
directive, which prescribes that patents shall not be granted for:
(a) process of cloning humans;
(b) process of modifying the germ-line genetic identity (that is,
the inheritable gene characteristics) of humans;
(c) uses of human embryos for industrial or commercial purposes;
and
(d) processes for modifying the genetic identity of animals which
are likely to cause them suffering without any substantial
medical benefit to man or animal, and also animals resulting
from such processes.633
631
Supra note 629.
632
[1995] E.P.O.R, 541.
633
Supra note 283.
 SUBJECT MATTER AND CONDITIONS OF PATENTABILITY 241

Disclosure of Invention

Disclosure of inventions is at the centre of the patent system. The

monopoly patent right that is granted to an inventor is in return for the
inventor to disclose the details of the invention so that it can be freely
used by the public at the end of the term of the patent, and that researchers
can use the invention in their research, and that the invention is available
for educational purposes, even while the patent right is still in force.
The details of the invention are called the ‘enabling disclosure’ and
are included in the patent specification lodged with the patent office.
The requirement of full description of an invention is a mandatory
obligation under the Patents Act.
The Patent Act provides that a provisional specification shall fairly
describe the invention.634 As regards a complete specification, it shall:
(a) fully describe the invention and manner in which it is to be
performed;635
(b) disclose the best method of performing the invention known to
the applicant at the time when the specification is lodged with
the Patent Office;636 and
(c) end with a claim or claims defining the subject matter for which
the protection is claimed.637
The need for disclosure of the invention was considered by the House of
Lords in the case of Biogen Incorporation v. Medeva Plc.638 This case
concerned an artificially constructed molecule of DNA carrying a genetic
code which, when introduced into a suitable host cell, will cause that cell
to make antigens of the virus Hepatitis B. Viral antigens are proteins on
the surface of the virus or inside it. When antigens are detected, they
trigger the production of antibodies which neutralise the virus. To
vaccinate a person against a disease, the isolated antigens for the disease
can be artificially introduced into the system, without actually exposing
the person to the virus itself, thus stimulating production of the necessary
antibodies to defend against later viral attack. The technology in this
patent enabled the production of antigens for hepatitis B for use in
diagnostic tests for the presence of the disease and in vaccination against
the disease.
There was a strong general interest at the time of the invention (1978)
in antigens. It was known at that time that hepatitis B was produced by a
particle (the ‘Dane particle’) containing a circular DNA molecule (a
plasmid), which had two antigens, one at its surface and one at its core.
634
S. 14, Patents Act.
635
S. 3(a), Patents Act.
636
S. 3(b), Patents Act.
637
S. 3(c), Patents Act.
638
[1997] RPC 1.
242 INTELLECTUAL PROPERTY LAW

There were three possible ways to obtain the antigens:

(a) Purification from natural Dane particles, but the qualities
available would be limited, and there were safety concerns in
dealing with these highly infectious agents.
(b) Synthesise the antigens, but the amino acid structure of the
antigens was only partially known.
(c) Produce them through recombinant DNA technology. This
required finding the genes that coded for the antigens, and
inserting these into a host cell which would express the antigen
genes in a form that could be recovered, allowing for ready
production of large quantities of antigen. This meant first
finding the necessary genes, and then working out how to
insert them successfully into a host cell.
The inventor, Professor Murray, chose the third path, and was the first
person to use recombinant DNA technology to produce hepatitis B
antigens. Professor Murray developed his process, that is the use of
recombinant DNA techniques, in the face of technical obstacles that might
have dissuaded other scientists from attempting it. Murray’s invention
was one by Biogen, a company he helped found. Biogen filed a patent
application that claimed essentially all recombinant DNA processes by
which the antigen Murray synthesised could be produced.
At the time of Professor Murray’s initial research and success, it was
widely accepted that if an entire DNA strand of the hepatitis B virus
could be sequenced or mapped, then it would be a relatively simple matter
to produce the antigen that Murray succeeded in synthesising with his
trial and error method. However, at the time Murray undertook his
research, it was very costly and time-consuming to sequence a gene, and
the use of this method was effectively precluded. Shortly after Murray’s
initial success with trial and error method, it became cheaper and easier
to sequence genes. This development rendered Murray’s first method of
producing the antigen of little value, since any producer would now use
a sequencing technique.
Murray and Biogen claimed that the claims of their first patent
application (Biogen 1) entitled Biogen to a monopoly on all recombinant
methods of producing antigen; not only the early trial and error method,
but the latter more efficient sequencing method as well. After the
breakthrough by Professor Murray in sequencing genes using recombinant
DNA techniques, the respondent, Medeva Plc was planning to market a
hepatitis B vaccine made by recombinant DNA technology. When the
appellant sued Medeva Plc for infringing its patent, the respondent
challenged the validity of the patent on the grounds, inter alia, that the
patent was obvious.
 SUBJECT MATTER AND CONDITIONS OF PATENTABILITY 243

On the question whether Murray’s work included inventive step

required of a patent invention, the Court of Appeal had doubted the
presence of an inventive step, since researchers in Murray’s field generally
knew that if enough time and money were spent on his problem, a solution
would be found. The only thing that distinguished Murray from other
scientists was his willingness to undertake research in the face of long
odds. This was, in the view of the Court of Appeal, not an inventive
process that Murray undertook, but a commercial decision.
The House of Lords, however, observed that many (if not most)
inventions today are the result of a calculated commercial decision. If
such decision-making precludes patenting, there might be few patents
issued. The House of Lords, while suggesting it considered Murray’s
process to involve a sufficient inventive step, decided the case on other
grounds. The House of Lords invoked the concept of the enabling
disclosure, and held that Biogen did not, in its patent application in fact
disclose the more efficient sequencing method of producing the antigen.
Thus, Biogen’s claims for all recombinant methods of producing the
antigen are overboard. Allowing claims of this scope, without requiring
sufficient enabling disclosure would be an impediment to scientific
development.
Lord Hoffman for the court stated:

The metaphor used by one of the witnesses was that before

the genome had been sequenced, everyone was working
in the dark. Professor Murray invented a way of working
with the genome in the dark. But he did not switch on the
light and once the light was on, his method was no longer
needed. Nor, once they could use vectors for mammalian
cells, would they be concerned with the same problem of
introns which had so exercised those skilled in the art in
1978. Of course there might be other problems, but Biogen
1 did not teach how to solve them. The respondents,
Medeva, who use restriction enzymes based on knowledge
of the HBV genome and mammalian host cells, owe
nothing to Professor Murray’s invention.
It is said that what Professor Murray showed by his
invention was that it could be done. HBV antigens could
be produced by expressing Dane particle DNA in a host
cell. Those who followed, even by different routes, could
have greater confidence by reason of his success. I do not
think this is enough to justify a monopoly of the whole
field. I suppose it could be said that Samuel Morse had
shown that electric telegraphy could be done. The Wright
244 INTELLECTUAL PROPERTY LAW

brothers showed heavier-than-air flying machines. It is

inevitable in young science, like electricity in the early
nineteenth century or flying at the turn of the last century
or recombinant DNA technology in the 1970s, that
dramatically new things will be done for the first time.
But care is needed not to stifle further research and healthy
competition by allowing the first person who has found a
way of achieving an obvious desirable goal to monopolise
every other way of doing so.
I would therefore hold that Biogen 1 did not support
the invention as claimed in the European patent and that it
is therefore not entitled to the priority date of Biogen 1 as
it is conceded that the invention was obvious when the
patent application was filed, it was invalid.
 245

Chapter Sixteen

PATENT APPLICATION PROCESS

Introduction

There are two separate routes by which patent protection for an invention
may be obtained in Zambia, namely the national route and the Patent
Cooperation Treaty (PCT) route. These routes, though separate, have
certain common features and the procedures are largely interrelated.
Under the national route, the inventor makes an application for a patent
for invention to the patent office under the Patents Act, Cap 400. Under
the PCT route, the inventor makes an application to the Patents Office,
designating some or all the contracting states including Zambia, in which
he wishes to have the patent for his invention to be protected.
The PCT is an international patent treaty administered by the World
Intellectual Property Organisation (WIPO) in Geneva. The PCT route
involves central processing of applications up to the search and publication
stages and thereafter the application will be processed by the appropriate
national and regional offices of or for those countries designated in the
application. Regional offices include European Patent Office (EPO) and
African Regional Industrial Property Organisation (ARIPO). The national
patent offices will then treat the PCT application as a national or domestic
application and, if the application satisfies the requirements, a patent
will be granted in each individual country as if the application had been
processed entirely by the national route.

Right to Apply for a Patent

An application for a patent for an invention may be made by any of the

following persons, either alone or jointly with any other person:
(i) a person claiming to be the inventor of the invention who owns
the invention in respect of Zambia;639
(ii) an assignee;640
(iii) a national of the Paris Convention who makes an application
for a patent in Zambia within twelve months subsequent to the
filing of the first application in a convention country641;

639
S. 11(a) Patents Act.
640
S. 11(b) Patents Act.
641
S. 11(c) Patents Act.
246 INTELLECTUAL PROPERTY LAW

(iv) the legal representative of any person who immediately before

his death or disability was entitled to make an application for a
patent.642

Application for a Patent

Every application for a patent must be made in the prescribed form,

signed by the applicant or by a person authorised to sign on behalf of the
applicant.643 The application must be lodged at the Patent Office in the
prescribed manner,644 and must state the full postal, residential and
business addresses of the applicant to which all notices and
communications may be sent.645
It is imperative to state that the inventor of an invention has a right to
be mentioned. Thus, under section 12 (3) of the Parents Act, every
application for an invention must state the applicant who owns the
invention in Zambia; state the full name of the inventor; and where the
inventor is not an applicant or one of the applicants, contain a declaration
that the applicant believes to be the inventor.
In case of applications under the Paris Convention, they must also
state the Convention country in which such application for the protection
was made,646 its number,647 the effective date of such application,648 and
the capacity in which the applicant in the Paris Convention country and
in Zambia qualifies under article 2 or 3 of the convention.649

Patent Specification

A specification is a key document in the whole process of applying for a

patent for the invention. The specification normally contains the following
information: title of the invention, brief introduction of the field of the
invention, objectives or claims of the invention, brief introduction of the
drawings (where a specification contains drawings), a detailed description
of the invention, and a set of claims.
The Patents Act provides for two types of specifications, namely,
provisional and complete specification,650 which must accompany every
patent application.651 However, for a Paris Convention patent application,

642
S. 11(d) Patents Act.
643
S. 12 (1)(a) Patents Act.
644
S. 12 (1)(b) Patents Act.
645
S. 12 (1)(c) and (d) Patents Act.
646
S. 12 (4)(a) Patents Act.
647
S. 12 (4)(b) Patents Act.
648
S. 12 (4)(c) Patents Act.
649
S. 12 (4)(d) Patents Act.
650
S. 13 (1) Patents Act.
651
Ibid.
 PATENT APPLICATION PROCESS 247

it must be accompanied only by complete specification.652 The applicant

has an option of filing the patent application either with a complete
application or with a provisional application. The applicant or inventor
will normally opt to file provisional specification in order to obtain an
early filing date while he is still perfecting his invention or because he
still needs a little time for drawing up a complete specification. Where
the applicant opts to file provisional specification to accompany the patent
application, he must lodge the complete specification within twelve
months after lodging the provisional application or within such further
period as may be permitted by the Registrar, but not exceeding three
months.653
While a provisional application only requires to fairly describe the
invention654, a complete specification must fully describe the invention
and the manner in which it is performed.655 It must also disclose the best
method of performing the invention known to the applicant at the time
when the specification is lodged at the patent office.656 Furthermore,
complete specification must contain a claim or claims defining the subject
matter for which the protection is claimed.657 Where deemed necessary,
every specification shall be accompanied by drawings.658
The description contained in the specification has to satisfy two main
conditions: first, must state in clear and intelligible language in what
manner the patented invention is to be performed, so that others may
know what the monopoly is that is granted to the proprietor of the patent.
Secondly, to I must state in clear and intelligible language in what manner
the patented invention is to be performed, so that others may learn from
the specification how practically to avail themselves of the patented
invention when the patent has expired.659
Therefore, for a patent for an invention to be granted, the description
must contain adequate information to enable a person skilled in the art to
work the invention. In Biogen Incorporation v. Medeva Plc660, the House
of Lords held the patent to be invalid because Biogen in its patent
application did not disclose the more effective method of producing
antigen.
A typical description begins by setting out the background of the
invention and often explains a particular problem that the invention solves,
and what it does. It then sets out the essential features of the invention,
652
Ibid.
653
S. 13 (2) Patents Act.
654
S. 14 (2) Patents Act.
655
S. 14 (3) (a) Patents Act.
656
S. 14 (3) (b) Patents Act.
657
S. 14 (3) (c) Patents Act.
658
S. 14 (5) Patents Act.
659
Edison and Swan United Electric Company v. Holland (1889) 6 RPC 243 at 279.
660
[1997] RPC 1, HL.
248 INTELLECTUAL PROPERTY LAW

and some important essential features. This is then followed by an

introduction to the drawings, if any, indicating in a few words what each
drawing illustrates. The rest of the description describes, with more
detailed reference to any drawings, one or more particular examples of
how the invention may be performed.
Where the specification is defective, the Registrar of Patents may
refuse to accept the specification until it is amended.661 Also if the
invention described in the complete specification is not substantially the
same as the one described in the provisional specification, the Registrar
may, with the consent of the applicant, cancel the provisional specification
and direct that the application is post-dated to the date on which the
complete specification was filed with the patent office.662 Where the
complete specification includes an invention not included in the
provisional specification, the Registrar will allow the filing of the
application, together with the additional invention, if the same is filed
with such period as the Registrar may determine, and to be dated with
the date on which the complete specification was filed at the patent
office.663
If a complete specification is not accepted within thirty months from
the date of lodging the application, the application will lapse unless an
appeal has been lodged in respect of the application, the time within
which such appeal may be lodged has not expired, or the delay in accepting
the specification was not due to any neglect or default on the part of the
applicant.664

Claims

A claim is one of the numbered paragraphs that appear at the end of a

patent and defines the subject matter for which protection is claimed.
Claims are, therefore, the centre of any granted patent in that they define
the scope of protection given to the owner of the patent, namely the right
to prevent others from making, using, selling, offering for sale, or
importing the claimed invention. Each claim is treated separately for
purposes of determining validity and infringement. Claims may, for
instance, be directed toward apparatus, methods, products, and
compositions of matter and new and useful improvement of the same.
The Patents Act requires that a claim or claims must relate to a single
invention, must be clear and succinct, and must be fairly based on the
matter disclosed in the specification.665 Thus, if a claim, or claims, go
661
S. 19 (1)(a) Patents Act.
662
S. 19 (1)(b) Patents Act.
663
S. 19 (1)(c) Patents Act.
664
S. 20 (1)(a)(b) and (c), Patents Act.
665
S. 14 (4) Patents Act.
 PATENT APPLICATION PROCESS 249

significantly beyond the material disclosed in the patent document, the

effective patent right will exceed the entitlement of the patent holder,
hence defeat the deal between the inventor and the state, that in return for
exclusive right or patent monopoly, the inventor will disclose the invention
so that any person skilled in the art will be able to work the invention. To
acquire a valid patent therefore, requires striking a balance between the
claims, which defines the patent rights obtained, and the description of
the invention, which serves to inform the public how to work the invention.
Besides a claim, or claims, which extends to substance found in nature
will be declared to be invalid.666
Like the Patent Act, the PCT system requires the patent claims to,
‘define the matter for which protection is sought, be clear and concise,
and be fully supported by the description.’ The PCT guidelines provide
that:

Most claims are generalisations from one or more particular

examples. The extent of generalisation permissible is a
matter which the examiner must judge in each particular
case in the light of the relevant prior art. Thus, an invention
which opens up a whole new field may be entitled to more
generally in the claims than one which is concerned with
advances in a known technology. An appropriate claim is
one which is not so broad that it goes beyond the invention
nor yet so narrow as to deprive the applicant of a just reward
for the disclosure of his invention. Obvious modifications,
uses of, and equivalents to that which the applicant has
described should not be questioned. In particular, if it is
reasonable to predict that all the variants covered by the
claims have the properties or uses the applicant ascribes to
them in the description, it is proper for the applicant to
draw his claims accordingly.
As a general rule, a claim should be regarded as
supported by the description unless, exceptionally, there
are well-founded reasons for believing that the skilled man
would be unable, on the basis of the information given in
the application as filed, to extend the particular teaching
of the description to the whole of the field claimed by
using routine methods of experimentation and analysis.
Support must, however, be of a technical character; vague
statements or assertions having no technical content provide
no basis.
666
S. 14 (7) Patents Act.
250 INTELLECTUAL PROPERTY LAW

The usual practice of drafting claims is to begin with a broad main claim
followed by a number of claims of narrower scope. The broad claim is
drafted so as to avoid the prior art known at the time of preparing the
application. The narrower claims preceding the broad main claim usually
refer back to one or more of the receding claims. They are, therefore,
usually referred to as ‘dependent claims’. The features incorporated in
each of the dependent claims must find some basis in the description.
It is worth noting that a patent applicant usually drafts the claims in
the patent application broadly so as to prevent any competitor from
making, using, selling or offering for sale the very similar product that
makes use of the essence of the invention. However, the claims that are
drafted too broadly to exceed the technical contribution of the art
embodied in the invention risk being declared invalid. Thus, in Biogen
Incorporation v. Medeva Plc,667 the House of Lords considered whether
the breadth of claims for cloning Hepatitis B antigen exceeded the
technical contribution to the art made by the invention described. The
court held the patent to be invalid because the claim was too broad and
was not supported by the disclosure. Lord Hoffman stated that:

…it was inevitable in a young science that dramatically

new things, like cloning Hepatitis B antigen would be done
for the first time. Those who followed, even by different
routes, could have greater confidence by reason of the
initial success, but this was not enough to justify a
monopoly over the whole field. Care was needed not to
stifle further research and healthy competition by allowing
the first person who had found a way of achieving an
obviously desired goal to monopolise every other way of
doing so… The technical contribution to the art disclosed
consisted in showing that known recombinant techniques
could be used to make HBV antigens in a prokaryotic host
cell. This did not justify a claim to a monopoly of any
recombinant method of making the antigens. The claimed
invention was too broad. Its excessive breadth was due,
not to the ability of the teaching to produce all the promised
results, but to the fact that the same results could be
produced by different means, which owed nothing to the
invention. It did not establish any new principle which
others would have to follow to achieve the same results.

667
[1997] RPC 1, HL.
 PATENT APPLICATION PROCESS 251

Abstract

An abstract is a brief summary of the invention contained in the

specification and usually does not exceed 150 words. The abstract must
indicate the technical field to which the invention lies. In addition, the
abstract indicates the existing problems or difficulties, and the solution
provided by the invention. It also describes the object of the invention,
that is to say, what the invention sets out to achieve. The abstract is
important in that it provides useful information to both the patent office
and to the public in the searching process, for instance when searching
for anticipatory material.

Priority Date

Priority date, also known as effective date, is the date on which the patent
application is lodged at the patent office.668 In the case of a patent
application under the Paris Convention, priority date is the date on which
the application in respect of the relevant invention was made or filed in
that Paris Convention country or is in terms of that country deemed to
have been filed.669
The Patents Act allows a priority date to be post-dated or antedated.
However, no application shall be post-dated later than six months from
the date on which it was actually lodged.670 In case of an application
under the Paris Convention, the patent application shall not be post-dated
to a date later than the last date on which the application could have been
made.671
The priority date is very important in patent law. It is a date on which
a patent application for invention is assessed against other materials, such
as competing claims for the same invention, publications or other
information that may affect the validity of the patent. Priority date,
therefore, establishes the time from which determination of the invention
is made. Hence, no disclosure, publication or other public activity can
affect the validity of the patent if it happens after the relevant priority
date. Besides, priority date is relevant in terms of determining patent
infringement.672 Furthermore, priority date is important in that if two
patent applications for basically the same invention are received at the
patent office, then the application with the earlier priority date is eligible
for patent protection. This is because under the patent law ‘first-to-file’
principle, the first application destroys the novelty of the second
668
Supra note 597.
669
Ibid.
670
S. 17 (1)(i), Patents Act.
671
S. 17 (1)(ii), Patents Act.
672
S. 53 (4), Patents Act.
252 INTELLECTUAL PROPERTY LAW

application. In short, where there are more than one patent applicants
regarding the same invention, developed independently by the inventors,
priority for a patent grant will be given to the applicant who was first to
file the patent application.
However, this is not the case under the USA patent law, which applies
the ‘first-to-invent’ principle. Under the first-to-invent rule, the priority
date, in case of conflicting patent applications, is not the date of lodging
the patent application at the patent office, but is the date of the actual
reduction to practice of the invention. If the inventor is ‘diligent’, that is,
continually active in developing the invention, then the priority date can
date back to the original conception, before the invention is reduced to
practice.

Convention Applications

Zambia is a member of the Paris Convention for the protection of

industrial property and is bound by its obligations as provided under
section 7 of the Patents Act.
Section 8 of the Patents Act provides that if any person who qualifies
under article 2673 or article 3674 of the Paris Convention applies for patent
protection in a convention country, he is entitled to a patent for his
invention in priority to other applicants if the application is made within
twelve months after the effective date of the first application for protection
in the first convention country in which he made the application or, where
more than one application for protection has been made, from the effective
date of the first application.
The patent shall have the same date as the effective date of the
application in the convention country, but the term of the patent shall
commence from the date, which the complete specification is lodged at
the patent office.675 Where, after the filing of the first application in the
first convention country in respect of any invention, a subsequent
application is lodged in that country in respect of the same invention, the
subsequent application shall be considered as the first application in that
country in respect of that invention, if at the time of filing the application,
(i) the previous application has been withdrawn, abandoned or
refused without having been open to public inspection; and
(ii) no priority rights have been claimed by virtue of that application;
and
(iii) no rights are outstanding in that convention country in
connection with such previous application.676
673
Nations of the Paris Convention called the ‘Union’.
674
Nationals of the countries outside the Union who are domiciled or who have real and effective industrial
or commercial establishments in the territories of one of the countries of the Union.
675
S. 8 (1), Patents Act.
676
S. 8 (2), Patents Act.
 PATENT APPLICATION PROCESS 253

An application for a patent, which has been withdrawn, abandoned or

refused, shall not, after the lodging of the subsequent application, be
entitled to a claim for priority rights.677 The patent applicant under the
convention application is not be entitled to recover damages for
infringements occurring prior to the date on which his completed
specification is advertised as having been accepted in Zambia.678

Publication, Examination and Search

Once a patent application has been lodged at the patent office and is
given a filing date, it has to be subjected to publication, examination as
to form and substance and search before a patent can be granted.

Publication

An application for a patent which has a date of filing and which has been
accepted by the Registrar must be published at the end of eighteen months
calculated from the declared priority date or where there is no declared
priority date, from the date of filing.679 Once the application for a patent
has been published and advertised in the patent journal, the application
form, the specification and other essential documents filed shall be open
to public inspection.680
It is important to state that once the patent application is published
and information regarding the invention is available to the public, the
invention becomes part of the ‘prior art’. Therefore, where, for example,
the application is subsequently withdrawn and the same applicant
resubmits it or a closely related one, the later application will fail because
it will be anticipated by its own prior art.
It is worth noting that the period between publication and sealing of a
patent, the applicant is entitled to privileges and rights as if a patent for
the invention was sealed on the date of the application of such notice.681

Preliminary Examination and Search

Preliminary examination, also referred to as ‘examination as to form’, is

normally conducted as soon as an application has been given a filing
date. The preliminary examination is carried out to determine whether
the application or specification complies with the formal requirements.682
677
S. 8 (3), Patents Act.
678
S. 8 (1)(i), Patents Act.
679
S. 21, Patents Act.
680
S. 21 (3), Patents Act.
681
S. 21 (4), Patents Act.
682
S. 16, Patents Act.
254 INTELLECTUAL PROPERTY LAW

Therefore, the application will be checked to ensure that all necessary

documents have been filed and fees paid. If not, the applicant will be
requested to submit all necessary documents. The patent application will
then be subjected to a search. The purpose of a search is to determine the
prior art in the specific field to which the invention relates. In conducting
the search, the patent office checks its documentation collection to
ascertain whether any documents exist which describe a solution which
is the same as or similar to that described in the application. A search
report is issued by a patent examiner after a search has been conducted.
The search report is important in that it helps the patent applicant to
decide whether his invention is new and non-obvious. Besides, in light
of the materials discovered by the search, the patent applicant is assisted
to decide whether to proceed or withdraw the application before additional
costs are incurred, especially where there is a likelihood that the invention
is not new or non-obvious and as such the patent will not be granted.

Substantative Examination

After the preliminary examination and search have been conducted and
the patent applicant wishes to proceed with a substantive examination,
he shall make a request to the patent office for a substantive examination
and pay the prescribed fee.683 The purpose of substantive examination is
to ensure that the patent application satisfies certain conditions of
patentability, namely, that the invention is new, involves inventive step
and industrial applicable or useful. Furthermore, that the invention is not
excluded from patentability and that it is fully disclosed or described in
a clear and complete manner in the documents filed.
On the substantive examination, a patent examiner must investigate,
in view of the preliminary examination and search which has been carried
out, whether the application complies with the requirements of a Patents
Act. If the patent applicant has not complied with the statutory
requirements, he is given an opportunity, within a specified period, to
comply with the requirements and if necessary amend the application. If
he fails to satisfy statutory requirements, the application may be refused.

Opposition To Grant Of Patent

The Patents Act allows interested individuals to oppose the grant of a

patent to the patentee. Therefore, any person interested, including the
State, may within three months from the date of the publication of the
patent application make a written notice to the Registrar to oppose the
grant of the patent on any of the following grounds:

683
Ibid.
 PATENT APPLICATION PROCESS 255

(i) that the applicant is not a person entitled to make the

application;684
(ii) that the application is in fraud of the rights of the person
giving such notice or of any persons under or through whom
he claims;685
(iii) that the invention does not relate to an art (whether producing
a physical effect or not), process, machine, manufacture or
composition of matter, which is capable of being applied in
trade or industry;686
(iv) that the invention is obvious in that it involves no inventive
step having regard to what was common knowledge in the
art at the effective date of the application;687
(v) that the invention is not useful;688
(vi) that the complete specification does not fully describe and
ascertain the invention and the manner in which it is to be
performed;689
(vii) that the claims of complete specification do not sufficiently
and clearly define the subject matter for which the protection
is claimed;690
(viii) that the complete specification does not disclose the best
method of performing the invention known to the applicant
at the time when the specification was lodged at the patent
office;691
(ix) that the application contains a material misrepresentation;692
(x) that the invention described or claimed in the complete
specification is not the same as that described in the
provisional specification, and in so far as it is not described
in the provisional specification, was not new at the date
when the complete specification was lodged at the patent
office; or forms the subject of a pending application made
in Zambia for a patent, the effective date of which is prior
to the date on which the complete specification was lodged
at the patent office;693
(xi) in the case of a convention application, that the specification
describes or claims an invention other than that for which
protection has been applied for in the convention country
684
S. 22 (1)(a), Patents Act.
685
S. 22 (1)(b), Patents Act.
686
S. 22 (1)(c), Patents Act.
687
S. 22 (1)(d), Patents Act.
688
S. 22 (1)(e), Patents Act.
689
S. 22 (1)(f), Patents Act.
690
S. 22 (1)(g), Patents Act.
691
S. 22 (1)(h), Patents Act.
692
S. 22 (1)(i), Patents Act.
693
S. 22 (1)(j), Patents Act.
256 INTELLECTUAL PROPERTY LAW

and that such other invention either forms the subject of an

application for a patent in Zambia which, if granted, would
bear a date in the interval between the lodging of the
application in the convention country and effective date of
the application or is not an invention as defined in the Act;694
(xii) that the invention was not new at the effective date of the
invention;695
(xiii) that the specification includes claims which should have
been refused.696
The notice of opposition must state the grounds on which the objector
intends to oppose the grant of the patent and shall be accompanied by a
statement setting out particulars of the facts alleged in support of the said
grounds.697 Where the applicant wishes to contest the opposition he shall
within the prescribed time lodge at the patent office, a counter-statement,
setting out particulars of the grounds upon which the opposition is to be
contested. 698 The opposition to the grant of the patent is heard and
determined by the High Court.699

Secrecy of Inventions for Defence Purposes

The Patents Act prohibits the publication or disclosure of an invention

and grant of a patent for the same, in cases where the invention is
prejudicial to the defence of the Republic of Zambia.700 Therefore, where
an application for a patent is filed in respect of an invention and it appears
to the Registrar that the invention is one of a class notified to him by a
competent authority as relevant for defense purposes, the Registrar may
give directions for prohibiting or restricting the publication of information
with respect to the invention, or the communication of such information
to any person or class of persons specified in the directions.701 The
Registrar must notify the competent authority of any application in respect
of which he has given directions, and the competent authority must then
consider whether the publication of the invention or the publication or
communication of the information would be prejudicial to the defence
of the Republic of Zambia.702 If the competent authority determines that
the publication of the invention or communication of that information
would be prejudicial to the defence of Zambia, it shall notify the Registrar
who must continue his directions until they are revoked.703
694
S. 22 (1)(k), Patents Act.
695
S. 22 (1)(l), Patents Act.
696
S. 22 (1)(m), Patents Act.
697
S. 22 (2), Patents Act.
698
S. 22 (4), Patents Act.
699
S. 22 (8), Patents Act.
700
S. 24, Patents Act.
701
S. 24 (2), Patents Act.
702
S. 24 (3)(a), Patents Act.
703
Ibid.
 PATENT APPLICATION PROCESS 257

If the competent authority determines that the publication of the

invention or communication of the information in question would be
prejudicial to the defence, it must reconsider the question during the period
of nine months from the date of filing the application and at least once
every subsequent year.704 For the purposes of deciding the question, the
competent authority may, at any time after the expiry of the prescribed
period, inspect the application and any documents furnished to the
Registrar.705
If, on consideration of an application at any time, it appears to the
competent authority that the publication of the invention would not, or
would no longer be prejudicial to the defence of the Republic, it must
give notice to the Registrar to that effect.706 On the receipt of any such
notice, the Registrar must revoke the directions and may, subject to such
conditions, extend the time for doing anything required or authorised to
be done in connection with the application, whether or not that time has
previously expired.707
While directions as to secrecy are in force, the application may proceed
up to the acceptance of complete specification, but the acceptance will
not be advertised nor the specification published, and no patent will be
granted pursuant to the application.708
Where the direction as to secrecy remains in force in respect of an
application and the application is brought on order for the grant of a
patent, then if any working or use of the invention by or with authorisation
of or to the order of a government department while the directions are in
force is subject to the use of patented inventions for services of the State.709
Furthermore, if the applicant for a patent has suffered loss or damage by
reason of his invention having been kept secret, the Minister of Trade,
Commerce and Industry, with the consent of the Minister of Finance,
must pay to the applicant such reasonable compensation.710
Where a patent has been granted pursuant to an application in respect
of which directions as to secrecy have been given, no renewal fees must
be payable in respect of any period during which the directions were in
force.711 Any person who fails to comply with any direction is guilty of
an offence.712

704
Supra note 702.
705
S. 24 (3)(b), Patents Act.
706
S. 24 (3)(c), Patents Act.
707
S. 24 (3)(d), Patents Act.
708
Supra note 201.
709
S. 24 (4), Patents Act.
710
S. 24 (5), Patents Act.
711
S. 24 (6), Patents Act.
712
S. 24 (7), Patents Act.
713
S. 25 (1), Patents Act.
258 INTELLECTUAL PROPERTY LAW

Grant and Term of Patent

If all the conditions set for the grant of a patent have been complied with,
and there is no opposition to such grant, a patent must be granted to the
applicant or applicants and the Registrar must cause the patent to be
sealed with the seal of the patent office.713 Provided there is no delay or
extensions, a patent must be sealed as soon as may be, but not later than
twenty-two months after the date of filing the application for a patent at
the patent office.714 The date of the patent is the effective date or the date
on which the application was filed at the patent office.715
The term of a patent is, subject to lapse for non-payment of renewal
fees716, sixteen years beginning from the date of lodging of the complete
specification at the patent office.717 The term may, however, be shortened
by revocation,718 or surrender719 of the patent.

Extension of Patent

The Patent Act allows a patentee or an exclusive licensee to apply for an

extension of the term of the patent. A patentee or an exclusive licensee
may apply to the Registrar for an extension of the term of the patent on
any one or more of the following grounds, namely:
(i) that he has not derived adequate remuneration from that patent;243
(ii) that by reason of hostilities between the Republic or any country
of the Commonwealth and any foreign state, he has suffered
loss or damage including loss or damage arising out of action
taken pursuant to an official request to keep secret the
specification of the invention to which the patent relates, and
loss of opportunity for dealing in or developing the invention
on account of the fact that the patentee or his employees were
engaged in work of national importance or lack of supplies or
loss of markets as a result of such hostilities.721
The application for extension of term of the patent on the ground of
inadequate remuneration will be made not more than twelve and not less
than six months before the expiration of the term of the patent in
question.722 In case of the second ground, the application for extension
of term will be made at any time before the date of the expiration of the
patent or within two years after the date on which the hostilities stopped.723
714
S. 25 (2), Patents Act.
715
S. 27 (1) (a), Patents Act.
716
S. 33, Patents Act.
717
S. 29 (a), Patents Act.
718
S. 50, Patents Act.
719
S. 52, Patents Act.
720
S. 30 (1) (a), Patents Act.
721
S. 30 (1) (b), Patents Act.
722
S. 30 (2) (a), Patents Act.
723
S. 30 (2) (b), Patents Act.
 PATENT APPLICATION PROCESS 259

Any person is free to object to the extension of a term of the patent,

and the Registrar will fix the date of the hearing of the objection to such
an extension.724 Where the Registrar, after the hearing the application
determines that the patentee or exclusive licensee has not derived adequate
remuneration from the patent, he will order for the extension of the
patentee for a term not exceeding five years or in exceptional
circumstances, ten years.725
Furthermore, where the Registrar determines that the patentee or
exclusive licensee has suffered loss or damage by reason of hostilities,
he will extend the duration of the patent for a term exceeding the period
of hostilities.726

Rights Granted

A patent confers to the patentee exclusive rights:

(a) where the subject matter of a patent is a product, to prevent third
parties not having the owner’s consent from the acts of making,
using, offering for sale, selling or importing for these purposes
that product;
(b) where the subject matter of a patent is a process, to prevent third
parties not having the owner’s consent from the act of using the
process, and from the acts of: using, offering for sale, selling, or
importing for these purposes at least the product obtained directly
by that process.727
The Patent Act provides that the effect of a patent shall be to grant to the
patentee, subject to the conditions of the patent, full power, sole privilege
and authority by himself, his agents and licensees during the term of the
patent to make, use, exercise and vend the invention within Zambia in
such a manner as to him seems fit, so that he shall have and enjoy the
whole profit and advantage accruing by reason of the invention during
the term of the patent.728

Patents of Addition

A patent of addition may be granted in respect of any improvement in or

modification of an invention (the main invention) where:
(a) the applicant had already applied for or been granted a patent in
respect of the main invention729; and
724
S. 30 (3), Patents Act.
725
S. 30 (4)(i), Patents Act.
726
S. 30 (4)(ii), Patents Act.
727
Article 28, TRIPS Agreement.
728
S. 28 (4), Patents Act.
729
S. 31 (1), Patents Act.
260 INTELLECTUAL PROPERTY LAW

(b) the date of filing of the complete specification in respect of the

patent of addition was the same as or later than the date of lodging
of complete specification in respect of the main invention.730
Where an invention which is an improvement in or modification of another
invention is the subject of an independent patent of which the patentee is
also the patentee in respect of the patent for the main invention, the
Registrar, at the request of the patentee, may by order revoke the patent
for the improvement or modification and grant to the patentee a patent
addition in respect of the improvement or modification bearing the same
date as the revoked patent.731
No renewal fees are payable in respect of a patent of addition.732 A
patent of addition may not be refused nor revoked, or invalidated on the
ground only that the invention claimed in the complete specification does
not involve any inventive step having regard to any publication or use of:
(i) the main invention described in the complete specification
relating to it; or
(ii) any improvement in, or modification of the main invention
described in the complete specification of a patent of addition to
the patent for the main invention or of an application for such a
patent addition.733
The term of patent of addition remains in force for as long as the patent
for the main invention remains in force, including any extension.734 If
the main patent is revoked, the court or the Registrar may, however, order
that the patent of addition is to become an independent patent but the
normal term shall not extend beyond the date on which the patent for the
main invention would have expired if it had not been revoked.735

Patents After Grant and Amendment

Provisional or complete specification may be amended with leave at any

time. After acceptance of provisional or complete specification, the
patentee or patent applicant may be given leave to amend:
(i) by the Registrar on an application made for that purpose;736
(ii) by the High Court in the course of the infringement or revocation
proceedings before it.737

730
S. 31 (3), Patents Act.
731
S. 31 (2), Patents Act.
732
S. 31 (5), Patents Act.
733
S. 31 (6), Patents Act.
734
S. 31 (5), Patents Act.
735
S. 31 (5), Patents Act.
736
S. 43, Patents Act.
737
S. 44, Patents Act.
 PATENT APPLICATION PROCESS 261

Amendment by Registrar

Provided that there is no action for infringement or any proceeding for

revocation of the patent are pending before the court,738 the applicant for
a patent or patentee may, at any time by request in writing, lodge at the
patent office, seek leave to amend either his provisional or complete
specification including drawings and must in making any such request,
state the nature of the proposed amendment and the reasons for the
amendment.739
An amendment of an accepted complete specification will only be
allowed if it is by way of disclaimer, correction or explanation.740 No
amendment of any specification, except by way of correcting an obvious
mistake, shall be allowed if the result would be that the specification as
amended would claim or describe matter not in substance disclosed in
the specification before amendment, or include any claim not wholly
within the scope of a claim included in the specification before
amendment.741
The application and the nature of the proposed amendment must be
advertised in the Patent Journal and in such other manner as the Registrar
may prescribe.742 Any person wishing to oppose the amendment must
within three months from the date of the advertisement give notice of
opposition to the amendment at the patent office.743 Where notice of
opposition is duly given, the Registrar must give both the applicant and
the opponent an opportunity to be heard before he determines the case.744
Where a complete specification has not been accepted, or if it has been
accepted, no notice of opposition has been given or any such notice has
been withdrawn, the Registrar shall determine whether and subject to
what conditions, if any, the amendment ought to be allowed.745

Amendment by Court

An application to amend a complete specification in an action for

infringement of or proceedings for revocation of a patent must be made
to the High Court. 746 Where the High Court allows a complete
specification to be amended, the applicant must lodge with the Registrar
a copy of the order allowing the amendment, and a copy of the order
must be advertised in the Patent Journal.747

738
S. 43 (7), Patents Act.
739
S. 43 (1), Patents Act.
740
S. 44 (3), Patents Act.
741
Ibid.
742
S. 43 (4), Patents Act.
743
Ibid.
744
S. 43 (5), Patents Act.
745
S. 43 (6), Patents Act.
746
Supra note 737.
747
Ibid.
262 INTELLECTUAL PROPERTY LAW

Like amendment by the Registrar, after a complete specification has

been accepted, it may not be amended by the High Court except by way
of disclaimer, correction or explanation, and except for the purpose of
correcting an obvious mistake, no amendment of it may be allowed the
effect of which would be that the specification as amended would claim
or describe matter not in substance disclosed in the specification before
the amendment, or that any claim of the specification as amended would
not fall wholly within the scope of a claim of the specification before the
amendment.748 Besides, where in the proceedings for revocation, the High
Court decides that the patent is invalid, it may instead of revoking the
patent, allow the specification to be amended.749

Correction of Clerical Errors

The Registrar, either on request by any interested person or without such

request, may authorise:
(i) the correction of any clerical error or omission, or error in
translation in any patent, application for a patent or document
filed pursuant to the application, or in the register;750
(ii) the amendment of any document;751
(iii) the condonation or correction of any irregularity in procedure
in any proceedings before him, if such condonation or correction
is not detrimental to the interests of any person.752
Where the Registrar proposes to make a correction otherwise than in
pursuance of such a request, he must give notice of the proposal to the
patentee or the applicant for the patent, and to any person who appears to
be concerned and must give them an opportunity to be heard before
making the correction.753 Where a request for the correction is made and
it appears to the Registrar that the correction would materially alter the
scope of the document to which the request relates, he may require notice
of the request to be advertised in the Patent Journal and be served on
persons affected by it.754 Any opposition to the request for such correction
may be lodged at the patent office and served on the applicant.755

Renewal and Restoration

A patent ceases to have effect on the expiration of the period provided

for the payment of any renewal fee, if the fee is not paid within the
following six months.756
748
S. 43 (3) and section 44, Patents Act.
749
Supra note 737.
750
S. 59 (1)(a), Patents Act.
751
Se. 59 (1)(b), Patents Act.
752
S. 59 (1)(c), Patents Act.
753
S. 59 (3), Patents Act.
754
S. 59 (4), Patents Act.
755
S. 59 (5), Patents Act.
756
Supra note 716.
 PATENT APPLICATION PROCESS 263

Where a patent has lapsed by reason of a failure to pay any renewal

fee, an application for the restoration of the patent may be made to the
Registrar by the patentee for the restoration of the patent.757 If the Registrar
is satisfied that the failure of payment of renewal fees was not intentional
and that no undue delay has occurred in making the application, he must
direct the patentee to advertise the application.758 Any interested person
affected by the application to restore may give a notice of opposition of
restoration of the patent.759 The Registrar must make an order to restore
the patent, upon payment of unpaid renewal fees, if there is no opposition
to the restoration of the patent.760 However, where notice of opposition
is given, the Registrar must notify the applicant, and after hearing both
the applicant and the objector, decide either to restore the patent, or to
dismiss the application.761

Surrender of Patents

A patentee may offer to surrender his patent at any time by notice given
to the Registrar.762 Where an offer is made, the patentee must advertise
the offer in the Patent Journal and any person interested may give notice
to the Registrar of opposition to the surrender.763 The Regis.764 If the
Registrar is satisfied after hearing the patentee and any opponent, that
the patent may properly be surrendered, he may accept the offer and by
order revoke the patent.765

Revocation of Patents

The court may revoke a patent on application made to it by any person

including the State, upon any one or more of the grounds on which the
grant of the patent may be opposed, such as that the applicant is not the
person entitled to make an application, the invention is not new, does not
involve inventive step or is not useful.766 Similarly, the court may order
the revocation of the patent on the application made by any interested
person, and relying upon any of the grounds for application for
compulsory licence.767

757
S. 33 (1), Patents Act.
758
S. 33 (2), Patents Act.
759
Ibid.
760
S. 33 (3), Patents Act.
761
S. 33 (4), Patents Act.
762
S. 52 (1), Patents Act.
763
S. 52 (2), Patents Act.
764
S. 52 (3), Patents Act.
765
S. 52 (4), Patents Act.
766
Ibid.
767
S. 22 (1) S. 50, Patents Act.
264 INTELLECTUAL PROPERTY LAW

An application for revocation of a patent must state the grounds on

which the applicant relies, and must be accompanied by a statement setting
out particulars of the facts alleged in support of the grounds, and a copy
of the application and statement shall be served by the applicant on the
patentee and the Registrar. 768 If the patentee wishes to contest the
application he must lodge at the patent office a counter-statement, setting
out particulars of the grounds upon which the application is contested
and deliver to the applicant a copy of that statement.769
Upon hearing of both parties, the court must decide whether the patent
should be revoked or whether the patent will be upheld subject to
amendments, if any, of the specifications or claims.770 However, the court
will not allow any amendment of the specification or claims if it is
established to its satisfaction that the original complete specification and
claims were not framed in good faith and with reasonable skill and
knowledge.771 An order for the revocation of a patent may be made so as
to take effect either conditionally or, in the event of failure to comply
with such conditions as may be imposed by the order with a view to
achieving the purpose.772
Where a patent has been revoked on the ground of fraud, or a patent
obtained fraudulently has been surrendered and revoked or the grant of a
patent has been refused on any of the grounds for the opposition of grant
of a patent,773 the High Court may, on the application of the person entitled
to the invention or his legal representative, direct the grant to him of a
patent for the whole or any part of the invention, bearing the same date
as the patent so revoked or as would be borne by the patent which has
been refused, if the grant had not been refused.774
Besides, where in proceedings before the High Court in connection
with opposition to the grant of a patent, the High Court has found that an
invention was in part obtained from the objector and has required that
the specification be amended by the exclusion of that part of the invention,
the High Court may direct that, on the application of the inventor or any
person claiming through or under him made within three months after
the date of the direction, a patent for that excluded part of the invention
bearing the date of and having the same effective date as the opposed
application be granted to the applicant concerned.775 However, no action
must be brought for any infringement of a patent committed before the
sealing of the patent or before the date of advertisement of acceptance of
the complete specification lodged pursuant to the patent application.776
768
S. 50 (3), Patents Act.
769
S. 50 (4), Patents Act.
770
S. 50 (7), Patents Act.
771
S. 50 (7)(i), Patents Act.
772
S. 50 (8), Patents Act.
773
S. 22 (1), Patents Act.
774
S. 51 (1), Patents Act.
775
S. 51 (2), Patents Act.
776
S. 51 (3), Patents Act.
 PATENT APPLICATION PROCESS 265

Procedure for Patenting Registration

Filing

Search and Preliminary

Examination

Publication

Substantive Examination
Objections

Arguments

Objections overcome

Grant

Renewal / Maintenance
266 INTELLECTUAL PROPERTY LAW
 267

Chapter Seventeen

OWNERSHIP AND DEALINGS IN PATENTS

Ownership

Generally speaking, inventors are the owners of their inventions and as

such entitled to patent them. However, in employment relationships, the
issue of who owns the invention between the employer and the employee
often presents a difficult situation.
The Patents Act stipulates that the persons who are entitled to apply
for a patent for an invention and thus, entitles them to claim ownership,
are the inventor or co-inventor, assignee, legal representative or any person
who qualifies under articles 2 or 3 of the Paris Convention.777 The Patents
Act defines the inventor as the person who actually devised the invention
and includes the legal representative of an inventor.778

Co-ownership

Like any other property, a patent for an invention, which has been invented
by more than one person, can be owned jointly. It is also worthy to note
that the rules of law which apply to the ownership and devolution of
movable or personal property applies in relation to patents as they apply
in relation to other incorporeal rights or choses in action.779
Where a patent for an invention is granted to two or more persons, in
the absence of contrary agreement, each of them will be entitled to an
equal undivided share in the patent.780 Furthermore, each person or
patentee either by himself or by his agents is entitled to make, use, exercise
and vend the patented invention for his own benefit without accounting
to the other patentee or patentees.781 However, where a patent is owned
jointly, a licence under that patent must not be granted and a share in the
said patent is not to be assigned to any third party without the consent of
all persons other than a licensor or assignor, who are registered as
patentees.782
It should be stated that if any person who is registered as patentee
fails to execute any instrument or to do any other thing required for the
carrying out of any direction given within fourteen days after being
777
Supra note 575.
778
Supra note 597.
779
S. 47 (5), Patents Act.
780
S. 47 (1), Patents Act.
781
S. 47 (2), Patents Act.
782
S. 47 (3), Patents Act.
268 INTELLECTUAL PROPERTY LAW

requested in writing to do so by any other persons registered as patentees,

the Registrar may, upon application made to him by any affected person,
give directions to empower the said person to execute that instrument or
to do that thing in the name and on behalf of the person in default.783
Besides, where two or more persons are registered as patentees, the
Registrar may, upon application made to him by any of those persons
give such directions as he thinks fit in relation to the sale or lease of the
patent or any interest in the patent, the grant of licenses under the patent
or the exercise of any right as regards the patent.784 However, before
giving the directions, the Registrar must give to the affected person or
persons in default an opportunity to be heard.785 In addition, the Registrar
should not give directions which affect the mutual rights or obligations
of trustees or of legal representative of a deceased person.786 It is important
to emphasise that where a patented article is sold by one of two or more
persons registered as patentees, the purchaser and any person claiming
through him in respect of such article is entitled to deal with it in the
same manner as if it had been sold by a sole patentee.787

Employees’ Inventions

The question as to who owns the patent for an invention between the
employer and the employee often gives rise to many disputes. This is
mainly because the Patents Act does not expressly deal with the issue,
and is left to the determination by the common law and principles of
equity.
Section 58 of the Patents Act permits a person (employer) to have a
patent assigned to it if it becomes entitled to the patent. The Patents Act
defines an assignee as the person, whether natural or legal, who has derived
his title to the invention directly or indirectly from the inventor thereof
or from the latter’s assignee; or the legal representative of such person.788
It is, therefore, arguable that the right of the employers to be entitled to
have the patent assigned to them by the employees forms the legal basis
for employers to claim ownership for inventions invented or arrived at
by employees in the course of their employment.
In determining whether or not the invention belongs to the employer
or employee the following steps are considered:
(i) Is the inventor an employee?
(ii) If the inventor is an employee, was he employed to invent?
(iii) If the inventor is an employee, did he create the invention in the
course of employment?
783
S. 47 (7), Patents Act.
784
S. 47 (6), Patents Act.
785
S. 47 (8), Patents Act.
786
S. 47 (10), Patents Act.
787
S. 47 (4), Patents Act.
788
Supra note 597.
 OWNERSHIP AND DEALINGS IN PATENTS 269

(i) Is the inventor an employee?

As a general rule, an employer will own the invention developed by the

employee in the ordinary course of his duties he was engaged to perform.
However, this is not the case with respect to inventions developed by the
independent contractor. The independent contractor will be the owner of
the invention, unless there is a valid and binding agreement that expressly
provides that the invention must be in writing and signed by or on behalf
of the assignee. Examples of independent contractors include research
organisations or external experts hired by the employer to carry out
particular projects.

(ii) Is the inventor employed to invent?

The employer will be entitled to claim ownership of the invention made

by the employee in the ordinary course of the duties the employee was
engaged to perform. Therefore, where the job description of an employee
does not require him to invent, the claim for ownership of the invention
by the employer will not succeed. Thus in Spencer Industries Pty Limited
v. Anthony Collins,789 the defendant who was employed principally as a
Sales Representative made technical improvements to a process and
apparatus used for re-treading tyres. The employment contract between
the plaintiff and defendant did not deal expressly with ownership of
inventions. The plaintiff, Spencer Industries, argued that it was entitled
to the invention because the employee had made it within the scope of
his employment. The court held that the employee’s role, being exclusively
sales related, did not include product invention. The employee’s invention
was not made in the course of his paid work and was, therefore, owned
by him.
Similarly, in Harris’ patent,790 wey valves are used to control the flow
of the coal dust and similar material through chutes and ducts. Reiss
Engineering manufactured wey valves under licence from a Swiss
company, Sistag. Harris was employed as manager of Reiss’ wey valve
division. In August 1978 he was notified of redundancy and left in
December 1978. In between, he invented an improved valve which he
subsequently applied to patent. Reiss Engineering sought, by reference
under the Patent Act, 1977, sections 8 and 37, to establish its ownership
of the right to apply and patent as Harris’ employer.
The court held that Harris’ duties as manager were confined to selling
wey valves and dealing in the first instance with customers. If these
difficulties were technical, he was expected to refer them to Sistag for
789
[2003] FCA 542.
790
[1985] RPC 19.
270 INTELLECTUAL PROPERTY LAW

solution. Harris’ duties which he was employed to perform would not

result in him developing the invention. Accordingly, the patent belonged
to Harris and not his employer.
Also in Electrolux v. Hudson,791 the defendant, Hudson, a senior store
man invented an adaptor for a vacuum cleaner in his spare time with the
assistance of his wife. The court held that Hudson was employed as a
store man not as a product developer and, therefore, it was not his
responsibility to invent. Accordingly, the patent belonged to Hudson.

(iii) Creation of the Invention in the Course of Employment

When determining whether the invention was made in the course of

employment by the employee, it is important to examine and consider
the employees’ terms and conditions of employment. If there is no express
term governing the ownership of the employee’s invention, in the terms
and conditions of employment, the court will consider the circumstances
and determine whether the invention was made in the course of the
employee’s usual employment. Typically, employees who invent
something outside their usual duties, without using their employers’
materials or time, will retain entitlement to their inventions.
Thus, in Electrolux Limited v. Hudson,792 the court held that there was
no implied undertaking upon the defendant to hold the invention for the
plaintiff, since he was not employed to invent and had made the invention
outside working hours without using his employer’ materials.
Similarly, in Greater Glasgow Health Board’s application,793 a junior
doctor invented a device for examining the retina of the eye. He was
employed as a Registrar of the Health Board in the Department of
Ophthalmology. His contractual duties were primarily clinical, but he
was also expected to participate in undergraduate and postgraduate
teaching and to avail himself of the research facilities provided.
The doctor devised his invention at home in his own time, while
revising for Fellowship examinations. The court held that the device,
while a useful accessory for the doctor in his contracted work, was not
an integral part of it. Therefore, the invention belonged to the employee.
It is worth noting that where there is an agreement to govern the
ownership of the invention between the employer and the employee, the
terms must be reasonable, as courts may be unwilling to enforce them
for being unreasonably in restraint of trade. Thus, in Electrolux v.
Hudson,794 in the defendant’s contract of employment there was a clause
which stated that anything invented or discovered in relation to any of
791
[1977] FSR 312.
792
Ibid.
793
[1996] RPC 207.
794
Supra note 791.
 OWNERSHIP AND DEALINGS IN PATENTS 271

the plaintiff’s products in the UK or elsewhere, had to be divulged to

them and that ownership of any such invention or process would vest in
them.
Whitford, J. held that the clause was too extensive to cover even a
person employed to research and invent and was therefore, a restraint of
trade. Contractual terms which have the effect of restraining trade are
invalid at common law. The validity of any such clause would ultimately
depend on the employee’s job description. The defendant was employed
as a storeman, not as a product developer and therefore it was not his
responsibility to invent.

Disputes of Employees’ Invention

The Patents Act provides that where a dispute arises between an employer
and a person who is or was at the material time his employee as to the
rights of the parties in respect of an invention made by the employee
either alone or jointly with other employees or in respect of any patent
granted or to be granted, the Registrar may, upon application made to
him by either of the parties, and after giving to each of them an opportunity
to be heard, determine the matter in dispute and may make such orders
for giving effect to his decision as he considers expedient.795 Besides, in
proceedings before the High Court between an employer and a person
who is or was at the material time his employee, the High Court may,
unless satisfied that one or other of the parties is entitled, to the exclusion
of the other, to the benefit of an invention made by the employee, by
order provide for the apportionment between them of the benefit of the
invention, of any patent granted or to be granted in such manner as the
High Court considers just.796

Dealings

A patent is a personal property and as such can be dealt with like any
other intellectual property. For example, it may be licensed, assigned
and devolve by operation of law. The patent grants the patentee the
exclusive right to make, use, exercise, vend, offer for sale, sell and import
the invention. However, this exclusive right is not absolute and may be
limited by compulsory licenses or state use of the patent.

795
S. 48 (1), Patents Act.
796
S. 48 (2), Patents Act.
272 INTELLECTUAL PROPERTY LAW

Assignment

A patent, like any other property can be assigned and devolve by operation
of law. The Patents Act provides that the rights granted to the patentee by
a patent shall be capable of assignment and of devolution by operation
of law and of being mortgaged and pledged.797 An assignment or mortgage
is, however, void unless it is in writing.
Where any person becomes entitled by assignment, transmission or
operation of law to a patent or to a share in a patent, or becomes entitled
as mortgagee, licensee or otherwise to any other interest in a patent, he
may apply to the Registrar for the registration of his title as proprietor, of
notice of his interest in the register.798

Licences of Right

At anytime after the sealing of a patent the patentee may apply to the
Registrar for the patent to be endorsed as ‘licenses of right’.799 Where
such an application is made, the Registrar must give notice of the
application to any person entered on the register as entitled to an interest
in the patent and, if satisfied that the proprietor of the patent is not
precluded by contract from granting licenses under the patent, must make
the entry applied for, save that no such entry or endorsement must be
made in respect of an exclusive licence.800
Where a patent is endorsed as a ‘licence of right’:
1. any person is, at any time after the endorsement is made, entitled
as of right to a licence under the patent upon such terms as may
be settled by agreement or, in default of agreement, by the
Registrar on the application of the proprietor or the person
requiring the licence;801
2. the Registrar may, on the application of the holder of any licence
granted under the patent before the endorsement, under the licence
to be exchanged for a licence of a right on the terms so settled;802
3. if in proceedings for infringement for the patent, otherwise than
by the importation of goods, the defendant undertakes to take a
licence on such terms to be settled by the Registrar, no interdict
or injunction must be granted against hire, and the amount, if
any, recoverable against him by way of damages must not exceed

797
S. 58 (1), Patents Act.
798
S. 58 (2), Patents Act.
799
S. 35 (1), Patents Act.
800
Ibid.
801
S. 35 (2)(a), Patents Act.
802
S. 35 (2)(b), Patents Act.
803
S. 35 (2)(c), Patents Act.
 OWNERSHIP AND DEALINGS IN PATENTS 273

double the amount which would have been payable by him as

licensee of such a licence had been granted before the earlier
infringement803;
4. the renewal fees payable in respect of the patent after the date of
the endorsement is one-half of the renewal fees which would be
payable if the patent were not endorsed804.
The ‘licenses of right’ granted to the patentee by the Registrar must
provide, inter alia, for the following matters:
(a) the period of the licence;805
(b) the terms of renewal, if any;806
(c) the amount of and method for payment of royalties;807
(d) arrangements for cancellation of the licence upon application
made to him by the patentee after failure by the licensee to pay
royalties or to observe any other conditions included in the licence
by the Registrar, who is authorised to include such conditions,
provided that no such licence may be cancelled unless the
licensee, after reasonable notice given to him by the patentee,
has failed to observe such conditions.808
A licensee under a licence of right may, unless, in the case of a licence
the terms of which are settled by agreement, the licence otherwise
expressly provides, be entitled to request the patentee to take proceedings
to prevent any infringement of the patent, and of the patentee refuses or
neglects to do so within two months after being requested, the licensee
may institute proceedings for the infringement in his own name as if he
were the patentee, making the patentee a defendant.809 A patentee so added
as defendant is not liable for any costs unless he enters an appearance
and takes part in the proceedings.810
At anytime after a patent has been endorsed as licence of right, the
patentee may apply to the Registrar for cancellation of the endorsement.811
Where such an application is made and the balance paid of all renewal
fees, which would have been payable if the patent, had not been endorsed,
the Registrar may, if satisfied that there is no existing licence under the
patent consent to the application.812
Within six months after the endorsement of a patent as licence of
right, any person who claims that the patentee is, and was at the time of
the endorsement, precluded by a contract in which the claimant is
804
S. 35 (2) (d), Patents Act.
805
S. 35 (3)(b)(i), Patents Act.
806
S. 35 (3)(b)(ii), Patents Act.
807
S. 35 (3)(b)(iii), Patents Act.
808
S. 35 (3)(b)(iv), Patents Act.
809
S. 35 (4), Patents Act.
810
Ibid.
811
S. 36 (1), Patents Act.
812
Ibid.
274 INTELLECTUAL PROPERTY LAW

interested from granting licenses under the patent may apply to the
Registrar for cancellation of the endorsement.813 Where the Registrar is
satisfied that the patentee is and was precluded, he must cancel the
endorsement, and the patentee is then liable to pay, within such period as
may be prescribed, a sum equal to the balance of all renewal fees which
would have been payable if the patent had not been endorsed, and if that
sum is not paid within that period the patent ceases to have effect at the
expiration of that period.814 Where the endorsement of a patent as a licence
of right is cancelled, the rights and liabilities of the patentee will be the
same as if the endorsement had not been made.815
Where an application has been made under these provisions, then, in
the case of an application by the patentee,816 any person,817 and, in the
case of an application by a person claiming that the patentee is precluded
from granting licenses818 may, within two months after the advertisement
of the application for cancellation in the patent journal, give notice to the
Registrar of opposition to the cancellation.819 Where any notice of such
opposition is given, the Registrar, before determining whether the
opposition is justified, has to afford the parties an opportunity to be
heard.820

Compulsory Licenses

A compulsory licence, also known as non-voluntary licence, is an

authorisation given by the patent office to a person without or against the
consent of the patentee or proprietor of a patent to perform acts covered
by the exclusive right of the patent. Compulsory licenses trace their origin
to the obligation, introduced by the United Kingdom Statute of
Monopolies in 1623 and recognised in most national patent laws during
the 19th century, to work locally a patent invention.
The Patent Act of 1883, provided for the grant of compulsory licenses
in cases where the patent was not being worked in the United Kingdom,
the reasonable requirements of the public were not satisfied, or any person
was prevented from working or using an invention.821 This provision
had a great influence on patent laws subsequently adopted in the United
813
S. 36 (2), Patents Act.
814
S. 36 (3), Patents Act.
815
S. 36 (4), Patents Act.
816
S. 36 (5)(b), Patents Act.
817
S. 36 (5)(a), Patents Act.
818
Supra note 813.
819
S. 36 (5), Patents Act.
820
S. 36 (6), Patents Act.
821
S. 22, Patents Act.
 OWNERSHIP AND DEALINGS IN PATENTS 275

Kingdom and its former colonies like Zambia, as well as in the

development of the International Convention for the Protection of
Industrial Property, known as the Paris Convention.
The Paris Convention, which Zambia has adopted in its legislation,
recognises the right of member countries to establish compulsory licenses
but with certain limitations under the Convention. These are:
1. Each member country must have the right to provide, in their
legislation, for the grant of compulsory licenses to prevent abuses
of the exclusive rights conferred by the patent, for example for
failure to work.822
2. Forfeiture of the patent will not be provided for except where
the grant of compulsory licenses is not sufficient to prevent
abuses. Forfeiture or revocation of a patent will not be instituted
before the expiration of two years from the grant of the first
compulsory licence.823
3. A compulsory licence may not be applied for on the ground of
failure to work or insufficient working before the expiration of
four years from the date of filing of the patent, or three years
from the date of the grant of the patent whichever period expires
last. It must be refused if the patentee justifies his inaction by
legitimate reasons. Such a compulsory licence must be non-
exclusive and must not be transferable even in the form of the
grant of a sub-licence except with that part of the enterprise or
goodwill which exploits such licence.824 It is worth noting that
these provisions have been incorporated in Zambia’s Patent
Act.825
The grounds upon which compulsory licence may be granted have been
broadened in most national patent laws around the world. In addition to
the ground of the lack of working the patent, most national patent laws
have extended the grounds for grant of compulsory licenses to cases of
public interest, government use and anti-competitive behaviour. Moreover,
in countries such as Zambia and the United Kingdom, compulsory licenses
have been provided for certain inventions relating to food, medicine and
surgical or curative device.826 In short the Patents Act provides for two
types of compulsory licences. The first category of compulsory licences
is one granted to prevent abuse of a patent that might result from the
exercise of the exclusive right. The second category of compulsory
licences are granted in cases where public interest, such as defence, health,
food, is deemed necessary.
822
Article 5A (2), Paris Convention.
823
Article 5A (3), Paris Convention.
824
Article 5A (4), Paris Convention.
825
S. 37, Patents Act.
826
S. 38, Patents Act.
276 INTELLECTUAL PROPERTY LAW

Grounds for Compulsory Licence in Case of Abuse of Patent

The Patents Act provides for the grant of compulsory licences to prevent
abuse which may result from the exercise of the exclusive right conferred
by the patent. Thus, at any time after the expiration of three years
subsequent to the date on which the patent was sealed or four years
subsequent to the date on which the application for the patent was filed,
any person may apply to the Registrar for compulsory licensing on one
or more of the following grounds:827
1. Where the patented invention capable of being commercially
worked in Zambia, is not being so worked and there is no
satisfactory reason for such non-working.828
2. Where the working of the invention in Zambia on a commercial
scale is being prevented or hindered by the importation of the
patented article by the patentee or persons claiming under him,
or by persons directly or indirectly purchasing from him or by
persons against whom the patentee is not taking or has not taken
proceedings for infringement.829
3. Where the demand for the patented article in Zambia is not being
met to an adequate extent and on reasonable terms.830
4. Where by reason of the refusal of the patentee to grant a licence
or licenses upon reasonable terms, the trade or industry of Zambia
or the trade of any person or class of persons trading in Zambia,
or the establishment of any new trade or industry in Zambia, is
being prejudiced, and it is in the public interest that a licence or
licenses should be granted.831
5. Where any trade or industry in Zambia, or any person or class of
persons engaged is being prejudiced by unfair conditions by the
patentee to the purchase, hire, licence or use of the patented article,
or the using or working of the patented process.832
6. Where a condition which is considered a restraint of trade and
contrary to public policy has been inserted in any contract made
in relation to the sale or lease of or any licence to use or work
any article or process by the patent.833
Every application for a compulsory licence must set out fully the nature
of the applicant’s interest, the facts on which he bases his case and the
relief he seeks.834 Where the Registrar, after consideration of any such
827
S. 37 (1), Patents Act.
828
S. 37 (6)(a), Patents Act.
829
S. 37 (6)(b), Patents Act.
830
S. 37 (6)(c), Patents Act.
831
S. 37 (6)(d), Patents Act.
832
S. 37 (6)(e), Patents Act.
833
S. 37 (6)(f), Patents Act.
834
S. 37 (2), Patents Act.
 OWNERSHIP AND DEALINGS IN PATENTS 277

application, is satisfied that the applicant has a bona fide interest, and
that a prima facie case for relief has been made out, he must direct the
applicant to serve such application and relevant documents on the patentee
and any other persons appearing from the register to be interested in the
patent and to advertise the application in the patent journal.835 At any
time within two months from the date of the advertisement the Registrar
may, allow the patentee or any other person who wishes to oppose the
application for compulsory licence to deliver to the Registrar a counter-
statement setting out fully the grounds on which the application is
opposed.836 Where the Registrar is satisfied that the parties have complied
with the requirements, he must transmit the relevant documents to the
High Court which will hear the matter and make such order as it deems
just.837
The High Court may order the grant to the applicant of a compulsory
licence on such terms as it may think expedient, including a term
precluding the licensee from importing into Zambia any goods protected
by the patent.838
The existence of a compulsory licence granted solely on the ground
that an invention is not being worked in Zambia on a commercial scale
must not preclude the grant of further licences, including compulsory
licences, in respect of that invention, but the holder of any compulsory
licence is not entitled to transfer that licence or grant a sub-licence except
to a person to whom the business, or the part of the business in connection
with which the rights under the licence were exercised, has been
transferred.839

Grant of Compulsory Licences in the Public Interest

In addition to the grant of compulsory licence in the event of abuse, the

Patent Acts provides for the grant of a compulsory licence where such
grant is deemed necessary to protect the public interest.840 Compulsory
licences granted in the public interest can be grouped into two, namely,
those that are granted in favour of private parties841 and those which are
granted in favour of the government itself or in favour of a third party
acting on behalf of the government.842
A good example of a compulsory licence granted in favour of private
parties is one concerning ‘dependent patents’. Such compulsory licences
835
S. 37 (3), Patents Act.
836
S. 37 (4), Patents Act.
837
S. 37 (5), Patents Act.
838
S. 37 (7), Patents Act.
839
S. 37 (13), Patents Act.
840
S. 37(6)(d), Patents Act.
841
Supra note 825.
842
S. 40, Patents Act.
278 INTELLECTUAL PROPERTY LAW

are granted in order to remedy the situation that arises when it is not
possible, without performing acts covered by one patent that is the
‘dominant patent’, to work an invention claimed in another patent, called
the ‘dependent patent’. In such a case, and if the owner of the dependent
patent has not been able to conclude a licence agreement with the owner
of the dominant patent on reasonable terms, the owner of the dependent
patent may apply to obtain a compulsory licence under the dominant
patent. Without this possibility, the owner of the dominant patent is able
to prevent the working of the invention claimed in the dependent patent
by refusing to grant a licence.843
Besides, the Patents Act permits the government to exploit the patent
without the consent of the owner of the patent, or to have third parties
exploit the patent on its behalf in the public interest. The areas in which
the government can do that is, in the national defence, public health and
national economy.

State Use of Patents

Any government department or any person authorised in writing by the

Minister may do any of the following acts in relation to a patented
invention for the services of the state, without the consent of the patentee
or proprietor of the patent.844
1. Make, use, exercise or sell any articles which are no longer
required for the purpose for which they are made.845
2. Sell or offer for sale of inventions to a foreign country for defence
purposes of that country.846
The authority of a government department in respect of an invention
may be given either before or after the patent is granted and either before
or after the acts in respect of which authority is given are done, and may
be given to any person, whether or not he is authorised directly or
indirectly by the patentee to make, use, exercise or vend the invention.847
Where any use of an invention is made by or with the authority of the
Minister, then, unless it appears to him that it would be contrary to the
public interest so to do, the Minister must notify the patentee as soon as
practicable after the use is begun, and furnish him with such information
as to the extent of the use as he may from time to time require.848 The
purchaser of any articles sold in the exercise of powers conferred by the
said provisions, or any person claiming through him, must have power
843
Supra note 16, at pp. 37 - 38.
844
Section 40 (1), Patents Act.
845
Section 40 (6)(a), Patents Act.
846
Section 40 (6)(b), Patents Act.
847
Section 40 (4), Patents Act.
848
Section 40 (5), Patents Act.
 OWNERSHIP AND DEALINGS IN PATENTS 279

to deal with them in the same manner as if the patent were held on behalf
of the President.849
The government is required to compensate the patentee or proprietor
of a patent where any use of the said patent by a government department
is made after the publication of the patent for the invention. The said
compensation must be made upon such terms as may be agreed upon
either before or after the use, between the Minister responsible for finance,
or in default of such agreement, on such terms as may be determined by
the court.850 Where, however, any use of the invention, before its effective
date, has been duly recorded by or tried by or on behalf of a government
department, otherwise than in consequence of the communication made
directly or indirectly by the patentee or any person from whom he derives
title, such use may be made by such government department or person
free of any royalty or other payment to the patentee.851
The Patents Act contains special provisions for the use of inventions
by the State during emergency. Thus, during any period of emergency
the powers exercisable in relation to an invention by a government
department or a person authorised by the Minister, include power to make,
use, exercise and vend the invention for any purpose which appears to
the Minister necessary or expedient:
(i) for the efficient prosecution of any war in which the Republic
may be engaged;852
(ii) for the maintenance of supplies and services essential to the
life of the community;853
(iii) for securing sufficiency of supplies and services essential to
the well-being of the community;854
(iv) for promoting the productivity of industry, commerce and
agriculture855; for fostering and directing exports and reducing
imports of any classes, from all or any countries and for
redressing the balance of trade;856
(v) generally, for ensuring that all the resources of the community
are available for use, and are used, in a manner best calculated
to serve the interests of the community;857
(vi) for assisting the relief of suffering and the restoration and
distribution of essential supplies and services in any country or
territory outside Zambia that are in grave distress as a result of
war;858
849
S.40 (7), Patents Act.
850
S. 40 (3), Patents Act.
851
S. 40 (2), Patents Act.
852
S. 41 (2)(a), Patents Act.
853
S. 41 (2)(b), Patents Act.
854
S. 41 (2)(c), Patents Act.
855
S. 41 (2)(d), Patents Act.
856
S. 41 (2)(e), Patents Act.
857
S. 41 (2)(f), Patents Act.
858
Ibid.
280 INTELLECTUAL PROPERTY LAW

Disputes of State use of Patents

The Patents Act empowers the High Court to determine disputes that
may arise in the use of the patent by the State.859 These disputes relate to:
(i) the exercise by a government department or a person authorised
by the Minister;860
(ii) the terms for the use of an invention for the services of the state;861
(iii) the compensation payable upon a reference to the High Court;862
(iv) the right of any person to receive any part of a payment
determined.863
In any proceedings to which a government department is a party, the
Minister may, if the patentee is a party to the proceedings, apply for
revocation of the patent upon any ground upon which a patent may be
revoked under the Patents Act, and in any case, put in issue the validity
of the patent without applying for its revocation.864
In determining any dispute between a government department and
any person as to the terms for the use of an invention for the services of
the State, the High Court must have regard to any benefit or compensation
which that person or any person from whom he derives title may receive,
or may be entitled to receive, directly or indirectly from any government
department in respect of the invention in question.865
If in such proceedings any question arises whether an invention has
been recorded or tried so as to exclude any right to compensation, and
the disclosure of any document recording the invention, or of any evidence
of the trial or use, would in the Minister’s opinion be prejudicial to the
public interest, the disclosure may be made confidentially to counsel
appearing for the other party or to an independent expert agreed upon by
the parties.866

Inventions Relating to Food and Medicine

Where a patent is in force in respect of:

(i) a substance capable of being used as food or medicine, or in the
production of food or medicine;867
(ii) a process for producing food or medicine;868 or

859
S. 42 (1), Patents Act.
860
S. 42 (1)(a), Patents Act.
861
S. 42 (1)(b), Patents Act.
862
S. 42 (1)(c), Patents Act.
863
S. 42 (1)(d), Patents Act.
864
S. 42 (2), Patents Act.
865
S. 42 (4), Patents Act.
866
S. 42 (3), Patents Act.
867
S. 38 (1)(a), Patents Act.
868
S. 38 (1)(b), Patents Act.
 OWNERSHIP AND DEALINGS IN PATENTS 281

(iii) any invention capable of being used as or part of a surgical or

curative device;869
the High Court must, on application made to it by any person interested,
order the grant to the applicant of a licence under the patent on such
terms as it thinks fit unless it appears to the court that there are good
reasons for refusing the application.
In setting the terms of licences, the court must endeavour to secure
that food, medicines, and surgical and curative devices are available to
the public at the lowest prices consistent with the patentees deriving a
reasonable advantage from their patent rights. A licence granted by the
court must entitle the licensee to make, use, exercise and vend the
invention as food or medicine, or for the purposes of the production of
food or medicine, or as part of a surgical or curative device, but for no
other purposes.870
Any order by the High Court for the grant of a licence must, without
prejudice to any other method of enforcement, have effect as if it were
an agreement executed by the patentee and all other necessary parties
granting a licence in accordance with the order.871

Compulsory Licences under the TRIPS Agreement

As compulsory licences interfere with the exclusive rights of the owner

of the patent, they are a source of concern not only at the national level,
but also to the international system of protecting patents. In order to
provide guidance as to the government use of compulsory licence the
Trade Related Aspects of Intellectual Property (TRIPS) Agreement
provides some elaborate conditions the Member countries should adhere
to. Article 31 of the TRIPS Agreement allows Members to authorise
third parties to exploit a patented invention, even against the will of the
patent owner, provided certain conditions are respected.
The TRIPS Agreement does not prescribe nor limit the grounds on
which such authorisation or consent may be granted. Where the law of a
Member of the TRIPS Agreement allows for such compulsory licences,
including licences by or on behalf of the government, or provided for the
other uses of the patented invention without the authorisation of the patent
owner, the following conditions must be complied with:
(a) Authorisation of a compulsory licence must be considered on its
individual merits. This means the applications for compulsory
licences must be considered on a case by case basis.
869
S. 38 (1) (c), Patents Act.
870
S. 38 (3), Patents Act.
871
S. 39 (1), Patents Act.
282 INTELLECTUAL PROPERTY LAW

(b) A compulsory licence can only be granted if the proposed

compulsory licensee has made efforts to obtain authorisation from
the right holder on reasonable commercial terms and conditions
and that such efforts have not been successful within a reasonable
period of time. This requirement may be waived by a Member
in the case of a national emergency or other circumstances of
extreme urgency or in cases of public non-commercial use. In
situations of national emergency or other circumstances of
extreme urgency, or in cases of public non-commercial use.
(c) The scope and duration of compulsory licence must be limited
to the purpose for which it was authorised. However, in the case
of semi-conductor technology, a compulsory licence may only
be granted for public non-commercial use or to remedy a practice
determined after judicial or administrative process to be anti-
competitive.
(d) A compulsory licence must be non-exclusive.
(e) A compulsory licence may not be assigned without that part of
the enterprise or goodwill which enjoys such use under the
licence.
(f) A compulsory licence must be authorised predominantly for the
supply of the domestic market of the Member that authorises the
licence.
(g) A compulsory licence must be liable to be terminated, subject to
adequate protection of the legitimate interests of the compulsory
licensee, if and when the circumstances that led to its grant have
ceased to exist and are unlikely to recur. The competent authority
shall have the authority to review, upon motivated request, the
continued existence of these circumstances.
(h) The patent owner or right holder must be paid adequate
remuneration in the circumstances of each case, taking into
account the economic value of the authorised use.
(i) The legal validity of any decision relating to the grant of a
compulsory licence must be subject to judicial review or other
independent review by a distinct higher authority in that Member
that granted the licence.
(j) Any decision relating to the remuneration provided in respect of
a compulsory licence must be subject to judicial review or other
independent review by a distinct higher authority in that Member
that granted the licence.
(k) A Member is not obliged to apply the conditions set forth in
subparagraphs (b) and (f) where the compulsory licence is
permitted to remedy a practice determined after judicial or
administrative process to be anti-competitive. The need to correct
 OWNERSHIP AND DEALINGS IN PATENTS 283

anti-competitive practices may be taken into account in

determining the amount of remuneration in such cases. The
competent authority of the Member must have the authority to
refuse termination of a compulsory licence if and when the
conditions that led to its grant are likely to recur.
(l) Where compulsory licence is authorised to permit the exploitation
of a patent (‘the second patent’ or ‘dependent patent’) which
cannot be exploited without infringing another patent (‘the first
patent’), the following additional conditions must be applied:
(i) the invention claimed in the second patent must involve
an important technical advance of considerable economic
significance in relation to the invention claimed in the
first patent;
(ii) the owner of the first patent is to be entitled to a cross-
licence on reasonable terms to use the invention claimed
in the second patent; and
(iii) the use authorised in respect of the first patent must be
non-assignable except with the assignment of the second
patent.872

Exclusive Licence

The Patents Act defines exclusive licence as a licence from a patentee,

which confers on the licensee, or persons authorised by him, to the
exclusion of all other persons, including the patentee, any right in respect
of the patented invention.873 The exclusive licence, under the Patents
Act, can be granted either by the patentee or by the High Court.874
Where the invention is not being worked and cannot be so worked on
commercial scale within Zambia because of the lack of capital by the
patentee, and the applicant or any other person is able and willing to
provide such capital, the High Court may, on such terms as it may think
just, order the grant of an exclusive licence to the said applicant or any
other person.875
The terms of any exclusive licence ordered to be granted by the High
Court must, while bearing in mind the risks to be undertaken by the
licensee in providing the capital and working the invention, contain
provisions:

872
Supra note 16, at pp. 39 - 40.
873
Supra note 597.
874
S. 37 (8), Patents Act.
875
Ibid.
284 INTELLECTUAL PROPERTY LAW

(i) to secure to the patentee the maximum royalty compatible with

the successful working of the invention in Zambia on a commercial
scale and at a reasonable profit;876
(ii) to guarantee to the patentee a minimum yearly sum by way of
royalty, if and so far as it is reasonable to do so;877
It must be stated that the High Court has the discretion to revoke the
exclusive licence if the licensee fails to:
(a) work the invention within what is specified in the order;
(b) expend the amount specified in the licence as being the amount
which he is able and willing to provide for the purpose of working
the invention on a commercial scale within Zambia; or
(c) pay to the patentee the royalties payable in terms of the licence.878
The High Court order directing the grant of an exclusive licence operates
to divest the patentee of any right which he may have as patentee to work
or use the invention, and to revoke all existing licences, unless otherwise
provided in the order, and may, if considered fair and equitable by the
High Court, be made subject to the condition that the licensee gives proper
compensation to be fixed by the High Court for any money expended by
the patentee or any existing licensee in developing or working the
invention.879 In cases of infringement, a licensee is entitled to call upon
the patentee to institute any infringement of the patent in question. Where
the patentee fails within two months after being called upon by the licensee
to institute such proceedings, the licensee may himself institute such
proceedings as if he were the patentee, making the patentee a defendant
to the action. But the patentee is not to be made liable for any costs in
connection with such proceedings, unless he enters an appearance and
takes part in those proceedings.880

Restrictions on Contracts

The Patents Act prohibits restrictive conditions contained in the patent

agreements. Thus, it is not lawful in any contract made in relation to the
sale or lease of or a licensee to use or work any article or process protected
by a patent to insert conditions that will have the effect of:
(i) prohibiting or restricting the purchaser, lessee or licensee from
using any article or class of articles, whether patented process,
supplied or owned by any person other than the seller, lessor or
licensor or his nominee; or

876
S. 37 (9)(a), Patents Act.
877
S. 37 (9)(b), Patents Act.
878
S. 37 (9), Patents Act.
879
S. 37 (11), Patents Act.
880
S. 37 (12), Patents Act.
 OWNERSHIP AND DEALINGS IN PATENTS 285

(ii) requiring the purchaser, lessee or licensee to acquire from the

seller, lessor or licensor or his nominee any article or class of
articles not protected by the patent.881
Where any such condition is included in the contract, it shall be null and
void as being in restraint of trade and contrary to public policy.
Nonetheless, this will not be applicable to cases where:
(a) the seller, lessor or licensor proves that at the time the contract
was entered into, the purchaser, lessee or licensee had the option
of purchasing the article or obtaining a lease or licence on
reasonable terms without such conditions;882
(b) and the contract entitles the purchaser, lessee or licensee to relieve
himself of his liability to observe any such condition on giving
the other party three months’ notice in writing and payment, if
compensation for such relief, in the case of a purchase of such
sum, or in case of a lease or licence of such rent or royalty for the
residue of the term of the contract as may be fixed by the
Registrar.883
Any contract relating to the lease of or licence to use or work of any
patented article or patented process may, at any time after the patent or
all the patents by which the article or process was protected in Zambia at
the time of the making of the contract has or have ceased to be in force,
be determined by either party on giving three months’ notice in writing
to the other party.884

881
S. 49 (1), Patents Act.
882
S. 49 (i), Patents Act.
883
S. 49 (ii), Patents Act.
884
S. 49 (2), Patents Act.
286 INTELLECTUAL PROPERTY LAW
 287

Chapter Eighteen

INFRINGEMENTS, DEFENCES AND

REMEDIES

Infringement

A patent grants to the patentee the right to decide who should or who
should not exploit his patented invention. Furthermore, a patent enables
the patentee to enforce his rights against any person who infringes his
patent. A person infringes a patent for the invention if, while the patent is
in force, he does any of the following acts within Zambia without the
consent of the proprietor of the patent.
(a) Where the invention is a product, he makes, uses, exercises, offers
for sale, sells or imports the product;
(b) Where the invention is a process, he uses, offers for sale, sells or
imports any product obtained directly by means of that process.885
There are various ways in which infringement of patent rights might arise.
Firstly, the infringement could occur or take place where a third party,
without any attempt to avoid the infringement, deliberately infringes a
patent. This may involve direct copying of the invention or minor
variations or modifications of the patent.
The second type of infringement occurs where the infringement is
deliberate, but the infringer makes attempts to avoid the appearance of
infringement. It often happens that once the invention is disclosed, either
by publication of the patent document or sale of the product incorporating
the invention, third parties are given ideas of the problem and how the
invention will solve the said problem. Hence third parties may come up
with an alternative invention to deal with or solve the same problem.
Thus, while third parties may be genuinely trying to design around the
patent whilst still making use of the basic idea of the inventor, the result
achieved may fall within the scope of the claims of the patent.886 It must
be observed that this is the most common form of infringement faced by
the patent owners and gives rise to most litigation.
The third type of infringement arises in the case of accidental
infringement. Accidental infringement often happens where, for example,
research departments of different organisations may all be working on a
similar problem, or where several companies who have been asked to
tender for a contract to solve a particular problem or to achieve a certain
885
Supra note 728.
886
Supra note 16, at p. 29.
288 INTELLECTUAL PROPERTY LAW

result, and in so doing come up with similar ideas to that which may
have been involved in the patented invention. Thus, although the patentee
may feel that his invention has been copied, the third party has in fact
arrived at a similar if not identical solution through a different route.887

Elements of Infringement

In order to establish infringement the proprietor of the patent must prove

the following four elements

(i) Carrying out of Prohibited Act

The proprietor of a patent enjoys the exclusive right to exploit the patent.
Thus, the Patents Act prohibits acts which involve the making, using,
exercising, selling, offering for sale, or importing the patented product
or use or exercise of the patented process, or the making, using, selling,
offering for sale or importing the product directly obtained through the
patented process.888
However, the Patents Act provides exceptions to the exclusive right,
so that any person who does any of the acts aforesaid does not infringe
the patent. These exceptions are:
(a) Where the patented product is made for the sole purpose of
scientific research and experiment.
(b) Where a third party had started making the product before the
date when the patent application for invention embodied in the
product was lodged.889
(c) Where the patented product is made under a compulsory licence
or non-voluntary licence or under an authorisation granted by
the government on public interest grounds.890
Prohibited act must have been carried out after the publication of the
patent application.
Any person who carries out an infringing act in relation to the patent
before its details are made available to the public through publication
will not be held to have infringed the said patent.891

(ii) Prohibited act must have been carried out in the country where
the patent was granted

Patents are territorial in nature and as such do not extend beyond the
borders of the country which granted the patent. Therefore, the patent
law of one country has no effect in any other country.
887
Ibid.
888
Supra note 728.
889
Section 53 (4), Patents Act
890
Sections 37 - 41, Patents Act
891
Supra note 889.
 INFRINGEMENTS, DEFENCES AND REMEDIES 289

(iii) Prohibited act must be in relation to a product or process falling

within the scope of a claim of the patent

The fourth element in establishing infringement is one which is often the

decisive point in any patent litigation. The scope or subject-matter of the
patent is determined by claims.892 The meaning of the claims is ultimately
interpreted by the courts. In interpreting claims, the courts, try to determine
what structure the language of the claims defines, and whether or not the
alleged infringing structure corresponds to the structure defined in the
language of the claims.
In trying to answer the question whether a particular structure infringes
a particular claim of a patent for invention, the claim must be broken
down into its individual elements and then compare them with the
elements of alleged infringement to see whether they fit.893 If the claim
corresponds to the alleged infringement without stretching the words of
the claim too far, then there may be infringement. However, if, on the
other hand, the claim contains limitation to something, which is not found
in the alleged infringement, there may be no infringement.894
When comparing the individual elements of a claim against the
corresponding elements of the alleged infringement, the following
questions have to be answered:
(a) Are all the elements of the claim present in the alleged
infringement?
(b) Do all the elements have the same form?
(c) Do all the elements perform the same function?
(d) Do the elements have the same relationship to the other
elements?
If the answer to each of these questions is in the affirmative, then
infringement is established, depending, of course, on whether the claim
in question is valid.895
In Catnic Components Limited v. Hill and Smith Limited,896 the
plaintiff owned a patent for a type of steel lintel which specified in its
working that the rear side of the lintel should be vertical. The defendants
produced a similar lintel, but in an attempt to avoiding infringing the
patent had constructed the rear side of their lintel at an angle of 6 degrees
from the vertical which actually reduced its load bearing potential by 0.6
degrees. The court was asked to consider whether or not this minor
variation excluded the makers of the derivative lintel from infringement
liability.
892
Section 14 (3)(c), Patents Act.
893
Supra note 16, at pp. 31 - 32.
894
Ibid., at p. 31.
895
Ibid.
896
[1982] RPC 183.
290 INTELLECTUAL PROPERTY LAW

Lord Diplock found that there was infringement on the facts,

determining that the claims with the patent specification were aimed at
other manufacturers in the same field. He stated:

My Lords, a patent specification is a unilateral statement

by the patentee, in words of his own choosing, addressed
to those likely to have a practical interest in the subject
matter of his invention, that is ‘skilled in the art’, by which
he informs them of what he claims to be the essential
features of the new product or process for which the letters
patent grant him a monopoly. It is those novel features
only that he claims to be essential that constitute the so-
called ‘pith and marrow’ of the claim. A patent specification
should be given a purposive construction rather than a
purely literal one derived from applying to it the kind of
meticulous verbal analysis with which lawyers are too often
attempted by their training to indulge. The question in each
case is: whether a person with practical knowledge and
experience of the kind of work in which the invention was
intended to be used, would understand that strict
compliance with a particular descriptive word or phrase
appearing in a claim was intended by the patentee to be an
essential requirement of the invention so that any variant
would fall outside the monopoly claimed, even though it
could have one material effect upon the way the invention
worked.897

Similarly, in Improver Corporation v. Remington Consumer Products

Limited,898 the plaintiffs owned a European patent for a depilatory device
known as an Epilady which featured rotating helical wire spring designed
to trap and pluck out body hair at high speed. The defendant had placed
on the market a similar device called ‘smooth and silky’. The principal
difference between the two products was that the plaintiffs’ device used
a high speed rotating arc-shaped spring, while the defendants’ product
used a high speed rotating arc-shaped synthetic rubber rod with slits cut
in it to capture hairs.
Hoffman, in determining whether infringement had occurred said:

The proper approach to the interpretation of English patents

registered under the Patent Act, 1949 was explained by
Lord Diplock in Catnic Components Limited v. Hill and
897
Ibid, at p. 244.
898
[1990] FSR 181.
 INFRINGEMENTS, DEFENCES AND REMEDIES 291

Smith Limited. The language should be given a ‘purposive’

and not necessarily a literal construction, if the issue was
whether a feature embodied in an alleged infringement
which fell outside the primary, literal or a contextual
meaning of a descriptive word or phrase in the claim (‘a
variant’) was nevertheless within its language as property
interpreted, the court should ask itself the following three
questions posed in Catnic:

1. Does the variant have material effect upon the

way the invention works? If yes, the variant is
outside the claim. If no…
2. Would this (that is, that the variant had no
material effect) have been obvious at the date
of publication of the patent to a reader skilled
in the art. If no, the variant is outside the claim.
If yes…
3. Would the reader skilled in the art nevertheless
have understood from the language of the claim
that the patentee intended that strict compliance
with the primary meaning was an essential
requirement of the invention. If yes, the variant
is outside the claim.

On the other hand, a negative answer to the last question

would lead to the conclusion that the patentee was intending
the word or phrase to have not a literal but a figurative
meaning denoting a class of things which included the
variant and the literal meaning, the latter being perhaps
the most perfect, best known or striking example of the
class.899

As a result of considering the original claims for the Epilady patent,

Hoffman, J. considered that the claim in fact referred to a helical spring
which could not be interpreted broadly to include rubber rods and the
infringement action was dismissed.

Proceedings for Infringement

The patentee or the exclusive licensee may only instruct an action for
infringement of a patent. Such action will be heard and determined by
the court and the following are to apply:900

899
Ibid., at p. 189.
900
S. 53 (1), Patents Act.
292 INTELLECTUAL PROPERTY LAW

1. Any ground upon which a patent may be revoked may be relied

upon by way of defence;901
2. The defendant may, by way of counter-claim in the action, apply
for the revocation of the patent;902
3. The plaintiff must, with his statement of claim or declaration or
on the order of the court at any subsequent time, deliver full
particulars of the infringement complained;903
4. The defendant must, within his statement of defence or plea or
on the order of the court at any subsequent time, deliver particulars
of any objections on which he relies in support;904
5. At the hearing no evidence must be admitted of any infringement
or on any objections of which particulars have not been so
delivered;905
6. The court may allow the patentee to amend his specification
subject to such terms as to costs, advertisement or otherwise as it
may impose.906
In any action for a patent infringement where an exclusive licensee is the
plaintiff, the patentee, unless he is joined as plaintiff in such action is
added as defendant. However, a patentee so added as defendant must not
be liable for any costs unless he enters an appearance and takes part in
the proceedings.907
Where the patentee is the plaintiff in a patent infringement action, he
must notify the exclusive licensee and any such licensee are entitled to
intervene as a co-plaintiff and to recover damages he may have suffered
because of the infringement.908 A patent infringement will not arise in
respect of an infringement, which took place before the publication of a
patent application.

Defences

A person sued for an alleged infringement of a patent has various defences

including statutory defences, challenge the validity of the patent, and
apply to court for a declaratory non-infringement.
The statutory defences to patent infringement include:
(i) the alleged infringement was done during the lapse of the
patent;909
901
S. 53 (1)(a), Patents Act.
902
S. 53 (1)(b), Patents Act.
903
S. 53 (1)(c), Patents Act.
904
S. 53 (1)(d), Patents Act.
905
S. 53 (1)(e), Patents Act.
906
S. 53 (1)(f), Patents Act.
907
S. 53 (2), Patents Act.
908
S. 53 (3), Patents Act.
909
S. 34, Patents Act.
 INFRINGEMENTS, DEFENCES AND REMEDIES 293

(ii)
the alleged infringement was carried out after the patent had
been revoked;910
(iii) the alleged infringement occurred before the publication of
the patent application;911
(iv) the infringing activity was done for experimental purposes
relating to the subject matter of the invention;
(v) the infringer is a government department or any person
authorised in writing by the Minister to make, use or exercise
the invention for the service of the state.912
In addition to statutory defences the person sued for infringement can
challenge the validity of the patent on a number of grounds such as that
the invention is not new, lacks novelty or not useful; and the claims are
defective in that they do not sufficiently and clearly define the subject
matter for which the protection is claimed.913
Besides, the alleged infringer can apply to the court for a declaration
of non-infringement. Thus, the court in proceedings between any person
and the proprietor of the patent or holder of the exclusive licence under
the patent, may make a declaration that an act does not or a proposed act
would not constitute an infringement of the patent, and may do so
notwithstanding, that no assertion to the contrary has been made by the
proprietor or licensee, if it is shown that:
(i) the plaintiff has applied in writing to the patentee or licensee for
a written acknowledgement to the effect of the declaration
claimed, and has furnished him with full particulars in writing
of the process or articles in question; and
(ii) the patentee or licensee has refused or neglected to give such an
acknowledgement.914

Groundless Threats of Infringement Proceedings

Where any person, whether or not the proprietor of or entitled to any

right in a patent, by circulars, advertisements or otherwise threatens any
other person with proceedings for infringement of a patent, any person
aggrieved by the threats may bring proceedings in the court against him.915
In any such proceedings, unless the defendant proves that the acts in
respect of which proceedings were threatened, constitute or, if done, would
constitute, an infringement of a patent or if rights arising from the
publication of specification in respect of a claim of the specification not
910
S. 51, Patents Act.
911
Supra note 672.
912
Supra note 593.
913
Supra note 821.
914
S. 57 (1) (a)(b), Patents Act.
915
S. 56 (1), Patents Act.
294 INTELLECTUAL PROPERTY LAW

shown by the plaintiff to be invalid, the plaintiff will be entitled to the

following relief:
(i) a declaration to the effect that the threats are unjustifiable;
(ii) an injunction or interdict against the continuance of the threats;
and
(iii) such damages, if any, he has sustained as a result of the threat.916
The defendant in any such action may apply, by way of counter-claim in
the action, for any relief to which he would be entitled in a separate
action in respect of any infringement by the plaintiff of the patent to
which the threat relates.917 It should be noted that a mere notification of
the existence of a patent does not constitute a threat of proceedings.918

Remedies

The remedies available, under the Patents Act, to the patent owner where
infringement has been established are civil sanctions and criminal
sanctions. While civil sanctions are available in all cases of infringement,
criminal sanctions are available only under particular circumstances, where
the infringement was committed intentionally.

Civil Sanctions

The civil sanctions available in a patent infringement are:919

(i) injunction or interdict;
(ii) damages;
(iii) an account for profits;
(iv) seizure and destruction of the infringing products or tools used
to manufacture those products;
(v) declaration that the patent is valid and has been infringed.920
The damages awarded to the owner of the patent in infringement
proceedings are calculated in two different ways. The first method is to
set damages at the amount of the financial loss suffered as a result of the
infringement by the patent owner. Under the second method the damages
are calculated based on accounts for profits. This does not mean that the
patent owner will receive all the profits the infringer has made on the
infringing articles, but, nonetheless, an account of profits can be very
near to the actual profits made. In General Tyre and Rubber Company v.
Firestone Tyre and Rubber Company Limited,921 Lord Wilberforce stated:
916
S. 56 (2), Patents Act.
917
S. 56 (4), Patents Act.
918
S. 56 (3), Patents Act.
919
See earlier discussions under chapter 13.
920
S. 53 (3), Patents Act.
921
[1975] RPC 203.
 INFRINGEMENTS, DEFENCES AND REMEDIES 295

As in the case of any tort…the object of damages is to

compensate for loss or injury. The general rule at any rate
in relation to ‘economic’ torts is that the measure of
damages is to be, so far as possible, that sum of money
which will put the injured party in the same position as he
would have been in if he had not sustained the wrong.

The infringer will not be liable to damages if he proves that, at the date
of the infringement, he was not aware, and had no reasonable grounds
for supposing and had no reasonable means of making himself aware,
that the patent existed.922

Criminal Sanctions

Where criminal sanctions are available for patent infringement the

punishment is imprisonment or a fine or both. The two offences, under
the Patents Act, punishable by criminal sanctions relate to unauthorised
claim of patent right and unauthorised use of certain words. Thus, any
person who falsely represents that any article sold by him is a patented
article is guilty of an offence. Likewise, a person who sells an article
having stamped, engraved, embossed, or otherwise applied the word
‘patent’ or ‘patented’ or any other word expressing or implying that the
article is patented will be deemed to represent that the article is a patented
article.446 Furthermore, any person, other than that appointed under the
Patents Act, who uses on his place of business or any document issued
by him or otherwise, the words ‘patent office’ or any other words
suggesting that his place of business is or is officially connected with the
patent office will be guilty of an offence.924 The penalty for the above
stated offences is a fine not exceeding fifteen thousand penalty units925
or imprisonment for a term not exceeding three years, or both.926

922
S. 55 (1), Patents Act; see also S. 45, Patents Act.
923
S. 87, Patents Act.
924
S. 88, Patents Act.
925
1 penalty unit is equivalent to K180.00.
926
S. 89, Patents Act.
296 INTELLECTUAL PROPERTY LAW
 297

PART IV: DESIGNS

298 INTELLECTUAL PROPERTY LAW
 299

Chapter Nineteen

BACKGROUND AND BASIC PRINCIPLES

Introduction

Normally, when people talk about industrial design, they generally refer
to a product’s overall form and function. However, from an intellectual
property law perspective, an industrial design refers only to the ornamental
or aesthetic aspects or outward appearance of a product. Therefore, though
the design of a product may have technical or functional features, industrial
design, refers only to the aesthetic nature of a finished product, and, thus
is distinct from any technical or functional aspects.
The Registered Designs Act927 defines the design as features of shape,
configuration, pattern or ornamental applied to an article by any industrial
process or means, being features which in the finished article appeal to
and are judged solely by the eye, but does not include a method or principle
of construction or features of shape or configuration which are dictated
solely by the function which the article to be made in that shape or
configuration has to perform. Thus, the right given to the owner of the
design upon registration is to protect the original ornamental or aesthetic
and non-functional features of an industrial article or product that result
from design activity.
Industrial design is relevant to a wide variety of mass produced as
well as individually crafted products including, furniture, electrical
appliances, cars, handicrafts, fashion, toys, technical and medical
instruments, watches, jewelry and other luxury items, textile designs,
sports equipment, household products and architectural structures.
Industrial design is also applied to product packaging and containers.
As a general rule, an industrial design consists of the three-dimensional
features, such as the shape of a product, the two-dimensional features,
such as ornamentation, patterns and lines or colour, or a combination of
two or more of such features.928

History of Designs

Like copyright and patents, design laws trace their origin from the design
laws of the United Kingdom. The first legislation to deal with industrial
design protection was the Designing and Printing of Linen Act of 1787
927
Supra note 597.
928
Supra note 5.
300 INTELLECTUAL PROPERTY LAW

which gave a very limited copyright protection to those who engaged in

the ‘arts of designing and printing linens, cottons, calicos and muslin’
and also gave proprietors the sole right of printing and reprinting them
for two months from the date of publication, provided the name of the
proprietor was marked on each piece. This period of protection was
extended to three months in 1794.929
From 1839, a number of laws were passed which gradually extended
the boundaries of design protection. The Copyright of Design Act, 1839,
increased the protection given to fabrics by extending the law to fabrics
composed of wool, silk or hair and to mixed fabrics made up of any two
of the following materials namely, linen, cotton, silk or hair. In addition,
the Act extended protection far beyond the textile trade and laid the
foundations of modern design law. It gave protection to every new or
original design including textiles. It also allowed protection for the
ornamentation and for the shape and configuration of any article of
manufacture.930
The Copyright of Design Act, 1839, introduced a system of
registration. A Registrar was appointed by the Board of Trade and unless
a design was registered before it had been published, the benefits of the
Act could not be obtained. This is still a central principle and differentiates
a registered design from copyright in which rights automatically reside
with the owner.
In 1842 the Design Act was passed which consolidated all earlier
Acts and further increased the remedies for infringement, and divided
the possible articles of manufacture and substances into classes. In 1843
the Design Act was amended to extend protection of the Act to designs
composed of functional features. In 1875, however, the powers and duties
of the Board of Trade under the various Designs Acts were transferred to
the UK patent office by the Copyright of Designs Act, 1875, through the
Designs Registry which still carries out the registration of designs. In
1883 a single consolidating and amending Act was passed embracing
Designs, Patents and Trademarks.931
From 1911 to 1949, design registration was governed by the designs
portion of Patents and Designs Acts, 1907 to 1946. In 1949, registered
designs were once more removed entirely from patents and the law relating
to registered designs was governed by the Registered Design Act, 1949.
The most important changes in the Act were the amendment of the
definition of design and the abolition of classification both of which
materially affected the validity as well as the scope of many registered
designs.
929
www.patent.gov.uk/design.
930
www.patent.gov.uk/design/history.
931
Ibid.
 BACKGROUND AND BASIC PRINCIPLES 301

Zambia had its own legislation to deal with designs on 1 December

1958, when the Registered Designs Act, Chapter 402 of the Laws of
Zambia was enacted. The Registered Designs Act, whose purpose is to
make provision relating to the registration of designs, establishes the
Designs office and appointment of relevant officers; provides the
procedure for the registration of designs both local and foreign; provides
rights to the proprietor of the design as well as limitations on the rights
granted; deals with issues relating to the assignment, cancellation,
infringement, offences and penalties as well as use of the registered designs
for the services of the State. It must be noted that ever since the Registered
Designs Act was passed in 1958, it has never undergone any major
amendments.

Rationale of Designs

Protections of designs are justified for various reasons. Firstly, the design
of an article is often the factor that makes it attractive and appealing to
customers and visual appeal is the key determinant in the decision of the
consumer to choose one product in preference to another. This is
particularly evident where there is a wide range of products such as cars,
computers performing the same function.932
Secondly, developing or creating designs which must be attractive
and appeal to the consumer calls for investment in terms of money, skill
and time. Design protection therefore enables the owner of the design to
get a fair return on his investment made in creating and marketing the
design. Furthermore, design protection allows the owner of the design to
prevent his competitors from copying and imitating the design, and
thereby strengthen his competitive position. Thirdly, industrial designs
are business assets that can increase the commercial value of an enterprise
and its products. The more successful a design, the higher the value of
the enterprise. Fourthly, a design may provide an additional source of
revenue for the enterprise, through licencing out to others, for a fee.
Notwithstanding what is stated above, the owner of the design may
use his monopoly right to prevent his competitors to develop or create
similar designs or threaten them with infringement actions. He may also
charge high prices for his products.

932
Supra note 5, at p. 46.
302 INTELLECTUAL PROPERTY LAW
 303

Chapter Twenty

SUBJECT MATTER AND CONDITIONS OF

PROTECTION

Introduction

Section 2 of the Registered Designs Act defines design as meaning,

‘features of shape, configuration, pattern or ornament applied to an article
by any industrial process or means, being features which in the finished
article appeal to and are judged solely by the eye.’
A registered design is a monopoly right to protect the outward
appearance of an article or a set of articles which have been manufactured
and to which a design has been applied. However, the design protection
does not apply to articles or products to grant the proprietor of the design
exclusive rights over the commercial exploitation of those articles or
products. Rather, design protection only applies to such articles or
products as embody or reproduce the protected design. Protection,
therefore, does not prevent other manufacturers from producing or dealing
in similar articles fulfilling the same utilitarian function, provided that
such substitute articles do not embody or reproduce the protected design.
It is not every type of a design that qualifies for registered design
protection. Only those designs which have some form of aesthetic appeal
will qualify for registration. Aesthetic appeal is defined in relation to
designs as being those creations which ‘appeal to and judged by the eye.’
Registered Designs Act excludes from protection designs which are solely
functional or whose appearance is solely dictated solely by the function
they have to perform.933

Requirements for registration

In order to qualify for registration the design must meet the following
conditions.
(i) It must have features of shape, configuration, pattern or
ornament;
(ii) It must be new/original;
(iii) It must be applied to industrial process;
(iv) It must appeal to an eye.

933
S. 2, Registered Designs Act.
304 INTELLECTUAL PROPERTY LAW

Features
A design to qualify for registration and protection must have features of
shape, configuration, pattern or ornament. These features relate to three
dimensions such as shape, and two dimensions such as ornamentation,
pattern and lines.934

Novelty
A design may only be registered if it is new or original.935 For a design to
be considered new, it must satisfy two conditions. Firstly, it should not
be the same as any design registered in a prior application. Secondly,
prior to the filing of the application for registration, the design should
not have been published in Zambia.936 However, the novelty of the design
shall not be destroyed either by publication or by disclosure of the design
to the public. Thus, an application for the registration of a design should
not be refused, and the registration of a design should not be invalidated,
by reasons only of:
(i) the disclosure of the design by the proprietor to any other person
in such circumstances as would make it contrary to good faith
for that other person to use or publish the design;937
(ii) the disclosure of the design in breach of good faith by any
person other than the proprietor of the design;938
(iii) in the case of a new or original textile design intended for
registration, the acceptance of a first and confidential order for
goods bearing the design;939 or
(iv) the communication of the design by the proprietor of the design
to a government department or to any person authorised by the
Minister to consider the merits of the design, or of anything
done in consequence of such a communication.940
Besides, an application for the registration for a design made under the
Paris Convention for Protection of Industrial Property does not destroy
the novelty of the design.941
The novelty requirements in a design is very similar to those in patent
law. Thus, in Rosedale Manufacturers Limited v. Airfix Productions
Limited,942 the anticipation rules in patent law were held to apply to
registered designs.
934
Ibid.
935
S. 7 (2), Registered Designs Act.
936
Ibid.
937
S. 12 (1)(a), Registered Designs Act.
938
S. 12 (1)(b), Registered Designs Act.
939
S. 12 (1)(c), Registered Designs Act.
940
S. 12 (1)(d), Registered Designs Act.
941
S. 13 (2), Registered Designs Act.
942
[1957] RPC 239.
 SUBJECT MATTER AND CONDITIONS OF PROTECTION 305

Application by Industrial Process

A design to qualify for registration must be applied to an article.943 The
Registered Designs Act defines an ‘article’ as any article of manufacture
and includes any part of an article if that part is made and sold
separately.944 In Sifam Electrical Industrial Company v. Sangamo Weston
Limited945 the design which appeared on the front of an electric meter
was held not to be part of an article because it was not intended to be
sold separately by the proprietor of the design.
Graham, J. said:

… on the whole I think the intention must be to grant

registration only for such articles as are intended by the
proprietor of the design to be put on the market and sold
separately, such as for example a hammer handle, or a bit
of a bradawl.946

In addition to the requirement that a design must be applied to an article,

the design must be done by means of industrial process.947

Eye Appeal

A design has to appeal to the eye if it is to be registered. Therefore, a

design which lacks aesthetic appeal will not qualify for registration. The
aesthetic appeal in relation to designs is a creation which appeals to and
is judged solely by the eye. In Amp Incorporation v. Utilux Pty Limited,948
the House of Lords considered the phrase ‘appeal to and judged by the
eye’, where it held that an electrical terminal clip for use inside a washing
machine was a solely functional design which did not ‘appeal to’ nor was
it ‘judged by the eye’. The House of Lords set out a number of general
propositions including the following:
(a) the eye to be considered is the ‘eye of the customer’ and not the
‘eye of the judge’,
(b) the article may still appeal to the eye even though it is not of
aesthetic quality or a work of art,
(c) the intention of the designer is of value, but it is not conclusive
and a solely functional article does not possess features judged
solely by the eye since the only issue of interest to purchase is
whether the article will meet its intended function.

943
Supra note 933.
944
Ibid.
945
[1973] RPC 899.
946
Ibid., at 914.
947
Supra note 935.
948
[1972] RPC 103.
306 INTELLECTUAL PROPERTY LAW

In Interlego Ag v. Tyco Industries Incorporation,949 the court held that

an article qualified as a design if its features or configurations, taken as a
whole, had ‘eye-appeal’, even though there were some features which
were dictated by purely functional requirements. The shape of the lego
bricks were found to have not only eye-appeal, but also significant features
of outline and proportion which were not dictated by any mechanical
function which the brick had to perform as part of the construction set.
Unless every feature of the design is dictated by the function which the
title is to perform, the design of the article was in principle capable of
registration as a registered design.

Exceptions to Registration

Not every design qualifies for registration even when it satisfies the
requirements for registration. The Registered Designs Act excludes from
registrability the following designs:

(a) Methods or principles of construction950

If a substance of the design is dictated by the process which gives the

article its appearance the design will be excluded from registration. In
Cow (BP) and Company Limited v. Cannon Pty Limited,951 the plaintiff
had designed a rubber hot water bottle with a series of diagonally arranged
ribs on both sides of the bottle and this design was subsequently registered.
An alleged infringer raised as a defence that the registration was invalid
because the design of the hot water bottle involved a method or principle
of construction and that its features of shape of configuration were dictated
solely by function. It was claimed that the ribs were a feature necessary
to facilitate the heat transfer. These claims were rejected because the
development of other designs for hot water bottle was not prevented as
rival manufacturers could still have created their own designs for ribs,
for example, horizontal ribs would be equally effective but would
constitute a different deign.

(b) Features dictated solely by function

Features of shape or configuration which are solely dictated by the

function which the article to be made in that shape or configuration has
to perform are excluded from protection by the design.952 It should be
noted that many articles to which designs are applied are not themselves
novel, and are produced by a large number of different manufacturers.

949
[1989] 1 AC 217.
950
Supra note 933.
951
[1970] RPC 397.
952
Supra note 933.
 SUBJECT MATTER AND CONDITIONS OF PROTECTION 307

Articles such as shoes, belts or screws may be produced by various

manufacturers, and all articles within each class are intended to perform
the same function. If a design for one such article, for instance, screws, is
dictated purely by the function which the screw is intended to perform,
protection for that design would have the effect of excluding all other
manufacturers from producing items intended to perform the same
function.953
In Lamson Industries Limited’s application,954 a computer paper which
contained alternating horizontal bans of white and light green was designed
to facilitate the checking of figures on a computer print out and therefore
the design of the paper was held not to be registrable as the features
which the applicants sought to register were governed by the ultimate
function of the article.

(c) Features of Shape which are dependent upon the appearance of

another article of which the article is intended by the author of the
design to form an integral part

In Ford Motor Company Limited’s design applications955, the appellant,

Ford Motor Company, sought to register the designs of various motor
vehicle components, including main body panels, doors, bonnet tops
and wind-screens, under the Registered Designs Act, 1949. These articles
formed part of and contributed to the overall shape and appearance of
the vehicle, though they were sold as replacement parts. As such they
were distinguishable from components subsidiary to the vehicle’s eventual
shape such as wing mirrors, wheels, seats and steering wheel. The House
of Lords considered whether the components in question were ‘articles’
within the meaning of sections 1 and 44 of the Act. It held that articles
which had ‘no independent life as an article of commerce’ were excluded
from the scope of registered design protection. The House of Lords upheld
the Registered Designs Appeal Tribunal’s decision and rejected all the
components in respect of which the registration was sought.

(d) Designs Contrary to Law or Morality

Designs which are contrary to law or morality are excluded from

registration. In Masterman’s Design,956 the applicant sought registration
in respect of a design for a Scotsman doll with a kilt and anatomically
correct male genitalia which were exposed when the kilt was lifted. It
was noted that the Registrar had a general discretion to refuse registration
953
Supra note 16, at pp. 113 - 114.
954
[1978] RPC 1.
955
[1995] RPC 167, HL; [1995] 1 WLR 18.
956
[1991] RPC 89.
308 INTELLECTUAL PROPERTY LAW

of a design which is, in his opinion, contrary to law or morality under

sections 3 (3) and 43 (1). A design which is contrary to morality must
offend the moral principles of the majority of right thinking members of
society. While it was accepted that some people might find the doll
distasteful this was not sufficient to exclude registration on the grounds
of morality. It was held that the Registrar’s decision should be exercised
judicially, not administratively.

(e) Certain Specified Designs under Rule 10 of the Registered Design

Rules, designs excluded from registration are:

(i) Works of sculpture other than casts or models used or intended

to be used as models or patterns to be multiplied by any
industrial process;958
(ii) Wall plaques and medals;959 and
(iii) Printed matter primarily of a literary or artistic character,
including book jackets, calendars, certificates, coupons,
dressmaking, patterns, greetings cards, leaflets, maps, plans,
postcards, stamps, trade advertisements, trade forms, and cards,
transfers and the like.959
In addition, the Registrar may refuse registration of the design which
bears the portrait of the President or a reproduction of the armorial
bearings, insignia, orders of chivalry, decorations or flags of any country,
city borough, town, place, society, body corporate, institution or persons
appears on the design, where the consent of registration and use of such
portrait or reproduction and use of such portrait or reproduction has not
been obtained.960

957
Rule 10(a), Registered Design Rules.
958
Rule 10(b), Registered Design Rules.
959
Rule 10(c), Registered Design Rules.
960
Rule 9 (1), Registered Design Rules.
 309

Chapter Twenty-One

DESIGN REGISTRATION
Like patents, there are two routes available for one to obtain a design
protection in Zambia. Firstly, one can secure the protection of the design
by registering under the Registered Designs Act. Secondly, one can protect
the design through the international route, by registering it under the
Paris Convention for the Protection of Industrial Property.

Application for Registration

The following persons may make an application for registration of a

design in respect of any article or set of articles, namely:
(i) the person claiming to be the proprietor of the design;
(ii) assignee; or
(iii) legal representative.961
The application for the design must be made in the prescribed form and
signed by the applicant or his agent.962 Furthermore, every application
for the design must state the article to which the design is to be applied
and the proprietor of the design.963 Where it is desired to register the
same design in respect of more than one article, a separate application
must be made in respect of each article.964 Each application must be
numbered separately and treated as separate and distinct.965
The Registrar may, for the purpose of deciding whether a design is
new or original, make such searches, if any, as he thinks fit.966 Except in
the case of an application to register a design to be applied to a textile, to
wall paper or to lace, the application for a design registration must be
accompanied by a statement of the features of the design for which novelty
is claimed.967
The Registrar may refuse any application for the registration of a
design or may register the design in pursuance of the application subject
to such modifications, if any, as he thinks fit.968 If on receipt of an
application for registration of a design, there appears to the Registrar to
be any objection to the application, a statement of those objections must
be sent to the applicant in writing and, unless within two months he applies
for a hearing or makes observations in writing on the objections, he is
961
S. 7 (1), Registered Designs Act.
962
S. 9 (1), Registered Designs Act.
963
Rule 3 (3), Registered Designs Rules.
964
Rule 3 (2), Registered Designs Rules.
965
Ibid.
966
S. 9 (2), Registered Designs Act.
967
Rule 3 (4), Registered Designs Rules.
968
S. 9 (3), Registered Designs Act.
310 INTELLECTUAL PROPERTY LAW

deemed to have withdrawn his application.969 If the applicant wishes to

appeal from the Registrar’s decision, he must, within one month, apply
to the Registrar on the prescribed form requesting him to state in writing
the grounds of his decision and the materials used by him in arriving at
the decision. The Registrar must send such statement to the applicant,
and the date it is sent is deemed to be the date of the Registrar’s decision
for the purposes of an appeal.970
Where an application for registration of a design, owing to default or
neglect on the part of the applicant, is not completed within twelve months,
it will be deemed to be abandoned.971 If a request for extension of time is
made on the prescribed form accompanied by the prescribed fee, the
application may be completed at any time after twelve, but within fifteen
months.972
Where the proprietor of a registered design applies for registration of
that design in respect of one or more other articles, or for registration in
respect of the same or one or more other articles of a design consisting of
the registered design, modifications or variations not sufficient to alter
the character or substantially to affect the identity of the original design,
the application should not be refused, nor is the registration invalidated,
by reason only of the previous registration or publication of the existing
registered design, but the period of copyright in the later design so
registered is limited to that of the existing design.973

Convention Applications

Zambia acceded to the Paris Convention for the Protection of Industrial

Property on 24 October 1964 and as such is bound by the provisions of
the said convention. Thus, any person who satisfies the requirements of
article 2 or 3 of the Paris Convention and who has applied for protection
for any design in a Convention country, or his legal representative or
assignee, may make an application for registration of that design in Zambia
in priority to other applicants if the application is made within six
months.974 The registration of the design will have the same date, as the
date of the application in the convention country or, where more than
one such application for protection has been made, the date of the first
such application.975 The applicant must file a declaration that the
application in a Convention country upon which the applicant relies is
the first application made in the convention country in respect of the
design, whether by the applicant or by any person of whom he claims to
be the legal representative or assignee. Furthermore, the declaration must
969
Rule 12 and 13, Registered Designs Rules.
970
Rule 14, Registered Designs Rules.
971
S. 9 (4), Registered Designs Act.
972
Rule 16, Registered Designs Rules.
973
S. 10 (1), Registered Designs Act.
974
S. 13 (1), Registered Designs Act.
975
Ibid.
 DESIGN REGISTRATION 311

specify the Convention country in which such foreign application was

made or is deemed to have been made and the official date of that
application.976
In addition to the representations or specimens required to be filed
with every convention application, there must be filed, either with the
application or within three months thereafter a copy of the representation
of the design filed or deposited in respect of the first application in a
convention country, duly certified by the authority with which it was
filed or otherwise verified to the satisfaction of the Registrar.977

Publication

Though the Registered Designs Act provides that a design will not qualify
for registration if the same has been registered or published before
registration,978 the design should not be refused registration where:
(i) the disclosure of the design by the proprietor to any other person
in such circumstances as would make it contrary to good faith
for that other person to use or publish the design;
(ii) the disclosure of the design is in breach of good faith by any
person other than the proprietor of the design;
(iii) in the case of a new or original textile design intended for
registration, the acceptance of a first and confidential order for
goods bearing the design; or
(iv) the communication of the design by the proprietor of the design
to a government department or any person authorised by the
Minister to consider the merits of the design, or anything done
in consequence of such a communication.979

Secrecy of Designs

Like the Patents Act, the Registered Designs Act, prohibits the publication
or disclosure of design which may be prejudicial to the defence of the
Republic of Zambia. Therefore, where an application for the registration
of a design has been made, and it appears to the Registrar that the design
is one of a class notified to him by the competent authority as relevant
for defence purposes, he may give directions prohibiting or restricting
the publication of the information with respect to the design, or the
communication of such information to any person or class of persons
specified in the directions.980
Where the Registrar gives any such directions concerning the design,
he must give notice of the application and the direction to the competent
976
Rule 11 (1), Registered Designs Rules.
977
Rule 11 (2), Registered Designs Rules.
978
S. 12 (1), Registered Designs Act.
979
Ibid.
980
S. 11 (2), Registered Designs Act.
312 INTELLECTUAL PROPERTY LAW

authority.981 The competent authority, upon receipt of such notice, should,

within nine months from the date of lodging the application for registration
of the design and at least once in every subsequent year, consider whether
the publication of the design would be prejudicial to the defence of
Zambia.982 If, upon consideration of the design at any time it appears to
the competent authority that the publication of the design would not, or
would no longer, be prejudicial to the defence of Zambia, the competent
authority will notify the Registrar accordingly.983 The Registrar, on receipt
of such notice must revoke the direction and may, subject to such
conditions, if any, as he thinks fit, extend the time of doing anything
required or authorised to be done in connection with the application or
registration, whether or not that time has previously expired.984
No person resident or domiciled in Zambia should, while in Zambia,
except under the authority of a written permit granted by or on behalf of
the Registrar, make or cause to be made any application outside Zambia
for the registration of the design of any class which has been prohibited
or restricted.985 If any person fails to comply with any direction given or
makes or causes to be made an application for the registration of a design,
he is guilty of an offence.986

Rights of the Proprietor

A design, when registered, is registered as of the date on which the

application was made or treated as made.987 In certain cases, the Registrar
may direct that the application be treated as being made on an earlier or
later date.988 The registration of a design gives the registered proprietor
the exclusive right in Zambia to make or import for sale or for use for the
purposes of any trade or business, or to sell, hire or offer for sale or hire,
any article in respect of which the design is registered, being an article to
which the registered design or a design not substantially different from
the registered design has been applied, and to make anything for enabling
any such article to be made.989 It must be noted that a design has the
same effect against the State as it has against an individual.990

Term of Protection

The right in a registered design lasts in the first instance for five years,991
followed, on application in the prescribed form and on payment of
981
S. 11 (4), Registered Designs Act.
982
S. 11 (4)(a), Registered Designs Act.
983
S. 11 (4)(c), Registered Designs Act.
984
S. 11 (4)(d), Registered Designs Act.
985
S. 11 (5), Registered Designs Act.
986
S. 11 (6), Registered Designs Act.
987
S. 9 (5), Registered Designs Act.
988
Ibid.
989
S. 14 (1), Registered Designs Act.
990
S. 14 (2), Registered Designs Act.
991
S. 15 (1), Registered Designs Act.
 DESIGN REGISTRATION 313

prescribed fee, by two further periods of five years.992 The term of

protection of registration is, however, restricted where:
(i) a design was at the time of registration a corresponding design
in relation to an article work in which copyright subsists;993
(ii) by reason of the previous use of the artistic work the design
would not have been registrable, but for the Registered Designs
Act, section 12 (2);994
(iii) that the copyright in that work under the written law relating to
copyright expired before the date of the expiry of the copyright
in the design.995
In these circumstances, the rights in the design is deemed to expire at the
same time as the copyright on the artistic work, and must not be renewable
after that time.996

Corrections and Rectification

The Registrar has power to authorise the correction of any clerical error
or omission in any application for the registration or in the representation
of a design or any error in the register.997 Such correction may be made
either on a request made by any person interested and accompanied by
the prescribed fee or without such request.998 Where it is proposed to
make a correction otherwise than upon such a request, the Registrar must
give notice of the proposal to the registered proprietor or the applicant
for registration of the design, and to any other person who appears to
him to be concerned, and any such person must be given an opportunity
of being heard before the correction is made.999
The High Court may, on the application of any person aggrieved,
order the register to be rectified by the making of any entry or the variation
or deletion of any entry in the register.1000 In addition, the High Court
may determine any question which it may deem to be necessary or
expedient to decide in connection with the rectification of the register.1001

Cancellation

The Registrar may, upon a request made in the prescribed manner by

the registered proprietor, cancel the registration of a design.1002 At
anytime after a design has been registered, any person interested may
992
S. 15 (2), Registered Designs Act.
993
S. 15 (3)(a), Registered Designs Act.
994
S. 15 (3)(b), Registered Designs Act.
995
S. 15 (3)(c), Registered Designs Act.
996
S. 15 (3), Registered Designs Act.
997
S. 23 (1), Registered Designs Act.
998
S. 23 (2), Registered Designs Act.
999
S. 23 (3), Registered Designs Act.
1000
S. 24 (1), Registered Designs Act.
1001
S. 24 (2), Registered Designs Act.
1002
S. 25 (1), Registered Designs Act.
314 INTELLECTUAL PROPERTY LAW

apply to the Registrar for the cancellation of the registration of the design
on the ground that:
(i) the design was not, at the date of the registration, new or
original;1003
(ii) the design, at the time when it was registered, was a
corresponding design in relation to an artistic work in which
copyright subsisted under the copyright law;1004
(iii) by reason of a previous use of that artistic work, the design
would not have been registrable under the Registered Designs
Act, but for subsection (2) of section 12;1005
(iv) the copyright in that work under the written law relating to
copyright has expired;1006
(v) the use of the design would be contrary to law or morality;
(vi) the registered proprietor is not the author of the design1007; or
(vii) the registered design is not a design within the meaning of
the Registered Designs Act.
In Stenor Limited v. Whitesides (Clitheroe) Limited,1008 the appellants
registered a design under the Patents and Designs Act. The article
composed wholly of metal or in which metal predominates, and jewellery,
the certificate describing it as being ‘in respect of the application of such
design to a metal cut-out or fuse for use in a vulcanising apparatus.
Subsequently, they brought an action, for alleged infringement of their
copyright in the design, against the respondents, who contended; (a) that
the design was not ‘new or original’ within section 49 of the Designs
Act, because the features of the shape and configuration which
distinguished it had been anticipated in other purposes, and (b) that this
was not a design within the definition contained in section 93, being ‘a
mere mechanical device’.
The House of Lords held that in determining whether or not a design
had been anticipated, it must be compared with previous designs applied
to all other articles in the same class, and a difference of purpose or use
in articles of the same class was immaterial, accordingly the design was
not new or original as required by the Design Act. Furthermore, since the
shape of the article had no significance other than that, by reason of
features indicated, it would function in a certain machine, the design was
in substance a mere mechanical device and was therefore, not a design
within the definition of the Design Act.

1003
S. 25 (2)(a), Registered Designs Act.
1004
S. 25 (2)(b), Registered Designs Act.
1005
S. 25 (2)(c), Registered Designs Act.
1006
S. 25 (2)(d), Registered Designs Act.
1007
Presscer & Company Limited v. Gartsid & Company Limited (1933) 50 RPC 240.
1008
[1947] 2 All ER 241 HL; [1948] AC 107.
 315

Chapter Twenty-two

OWNERSHIP AND DEALINGS IN DESIGNS

Ownership

The author or originator of a design, this being the person who creates
the design, will be the first owner or proprietor of the registered design.1009
However, there are two exceptions to this basic rule. Firstly, the registered
design created by the employee in the course of employment will belong
to the employer. 1010 Secondly, where the design is created under a
commission, the person who commissioned the design is the original
proprietor provided the commission is for money or valuable
consideration.1011
The basis of the said exceptions is that the creation of the design falls
within the duties which the employee is paid to perform, so that the
employee should seek the reward for his creative activity in an appropriate
level of remuneration, responsibility and other conditions of employment.
Similarly, in the case of the contractor, the thing for which the contractor
is being paid is the production of the design for the use of the person
commissioning the design.1012

Dealings

A registered design is like any other personal property. It can, for example,
be licensed, assigned and devolve by operation of law. The registered
design grants the proprietor the exclusive right to make or import for
sale or for use for the purposes of any trade or business, to sell, hire or
offer for sale or hire, any article in respect of which the design is registered,
being an article to which the registered design or a design not substantially
different from the registered design has been applied, and to make
anything for enabling any such article to be made.1013 However, provisions
under the Registered Designs Act, dealing with compulsory licence1014
and use of the registered design for the services of the State1015 puts
limitations on the exercise of the exclusive rights of the proprietor of the
design.
1009
S. 8 (1), Registered Designs Act.
1010
S. 8 (2), Registered Designs Act.
1011
Supra note 1011.
1012
Supra note 16, at p. 115.
1013
S. 14 (1), Registered Designs Act.
1014
S. 17, Registered Designs Act.
1015
S. 18, Registered Designs Act.
316 INTELLECTUAL PROPERTY LAW

Assignment

A registered design can be assigned, transmitted or devolve under

operation of the law. Besides, it can be licensed or mortgaged.1016
Therefore, where any person becomes entitled by assignment,
transmission or operation of law to a registered design or to a share in a
registered design, or becomes entitled as mortgagee, licensee or otherwise
to any other interest in a registered design, he may apply to the Registrar
for the registration of his title as proprietor or co-proprietor or, as the
case may be, of notice of his interest, in the register.1017 Where application
is made for the registration of title of any person, the Registrar should,
upon proof of the title to his satisfaction:
(i) where that person is entitled to a registered design or a share in a
registered design, register him in the register as proprietor or co-
proprietor of the design, and enter in that register particulars of
the instrument or event by which he derives title;1018 or
(ii) where that person is entitled to any other interest in the registered
design, enter in that register notice of his interest, with particulars
of the instrument, if any, creating it.1019
The person or persons registered as proprietors of a registered design has
power to assign, grant licences under, or otherwise deal with the design,
and to give effectual receipts for any consideration for such assignment,
licence or dealing.1020

Exclusive Licence

The Registered Designs Act provides for ‘exclusive licence’, which is a

licence from the registered proprietor which confers on the licensee or
on the licensee and persons authorised by him, to the exclusion of all
other persons, including the registered proprietor, any right in respect of
the registered design.1021 It should be noted, however, that the exclusive
licence has certain limitations as it applies to the use of the registered
design for the services of the State. Thus, any use of the registered design,
or a design in respect of which an application for registration is pending,
made for the services of the State, by either a government department or
a person authorised by the Minister; or by the registered proprietor or
applicant for registration to the order of a government department, the
provisions of licences, assignment or agreement made between the
1016
S. 22, Registered Designs Act.
1017
S. 22 (1), Registered Designs Act.
1018
S. 22 (3)(a), Registered Designs Act.
1019
S. 22 (3)(b), Registered Designs Act.
1020
S. 22 (4), Registered Designs Act.
1021
S. 19 (1), Registered Designs Act.
 OWNERSHIP AND DEALINGS IN DESIGNS 317

registered proprietor or applicant for registration or any person who

derives title from him or from whom he derives title and any other person
than a government department, has no effect so far as those provisions:
(i) restrict or regulate the use of the design, or any model, document
or information relating to the design; and
(ii) provide for making of payments in respect of any such use or
calculated for such use.1022
Furthermore, the reproduction or publication of any model or document
in connection with the said use of the design should not be deemed to be
an infringement of any copyright subsisting in the model or document.1023
Where payments are required to be made by a government
department,1024 to a registered proprietor in respect of the use of a design,
any person being the holder of an exclusive licence under the registered
design authorising him to make use of the design, must be entitled to
recover from the registered proprietor such part, if any, of those payments
as may be agreed upon between that person and the registered proprietor.
In case of disagreement the matter is to be determined by the High Court
taking into consideration any expenditure incurred by the holder of the
exclusive licence in the developing the said design or in making payments
to the registered proprietor, other than royalties or other payments
determined by reference to the use of the design, in consideration of the
licence.1025

Compulsory Licence

A compulsory licence is a licence that allows the beneficiary to perform

acts covered by the exclusive right under the authorisation given by a
government authority against the will of the owner of the registered design.
The Registered Designs Act provides for the grant of compulsory licence
by the Registrar. At any time after a design has been registered, any person
interested may apply to the Registrar for the grant of a compulsory licence
in respect of the design on the ground that the design is not applied in
Zambia by any industrial process or means to the article in respect of
which it is registered to such an extent as is reasonable in the circumstances
of the case, and the Registrar may make such order on the application as
he thinks fit.1026 An order for the grant of a licence must, without prejudice
to any other method of enforcement, have effect as if it were a deed
executed by the registered proprietor and all other necessary parties,
granting a licence in accordance with the order.1027

1022
S. 19 (2), Registered Designs Act.
1023
Ibid.
1024
S. 19 (5), Registered Designs Act.
1025
Ibid.
1026
S. 17 (1), Registered Designs Act.
1027
S. 17 (2), Registered Designs Act.
318 INTELLECTUAL PROPERTY LAW

Use of Registered Design for Services of the State

Any government department or any person authorised in writing by the

Minister may use any registered design for the services of the State.1028 If
the design before its registration has been recorded by or applied by or
on behalf of a government department, otherwise than in consequence of
the communication of the design directly or indirectly by the registered
proprietor or any person from whom he derives title, any use of the design
for the services of the State may be made free of any royalty or other
payment to the registered proprietor.1029 If, however, the design has not
been so recorded or applied by or on behalf of a government department,
any use of the design made any time after the date of registration of the
design or in consequence of such said communication, must be made
upon such terms as may be agreed upon, either before or after the use,
between the Minister and the registered proprietor with the approval of
the Minister responsible for Finance, or in case of disagreement to be
determined by the High Court.1030
It must be stated that the authority of the Minister in respect of a
design may be given either before or after the registration of the design
and either before or after the acts in respect of which the authority is
given are done and may be given to any person, whether or not he is
authorised or indirectly by the registered proprietor to use the design.1031
Where any use of a design is made by a government department or
any person authorised by the Minister then, unless it appears to the
Minister that it would be contrary to the public interest to do so, the
Minister must notify the registered proprietor as soon as practicable after
the use is begun, and furnish him with such information as to the extent
of the use as he may from time to time require.1032
It is imperative to state that any use of a design for the supply to the
government of any country outside Zambia, pursuant to any agreement
or arrangement between the government and that of the other country, of
articles required for the defence of that country must be deemed to be a
use of the design for the services of the State.1033 The power of a
government by the Minister to use the design includes power:
(i) to sell such articles to the government of any country in pursuance
of any such agreement or arrangement;1034 and
(ii) to sell to any person any articles made in the exercise of the
powers conferred by the Act which are no longer required for
which they were made.1035
1028
S. 18 (1), Registered Designs Act.
1029
S. 18 (2), Registered Designs Act.
1030
S. 18 (3), Registered Designs Act.
1031
S. 18 (4), Registered Designs Act.
1032
S. 18 (5), Registered Designs Act.
1033
S. 18 (6), Registered Designs Act.
1034
S. 18 (6)(a), Registered Designs Act.
1035
S. 18 (6)(b), Registered Designs Act.
 OWNERSHIP AND DEALINGS IN DESIGNS 319

The purchaser of any articles sold in the exercise of powers aforesaid,

and any person claiming through him, must have power to deal with
them in the same manner as if the rights in the registered design were
held on behalf of the State.1036
During any ‘period of emergency’1037, the powers exercisable in
relation to a design by a government department or a person authorised
by the Minister, to use the registered design for the services of the State,
include power to use the design for any purpose which appears to the
Minister necessary or expedient:
(i) for the efficient prosecution of any war in which the Republic
may be engaged;1038
(ii) for the maintenance of supplies and services essential to the
life of the community;1039
(iii) for securing a sufficiency of supplies and services essential to
the well-being of the community;1040
(iv) for promoting the productivity of industry, commerce and
agriculture;1041
(v) for fostering and directing exports and reducing imports of
any classes, from all or any countries and for redressing the
balance of trade;1042
(vi) generally for ensuring all the resources of the community are
available for use, and are used, in a manner best calculated to
serve the interests of the community;1043 or
(vii) for fostering the relief of suffering and the restoration and
distribution of essential supplies and services in Zambia or
any foreign countries that are in grave distress as a result of
war.1044

Disputes as to State use of Design

Any dispute relating to:

(i) the exercise by a government department or a person
authorised by the Minister;
(ii) the terms for the use of a design for the services of the State;
or
(iii) the right of any person to receive any part of a payment,
1036
S. 18 (7), Registered Designs Act.
1037
‘Period of emergency’ means any period beginning on such date as may be declared by the Minister by
statutory notice to be the commencement, and ending on such date as may be so declared to be the termination,
of a period of emergency.
1038
S. 20 (2)(a), Registered Designs Act.
1039
S. 20 (2)(b), Registered Designs Act.
1040
S. 20 (2)(c), Registered Designs Act.
1041
S. 20 (2)(d), Registered Designs Act.
1042
S. 20 (2)(e), Registered Designs Act.
1043
S. 20 (2)(f), Registered Designs Act.
1044
S. 20 (2)(g), Registered Designs Act.
320 INTELLECTUAL PROPERTY LAW

may be referred to the High Court by any party to the dispute for
determination.1045 In any proceedings concerning the said dispute, to
which a government department is a party, the government department
may, if the registered proprietor is a party to the proceedings, apply for
cancellation of the registration of the design upon any ground on which
the deletion of a design may be ordered by the High Court, and in any
case, put in issue the validity of the registration of the design without
applying for its cancellation.
If in the said proceedings any question arises whether a design has
been recorded or applied by or on behalf of a government department,
and the disclosure of any document recording the design, or of any
evidence of the application of registration of the design is, in the opinion
of the government department prejudicial to the public interest, the
disclosure may be made confidentially to Counsel appearing for the other
party or to an independent expert agreed upon by the parties.1046
In determining any dispute between a government department and
any person as to terms for the use of a design for the services of the State,
the High Court must have regard to any benefit or compensation which
that person or any person from whom he derives title may have received,
or may be entitled to receive, directly or indirectly from any government
in respect of the design in question.1047

1045
S. 21 (1)(a)(b)(c), Registered Designs Act.
1046
S. 21 (3), Registered Designs Act.
1047
S. 21 (4), Registered Designs Act.
 321

Chapter Twenty-Three

INFRINGEMENT, DEFENCES AND REMEDIES

Infringement

The Registered Designs Act grants to the proprietor of the design the
exclusive right in Zambia to:
(i) make or import the design for sale or hire, or for use for the
purposes of any trade or business; or
(ii) sell, hire or offer for sale or hire, any article in respect of which
the registered design or a design not substantially different from
the registered design has been applied1048.
Therefore, if anyone who, without the consent of the registered proprietor,
does anything which falls within the said exclusive rights of the registered
proprietor will infringe the right in a design. Any action or legal
proceedings relating to the infringement of copyright in a registered design
should be commenced in the High Court.1049

Defences

In an action for infringement of a registered design, the defences available

to the infringer include, inter alia:
(i) the alleged infringement falls within any limitation on the rights
of the proprietor of the registered design, such as compulsory
licence1050 or the use of the design for services of the State;1051
(ii) attack the validity of the registration of design on grounds such as
the design was not new or original at the date of registration1052;
(iii) the alleged infringement occurred before the design had been
registered;
(iv) the alleged infringement was carried out after the registered design
had been revoked, for example for non-renewal.

Groundless Threats of Infringement Proceedings

Where any person, whether entitled to or interested in a registered design

or an application for registration of a design or not, by circulars,
1048
Supra note 989.
1049
S. 42, Registered Designs Act.
1050
Supra note 1014.
1051
Supra note 1015.
1052
S. 25 (2), Registered Designs Act.
322 INTELLECTUAL PROPERTY LAW

advertisements or otherwise threatens any other person with proceedings

for infringement of the copyright in a registered design, any person who
is aggrieved with the threats may bring an action against him so as to
seek some relief from the Court.1053
If in such action the defendant does not prove that the acts in respect
of which proceedings were threatened constitute or, if done, would
constitute an infringement of the copyright in a registered design, the
plaintiff must be entitled to the following relief, namely:
(i) a declaration to the effect that the threats are unjustifiable;1054
(ii) an injunction or interdict against the continuance of the
threats;1055 and
(iii) such damages, if any, as he has sustained thereby.1056
It should be emphasised that a mere notification that a design is registered
does not constitute a threat of proceedings.1057 The defendant in any such
action may apply, by way of counter-claim in the action, for any relief to
which he would be entitled in a separate action in respect of any
infringement by the plaintiff of the design to which the threat relates.1057

Remedies

There are two remedies available, under the Registered Designs Act, where
the registered design has been infringed. These remedies are civil sanctions
and criminal sanctions.

Civil Sanctions

The civil sanctions to the proprietor of registered design whose deign

has been infringed are:
(i) injunctions or interdict;1058
(ii) damages;
(iii) an account of profits; and
(iv) seizure and destruction of infringing products.
It is imperative to state as regards damages that the Registered Designs
Act exempts an innocent infringer from liability for damages. 1059
Therefore, in proceedings for infringement of copyright in a registered
design, damages must not be awarded against a defendant who proves
that at the date of the infringement he was not aware, and had no reasonable
ground for supposing, that the design was registered.1060 A person must
1053
S. 43 (1), Registered Designs Act.
1054
S. 43 (2)(a), Registered Designs Act.
1055
S. 43 (2)(b), Registered Designs Act.
1056
S. 43 (2)(c), Registered Designs Act.
1057
S. 43 (3), Registered Designs Act.
1058
S. 43 (4), Registered Designs Act.
1059
S. 16 (2), Registered Designs Act.
1060
S. 16 (1), Registered Designs Act.
 INFRINGEMENT, DEFENCES AND REMEDIES 323

not be deemed to have been aware or to have had reasonable ground for
supposing that the design was registered by reason only of the marking
of an article with the word ‘registered’1061 or any abbreviation, or any
word or words, expressing or implying that the design applied to the
article has been registered, unless the number of the design accompanied
the word or words or the abbreviation in question.1062
In John Khalil Khawan and Company v. K. Chellaram and Sons
(Nigeria) Ltd,1063 the court considered the issue of the exemption of an
innocent infringer of the right in the registered designs from being liable
for damages.
In that case the appellant was the proprietor of a design for textile
piece goods registered in the Manchester branch of the Design Registry
of the Patent Office. The respondents, who had an office in Manchester,
sold in Nigeria, where the appellant also sold his cloth, 500 pieces of
cloth of an inferior dye and quality bearing the appellant’s design, and at
a price substantially lower than that of the appellant. This resulted in the
fall in the appellant’s sales and he eventually had to sell at a loss and
finally close down on those particular goods with a quantity still in hand.
On his claim for damages for infringement of his registered design, the
appellant was awarded £2,000 (increased on appeal to £2,500). The
appellant then appealed on the quantum damages, and the respondents
cross-appealed, contending inter alia, that they were innocent infringers
and entitled to section 3 of the ordinance.1064
The court held that the inference was that the respondents must have
known of the phenomenal sale of goods bearing the appellant’s design
and as a result of the extent of their own sales were put on enquiry as to
whether the design was registered. They had an office in Manchester,
where the branch of the Design Registry was situated, and failed to make
the necessary investigation which a prudent man of business would have
made in the same circumstances and which would have also disclosed
the existence of the registration. Therefore, the respondents have failed
to prove the defence available under section 3 of the ordinance.

Criminal Sanctions

The criminal sanctions under the Registered Designs Act provides for
imprisonment or fine or to both. The offence punishable under the Act
relate to falsely representing a design as registered. Thus, any person
who:

1061
Ibid.
1062
Ibid.
1063
[1964] 1 WLR 711 PC.
1064
S. 3 of the UK Designs (Protection) Ordinance, c. 2004 of the laws of Nigeria, 1958, provides: ‘The registered
proprietor of a design shall not be entitled to recover any damages in respect of any infringement of copyright
in a design from any defendant who proves that at the date of the infringement he was not aware nor had any
reasonable means of making himself aware of the existence of the registration of the design’.
324 INTELLECTUAL PROPERTY LAW

(i) falsely represents that a design applied to any article sold by him
is registered in respect of that article; or
(ii) after the copyright in a registered design has expired, marks any
article to which the design has been applied with the word
‘registered’, or any word implying that there is a subsisting
copyright in the design is guilty of an offence and liable to a fine
of one thousand five hundred penalty units or in default of
payment, to imprisonment for a period not exceeding six months,
or to both.1065

1065
S. 47, Registered Designs Act.
 325

PART V: TRADE MARKS

326 INTELLECTUAL PROPERTY LAW
 327

Chapter Twenty-four

BACKGROUND AND BASIC PRINCIPLES

Introduction

The marking of goods for the purpose of distinguishing them from those
of other traders or competitors can be traced back to the ancient world.
There is evidence that, as far back as 4 000 years ago, craftsmen from
India, China and Persia used either their signatures or symbols to identify
their products. Roman pottery-makers used more than 100 different marks
to distinguish their work, the most famous being the Fortis mark, which
was copied and counterfeited. These craftsmen are believed to have used
marks for several purposes including as an advertisement for the markers
of the products, as proof that the products belonged to a particular
merchant in the event of an ownership dispute, as well as a guarantee of
quality.1066
A trademark is any sign that is capable of distinguishing the goods or
services produced or provided by one enterprise from those of other
enterprises. For example, various companies produce mealie-meal used
for making traditional staple food called nshima or salsa. What enables
the consumer to distinguish mealie-meal produced for instance, by
company A, from that produced by company B, is the sign, marking,
symbol or label attached or fixed on the bags in which the mealie meal is
packed. Thus, a trademark will assist the consumer to identify a bag of
mealie meal produced by National Milling, from that produced by Choma
Milling.
The Trade Marks Act1067 defines a trade mark as a mark used or
proposed to be used in relation to goods for the purpose of indicating, or
so as to indicate, a connection in the course of trade between the goods
and some person having the right either as proprietor or as registered
user to the mark, whether with or without any indication of the identity
of that person.
Besides, the Penal Code Act,1068 defines a trade mark as:
(a) a mark lawfully used by any person to denote any chattel to be
an article or thing of the manufacture, workmanship, production,
or merchandise of such person or to be an article or thing of any
peculiar or particular description made or sold by such person;
1066
Supra note 1 at, pp. 149 - 150.
1067
Supra note 597.
1068
S. 377 (1), Cap 87.
328 INTELLECTUAL PROPERTY LAW

(b) any mark or sign which in pursuance of any written law in force
for the time being relating to registered designs is to be put or
placed upon or attached to any chattel or article during the
existence or continuance of any copyright or other sole right
acquired under the provision of such law.
Deriving from the above definition, it can be stated that a trademark
generally performs four main functions. These functions relate to the
distinguishing of marked goods or services, their origin, quality and
promotion in the market place.
The first function of a trademark is to distinguish the products (whether
goods or services) of an enterprises from products of other enterprises. A
trademark facilitates the choice to be made by the consumer when buying
certain products or making use of certain services. A trademark helps the
consumer to identify a product which was already known to him or which
was advertised. In order to fulfil this function, only distinctive signs should
serve as trademarks.
The second function of a trademark is to refer to a particular enterprise
which offers the products on the market, that is, give an indication as to
the origin of the goods or services for which the mark is used. It should
be noted that trademarks do not only distinguish products as such, but in
their relationship to a particular enterprise from which the product
originates. Therefore, trademarks distinguish products or services from
one source, from identical or similar products or services from other
sources namely, the various enterprises which offer such products or
services. This function is important in the definition of the scope of
protection of trademarks. The test for that protection is whether the average
consumer, in view of the identical or similar trademarks relating to the
products of the same kind or of similar kinds, may believe that those
products originate from one and the same enterprise.1069
The third function of trademarks is to refer to a particular quality of
the products or services for which the trademark is used. It should be
noted that most of the time a trademark is not used by only one enterprise,
as the trademark owner may grant licences such as a franchise, to use the
trademark to other enterprises. In such a case, it is essential that licences
respect the quality standards of the trademark set by the owner of the
trademark.
Besides, trading enterprises often use trademarks for products which
they acquire from various sources. Therefore, products though not
originating from one and the same enterprise, nonetheless have to
correspond to certain common characteristics and quality standards which
are applied by the owner of the trademark. A trademark owner thus
guarantees that only the products that meet those standards and quality
1069
WIPO Worldwide Academy, Collection of Documents on Intellectual Property, (2003), pp. 12 - 14.
 BACKGROUND AND BASIC PRINCIPLES 329

requirements will be offered under the trade mark. In such cases, the
owner of the trademark is not responsible for producing the products,
but rather for selecting those that meet these standards and requirements.
It should be stated that even where the owner of the trade mark is the
manufacturer of a product, in the manufacturing process, parts are
frequently used which have not been produced by the owner of the trade
mark, but which have been selected by him.1070
The fourth and last function of trademarks is to promote the marketing
and sale of products and the marketing and rendering of services.
Trademarks are not only used to distinguish or to refer to a particular
enterprise or a particular quality, but also to advertise and market the
products to consumers, as well as to stimulate sales. A trade mark which
is to fulfil that function must be carefully selected, and must appeal to
the consumer, create interest and inspire a feeling of confidence. It is for
this reason that this function is sometimes called the ‘appeal or image
function’.1071

History of Trade Marks

The marking of goods for various purposes, including distinguishing them

from those of other traders, can be traced back to ancient times. Likewise,
the existence of rules to govern the use of such marks goes back to the
medieval craft guilds. It was not until the 19th century that the idea evolved
that a mark which has become distinctive of a particular trader’s goods,
and so attracted valuable goodwill, may be considered as a type of
property, now known as intellectual property. Furthermore, in the middle
of the 19th century, there also developed the right to take action in the
courts against infringement of a trademark, even where there was no
intention to deceive on the part of the infringer.
However, the usefulness of such an action was limited by the need for
a trader, first, to prove that the mark concerned was in fact capable of
distinguishing his goods, and second, that it belonged to him.1072 Thus,
every time there was an infringement, the burden of proof was on the
owner of the mark to show or prove to the court the title to his mark, and
proving title depended on establishing goodwill associated with the mark.
This did not only increase the expense of owning a mark, but also created
uncertainty of legal proceedings for infringement. Therefore, pressure
grew from the traders for the enactment of an effective statute which
would provide for a system of registration of marks similar to the one
adopted in France.1073
1070
Ibid., p.13.
1071
Ibid.
1072
www.patent.gov.uk/tm/history.
1073
Supra note 10, at pp. 430 - 431.
330 INTELLECTUAL PROPERTY LAW

The first statute called Trade Marks Registration Act, was enacted in
1875, which set out to overcome the difficulties mentioned above by
establishing a legal register of marks and the first Trade Marks Registry
in the world, which opened in London in 1876. The registration gives the
owner the exclusive right to prevent unauthorised use through a legal
action for infringement. The first mark to be registered under the Act and
which still remains registered as the UK’s number 1 trade mark was one
used for beer, a label for pale ale bearing the famous Bass red triangle.1074
After some amendment, trademark law was consolidated in the Patents,
Designs and Trade Marks Act, 1883. In 1905 a Trade Marks Act was
enacted, and for the first time, gave a statutory definition of ‘trademark’.
The Trademarks Act 1905 was amended and the Trademarks Act, 1919
came into existence. The Trade Marks Act, 1919 divided the register of
trademarks into two parts, namely Part A and Part B marks. Registration
in part A was subject to more stringent requirements, but gave better
protection in terms of remedies than part B. Then came the Trade Marks
Act, 1938, which consolidated the 1905 and 1919 statutes together with
the Trade Marks (Amendment) Act 1937 which was enacted and repealed
on the day the 1938 Trade Marks Act came into force on 27 July 1938.1075
The law relating to trade marks in Zambia traces its origins from the
United Kingdom. The first legislation to govern trademark registration
and protection, called Trade Marks Act, Chapter 401 of the Laws of
Zambia was enacted on 1 April 1958 and since then has never undergone
any major amendments.
The Trade Marks Act establishes the Trade Mark Office and
appointment of staff. It provides inter alia, the procedure for registration
of both local and foreign trademarks, conditions for registration, rights
of the trademark owner, revocation, infringement, as well as offences
and penalties.

Rationale of Trade Marks

Trademark protection is justified for a number of reasons, which include:

firstly, trademarks enable the trademark owner to prevent others or his
competitors from marketing identical or similar products under the same
mark or under a confusingly similar mark. Trademark owner investment
in development and marketing a product may become wasteful if his
competitors use the same or a similar or a confusingly similar product.
Where a competitor adopts a similar or identical trademark, customers
could be misled into buying the competitor’s product(s) thinking it is for
the trademark owner. This could not only lead to decrease in the trade
1074
Ibid., p. 430.
1075
Ibid., p. 431.
 BACKGROUND AND BASIC PRINCIPLES 331

mark owner’s profits and confusing the customers, but may also damage
the reputation of the trademark more especially if the rival product is of
inferior quality.
Secondly, trademark provides incentives to enterprises to invest in
maintaining or improving the quality of their products. Trademarks play
an important role in the branding and marketing strategies of an enterprise,
contributing to the definition of the image, and reputation of the
enterprise’s products in the eyes of consumers. The image and reputation
of an enterprise create trust, which is the basis for establishing a loyal
clientele and enhancing enterprise goodwill. Consumers often develop
an emotional attachment to certain trademarks, based on a set of desired
qualities or features incorporated in the products bearing such trademarks.
Thirdly, trademark may be licenced to other enterprises thereby
providing additional source of revenue for the trademark owner or may
be the basis for a franchising agreement.
Fourthly, a trademark with a good reputation among consumers may
also be used to obtain funding from financial institutions, such as banks
or venture capitalists which are increasingly aware of the importance of
brands for business success.1076
Fifthly, trademark facilitates consumers’ decision-making about their
choice of products in the market. Consumers are faced continually with
the problem of having to choose between goods or services that look
alike, but whose superficial similarity may conceal differences in features
and quality. While it is appropriate for sellers to offer goods with different
levels of quality, consumers need a ‘shorthand’ method to identify these
differences in quality in order to arrive at a satisfactory purchase decision.
Trademark, therefore, helps consumers to reduce their search costs for
the products.1077
Sixthly, apart from protecting business reputation and goodwill,
trademark protects consumers from deception, that is, to prevent the
buying public from purchasing inferior goods or services under the
mistaken belief that they originate from or are provided by another trader.
Notwithstanding the above justifications, a trademark owner can use
his monopoly right to prevent his competitors to develop or create
trademarks that may be similar to his or may threaten them with
infringements. Furthermore, trademarks are often perceived as a tax on
goods or services in that they make products expensive and beyond the
reach of the majority of the consumers. It may therefore be argued that
trademarks may indirectly encourage counterfeit and imitation more
especially for luxury goods such as watches and clothes, which consumers
desperately need but cannot afford.

1076
Supra note 928, p. 35
1077
Supra note 588, pp. 150 - 151.
332 INTELLECTUAL PROPERTY LAW

Other Types of Trademarks

(a) Service Marks

Today consumers are confronted not only with a vast choice of goods of
all kinds, but also with an increasingly variety of services that are offered
to consumers. There is, therefore, also the need for the signs that enable
the consumers to distinguish the services offered by an enterprise from
those of other enterprises. These signs are called service marks, and are
often used by the service industry that include airlines, hotels, restaurants,
banks, insurance, car rental firms, tourist agencies, laundries and cleaners.
It is important to note that a service mark is very similar in nature to a
trademark. Both are distinctive signs. Trademarks distinguish the goods
of one enterprise from those of others, while service marks distinguish
the services of one enterprise from those of others. Since service marks
are similar in nature to trademarks, the protection criteria for trademarks
applies mutatis mutandis to service marks. Furthermore, service marks
can be registered, renewed and cancelled in the same way as trademarks.
They can also be assigned and licenced under the same conditions as
trademarks. It must be stated that service marks are not protected in
Zambia.

(b) Collective Marks

A collective mark is generally owned by an association or co-operative

which itself does not use the collective mark but whose members may
use it to market their products. The collective body which owns the mark
exclusively grants its members the right to use it if they comply with the
requirements set, for example, quality standards, in the regulations
concerning the use of the collective mark.
A collective mark may be an effective way of jointly marketing the
products of a group of enterprises that may individually find it more
difficult to make their individual marks recognised by consumers and/or
to be accepted for distribution by many retailers.1078 An example of a
collective mark is Melinda Collective Mark used by 5, 200 members of
the 16-apple-producing co-operatives working in Valle di Non and Valle
di Sole, Italy, who established the Melinda Consortium in 1989. Each
producer has a right to use the mark which belongs to the Consortium as
long as their apples meet the requirements set by the Consortium.

1078
Supra note 5, at p. 36.
 BACKGROUND AND BASIC PRINCIPLES 333

(c) Certification Marks

A certification mark may be defined as a mark used to distinguish goods

and services that comply with a set of standards and have been certified
by a ‘certifying authority’. Certification marks are not confined to any
membership and as such can be used by anyone whose products meet
certain set standards. The main difference between certification mark
and collective mark is that the former may be used by anybody who
complies with the defined standards, while the latter may be used only
by particular enterprises, for instance, members of the association which
owns the collective mark.
An important requirement for the registration of a certification mark
is that the entity which applies for registration is ‘competent to certify’
the products concerned. Therefore, the owner of the certification mark
must be the representative for the products to which the certification
mark applies.1079 An example of a certification mark is the Woolmark.
The Woolmark symbol is the registered certification mark of the
Woolmark Company. The Woolmark is a quality assurance symbol
denoting that the products on which it is applied are made from 100 per
cent new wool and comply with strict performance specifications set
down by the Woolmark Company. It is registered in over 140 countries
and is licenced to manufacturers who are able to meet these quality
standards in sixty-five countries.1080
The Trade Marks Act provides for the registration of certification
trademarks. Thus, under section 42 of the Trade Marks Act, a mark adapted
in relation to any goods to distinguish in the course of trade goods certified
by any person in respect of origin, material, mode of manufacture, quality,
accuracy or other characteristic from goods not so certified shall be
registerable as a certification trade mark in part C of the register in respect
of these goods in the name, as proprietor of person.

(d) Well-known Marks

Well-known marks are marks that are considered to be well-known by

the competent authorities of a give-country. Well-known marks generally
benefit from stronger protection. For instance, they will be protected
even if they are not registered or have not even been used in a given
territory. The main reason for the protection of well-known marks is to
prevent companies from free-riding on the reputation of a well-known
mark and/or cause damage to its reputation and goodwill.1081

1079
Supra note 16, at pp. 67 - 68.
1080
WIPO, Intellectual Property for Business Series, Number 1: An Introduction to Trademarks for Small and
Medium-Sized Enterprises, (2003), pp. 15 - 17.
1081
Supra note 5, at p. 37.
334 INTELLECTUAL PROPERTY LAW

It should be noted that section 32 of the Trade Marks Act allows a

trade mark owner or proprietor of a trade mark which has become well-
known in relation to goods to which it has been used or applied to register
a defensive trademark, so as to prevent anyone from using or applying
the trade mark in relation to other goods, if he fears that the use of the
trade mark by anyone in relation to other goods is likely to indicate or
create a connection in the course of the trade between him and those
other goods in relation to the first mentioned goods. The defensive
trademark registration for a well-known trademark is permitted, even if
the trademark owner does not use or intend to use the trademark in relation
to those other goods.

Trade Names

Enterprises may own and use one or several different trademarks to

distinguish their goods and services from those of their competitors.
However, they also need to distinguish themselves from other enterprises,
and for that purpose they will adopt a trade name. A trade name is,
therefore, a name which identifies the enterprise and distinguishes it from
other enterprises. For example, Laura Investments Limited, Lusaka
Cement Plc, etc.
Trade names, trademarks and service marks perform the same
distinguishing function. However, unlike trademarks and service marks,
trade names distinguish one enterprise from others, quite independently
of the goods or services that the enterprise markets or renders.
 335

Chapter Twenty-five

SUBJECT MATTER AND CONDITIONS OF

PROTECTION

Introduction

As discussed in the preceding chapter, a trademark is a sign or symbol

placed on goods or used in relation to goods or services. A trademark
distinguishes goods and services of one trader from those supplied by
other traders. Thus, a trademark facilitates the consumer to make a choice
between various competing goods or services.
A number of signs or symbols may serve as trademarks. These include
words, letters and numerals, shapes, colours, slogans, sounds and smells.
For a sign or symbol to qualify as a trademark, it must satisfy two
conditions namely, it must be distinctive and it must not be deceptive or
violate public order or morality.

Signs

Any sign that is able to distinguish goods from other goods will qualify
as a trademark. The Trade Marks Act defines a trademark as a mark used
or proposed to be used in relation to goods for the purpose of indicating,
or so as to indicate, a connection in the course of trade between the goods
and some person having the right as proprietor or as registered user to
use the mark.1082 A mark is defined as including a device, brand, heading,
label, ticket, name, signature, word, letter, numeral or any combination.1083
It must be submitted that the Trade Marks Act does not limit the signs or
symbols that may serve as a trademark.
The question of whether a sign or symbol can serve as a trademark
has been a subject of judicial interpretation and determination. Thus, in
Smith Kline and French Labs v. Sterling Winthrop Group Limited,1084
the respondent opposed the appellant’s application to register ten colour
combinations used on various drug capsules to distinguish the sustained
release drugs contained in them. Most of the drugs were available on
prescription but there was sufficient evidence to show that widespread
marketing and sales had made these colours distinctive of the appellant’s
product. The House of Lords held that distinctiveness was the important
factor and the coloured capsules had become distinctive through use.
1082
S. 2 (1), Trade Marks Act.
1083
Ibid.
1084
[1975] All ER 578.
336 INTELLECTUAL PROPERTY LAW

Lord Diplock stated:

The colour combinations have thus been shown by

undisputed evidence to serve the business purpose of a
trademark. They do precisely what a trademark is meant
to do: they indicate to potential buyers that the goods were
made by Smith Kline and French and not by any other
manufacturer. To the ordinary businessman it would, I
think, appear a strange anomaly in the law of trademarks
if these colour combinations applied to the capsules and
their pellets were disentitled to the protection conferred
by registration.

However, in Unilever’s Trademark1085 the Court refused to allow the

registration of red and white stripes for toothpaste on the ground that the
colours were deemed to be functional as they derived from the chemical
components contained in the toothpaste. Similarly, in Coca Cola
Trademark Applications,1086 the manufacturers of Coca Cola failed to
register the shape of the Coca Cola bottle as a trademark. The Coca Cola
bottle is a visual representation based loosely on the shape of a cocoa
bean. Drawings of the Coca Cola bottle had originally been registered as
designs but due to the expiry of the registration period the manufacturers
sought to register the bottle itself as a trademark. The House of Lords
held that the legislation was there to protect marks and not the article
marked.
Lord Templemen expressed the view that it would be inappropriate
to grant a monopoly which would hamper the production of similar
containers and that rival traders’ goods should be distinguished using
labeling. He stated:

It is not sufficient for the Coca Cola bottle to be distinctive.

The Coca Cola company must succeed in startling
proposition that the bottle is a trade mark, if so, then any
other container or any article of a distinctive shape is
capable of being a trademark. This raises the spectre of a
total and perpetual monopoly in containers and articles
achieved by means of the 1938 Trade Mark Act. …A rival
manufacturer must be free to sell any container or article
of similar shape provided the container or article is labelled
or packaged in a manner which avoids confusion as to the
origin of the goods in the container or the origin of the
article.
1085
[1984] RPC 155.
1086
[1986] WLR 695; [1986] RPC 421, HL.
 SUBJECT MATTER AND CONDITIONS OF PROTECTION 337

It is submitted however, that trade mark law now extends the protection
to devices or shapes and as such the coca cola bottle qualifies for trade
mark registration and protection. Thus, in Reckitt and Colman Products
Limited v. Borden Incorporation1087, the plaintiff, Reckitt and Colman
had for a number of years sold lemon juice in yellow plastic containers
shaped like lemons. Their competitors produced a similar shaped container
which was slightly larger in size and with a flat side to prevent the container
rolling away. The plaintiff sued successfully in passing off at first instance.
The court of Appeal upheld the decision and the defendant, Borden Inc.
appealed to the House of Lords. The appeal was dismissed.
Lord Oliver stated:

The trial judge found as a fact that the natural sized squeeze
pack in the form of a lemon has become so associated
with Jif lemon juice that the introduction of the appellant’s
juice in any of the proposed get-ups will be bound to result
in many housewives purchasing that juice in the belief that
they were obtaining Jif juice. I cannot interpret that as
anything other than a finding that the plastic lemon shaped
container has acquired, as it were, a secondary significance.
It indicates not merely lemon juice, but specifically Jif
lemon juice…1088

Protection Criteria

It is not any sign or symbol that is capable of serving as a trademark. For

a sign to serve as a trademark, it must satisfy two conditions. The first
condition relates to the basic function of a trademark, namely, its function
to distinguish the goods or services of one enterprise from the goods or
services of another enterprise. Thus, a trademark must be distinctive or
distinguishable among different goods or products.1089 A sign that is not
distinctive cannot help the consumer to identify the goods of his choice.
The second condition relates to the possible harmful effects of a trademark
if it has a misleading character, that is being deceptive, or if it violates
public order or morality.1090
The above stated conditions are also provided for in the Paris
Convention for the Protection of Industrial Property. Article 6 quinquies
B of the Paris Convention provides that the trademark enjoying protection
may be denied registration or invalidated only if they are devoid of any
distinctive character, or if they are contrary to morality or public order
and, in particular, of such a nature as to deceive the public.
1087
[1990] 1 All ER 873; [1990] 1 WLR 491.
1088
Ibid., at p. 884.
1089
S. 14, Trade Marks Act.
1090
S. 16, Trade Marks Act.
338 INTELLECTUAL PROPERTY LAW

The Trade Marks Act defines ‘distinctive’ to mean adapted, in relation

to the goods in respect of which a trade mark is registered or proposed to
be registered, to distinguish goods with which the proprietor of the trade
mark is or may be connected in the course of trade from goods in the
case of which no such connection subsists, either generally or, where the
trade mark is registered or proposed to be registered.1091 Thus, the
distinctive character must be evaluated in relation to the goods to which
the trademark is applied.
The test of whether a trademark is distinctive will depend on the
understanding of the consumers, or at least the persons to whom the sign
is addressed.1092 Therefore, a sign is distinctive for the goods to which it
is to be applied when those to whom it is addressed as identifying goods
from a particular trade source, or is capable of being so recognised.1093 It
is worth noting that the distinctiveness of a sign is not an absolute and
unchangeable factor. Thus, depending on the steps taken by the proprietor,
user of the sign or third parties, it can be acquired or increased or even
lost.1094

Use of Trade Mark

A trademark is protected on the basis of either use or registration. Though

the Trade Marks Act does not require use as a condition for the application
for a trademark registration, it imposes an obligation on the proprietor of
a trademark to use it once registered. Thus, a registered trade mark may
be cancelled or taken off the register in respect of any of the goods in
respect of which it is registered on the grounds that:
(i) the trademark was registered without any bona fide intention on
the part of the applicant for registration that it should be used in
relation to those goods by him and that there has, in fact, been
no bona fide use of the trade mark in relation to those goods by
any proprietor;1095
(ii) up to the date one month before the date of the application, a
continuous period of five years or longer elapsed during which
the trade mark was a registered trade mark and during which
there was bona fide use in relation to those goods by any
proprietor.1096
The use requirement of a trademark is important in the sense that a
trademark is protected in order to fulfil its function of distinguishing the
goods on which the trademark is used from others. Therefore, it makes
no economic sense to protect the trademarks by registration without
1091
Supra note 1089.
1092
Supra note 16, at p. 70
1093
Ibid.
1094
Ibid.
1095
S. 31 (1)(a), Trade Marks Act.
1096
S. 31 (1)(b), Trade Marks Act.
 SUBJECT MATTER AND CONDITIONS OF PROTECTION 339

imposing the obligation to use them. Besides, trademarks which are not
used may act as artificial barriers to the registration of new marks. Thus,
in Imperial Group Limited v. Phillip Morris and Company Limited,1097
the plaintiff sought to register the trademark ‘MERIT’ in relation to king-
size cigarettes. The trade name ‘merit’ would not be registered as being
descriptive and laudatory. To prevent other manufacturers using the name
‘merit’ the plaintiffs registered the trademark ‘NERIT’ in relation to
cigarettes, but did not apply the mark to actual products. The defendants
launched a brand of cigarettes called ‘merit’ in the United States and at
that stage marketed their ‘NERIT’ brand cigarettes in response before
suing the defendants for trademark infringement.
The defendants raised a counter-claim on the basis that the trademark
‘NERIT’ should be removed from the register because the plaintiffs had
never intended to use the trade mark in relation to cigarettes. The Court
of Appeal agreed that the mark had been registered in the absence of a
bona fide intention to use it. The subsequent use of the name was not
substantial and to be a bona fide use, the mark had to be a genuine use,
which was substantial in amount.

1097
[1982] FSR 72.
340 INTELLECTUAL PROPERTY LAW
 341

Chapter Twenty-six

TRADEMARK REGISTRATION

Introduction

Trademark protection can be obtained through registration or use.

However, the protection of a trademark through registration is preferred
to protection through use. This is because registering a trademark provides
stronger protection, particularly in the case of conflict with an identical
or confusingly similar trademark. Furthermore, the registration of a
trademark dispenses with the difficulty, expense and uncertainty involved
in establishing reputation and likelihood of confusion in passing off. A
trademark may be registered even before the trader has put his goods or
services on the market and acquired goodwill in respect of the use of the
name or mark. Besides, the Trade Marks Act prohibits any person from
instituting any proceedings to prevent or to recover damages for the
infringement of an unregistered trademark.1098
There are three routes available for one to register a trademark in
Zambia. These are known as the national, regional and international routes.
This chapter examines registration process of a trademark in Zambia.

Registrable Trade Marks

The Trade Marks Act defines what marks or signs must be registered as
trademarks. The Trade Marks Act defines a ‘trade mark’ as a mark used
or proposed to be used in relation to goods for the purpose of indicating,
or so as to indicate, a connection in the course of trade between the goods
and some person having the right either as proprietor or as registered
user to the mark.1099 In addition, the Trade Marks Act defines a ‘mark’ as
including a device, brand, heading, label, ticket, name, signature, word,
letter, numeral or any combination of the same.1100 It should be stated
that the definition allows registration to a wide range of potential marks.
Though the Trade Marks Act permits registration to a wide range of
potential marks, the marks may only be registered if they satisfy certain
conditions, namely:
(i) they must be distinctive;1101 and
(ii) they must not mislead or violate public order or morality.1102
1098
S. 7, Trade Marks Act.
1099
S. 2 (1), Trade Marks Act.
1100
Ibid.
1101
S. 14, Trade Marks Act.
1102
Supra note 1090.
342 INTELLECTUAL PROPERTY LAW

Thus, in H. Quennel Limited’s Application,1103 the court held that the

mark PUSSIKIN applied to cat food and therefore incapable of
distinguishing one brand of cat food from another. Similarly, in the
American Screw Company’s Application,1104 Lloyd Jacob, J. held that
the mark TORQ-SET was not registrable in relation to screws, bolts and
rivets, because the mark had a direct reference not significantly distinctive
of the product. To allow the registration would be to allow a monopoly
in two terms of art, namely ‘Torque’ and ‘set’ which were descriptive of
the products.
Also, in British Sugar Plc v. James Robertson and Sons,1105 the court
held that the trade mark ‘Treat’ registered for desserts, syrups and sauces
should have been refused registration on the grounds that the name was
devoid of distinctive character as it could not distinguish the product and
furthermore that the trademark was granting a monopoly in relation to
the word ‘treat’ which has become customary in everyday speech. A
similar decision was reached when the Registrar refused the application
in the NEXT Trademark1106 to trademark the word ‘Next’.
However, in Eastman Photographic Materials Company Limited v.
the Comptroller-General of Patents, Designs and Trademarks,1107 the
House of Lords held that the word ‘solio’ was registrable as a trademark.
In that case the Trademark Registry refused to register the word ‘solio’ as
a trademark as descriptive of the character of the goods which were in
this case photographic papers. The Trademarks Registry claimed that the
word ‘sol’ incorporated within the proposed mark as simply a translation
on the English word ‘sun’ which connotes the use of sunlight in producing
impressions on photographic papers.

Unregistrable Trade Marks

It is worth noting that even though the Trade Marks Act provides for a
wide variety of marks that may be registered, not all the marks are capable
of being registered as trademarks even if they fulfil the basic requirements
for registration. Trademarks may be refused registration on two grounds,
namely, absolute and relative grounds.

Absolute Grounds for Refusal

Applications for trademark registration are usually rejected on what are

commonly referred to as absolute grounds, in the following cases, namely:
1103
[1954] 72 RPC 36.
1104
[1959] RPC 344.
1105
[1996] RPC 281.
1106
[1992] RPC 455.
1107
[1898] AC 571.
 TRADEMARK REGISTRATION 343

(a) Signs or marks which are not trademarks

Signs which do not satisfy the requirements of the statutory definition of

a trademark, may not be registered.1108

(b) Lack of distinctiveness

If a sign is not distinctive, it cannot function as a trademark and its

registration should be refused. The burden of proving lack of
distinctiveness lies on the Registrar of Trademarks, and in case of doubt
the trademark should be registered.1109 A trademark will be deemed to
lack distinctiveness and hence registrable if it is devoid of distinctive
character. In Unilever Limited’s Trademark,1110 a red stripe in toothpaste
was not registrable as the device was held to be too simple to be
distinctive.1111
Also in AD 2000 Trademark,1112 an application to register ‘AD2000?’
for various goods was refused on the ground that it was devoid of
distinctive character.
Hobbs Q.C stated:

… a sign possesses a distinctive character if and when it is

endowed by nature and/or nurture with the capacity to
communicate the fact that the goods or services with
reference to which it is used recurrently are those of one
and the same undertaking.1113

(c) Descriptive Signs

These are signs that are usually used in trade to describe the product in
question. Descriptive signs serve to designate the kind, quality, intended
purpose, value, place of origin, time of production or other characteristics
of goods for which the sign is intended to be used or being used. Examples
of descriptive signs include terms such as ‘SWEET’, ‘RAPID’,
‘INNOVATIVE’, ‘CLASSIC’, ‘BEST’.
In Unilever Plc’s Trademark,1114 a picture mark of a glob of toothpaste
on a toothbrush was refused registration because the device was held to
be descriptive of the goods.

1108
Supra note 1099.
1109
Supra note 16, at p. 71.
1110
[1987] RPC 13.
1111
See British Sugar Plc v. James Robertson & Sons [1996] RPC 281.
1112
[1997] RPC 168.
1113
Ibid., at p. 175.
1114
[1984] RPC 155.
344 INTELLECTUAL PROPERTY LAW

(d) Generic Terms

A sign is generic when it defines a category or type to which the goods

belong. It is essential to the trade and also to consumers that one enterprise
or trader must not be allowed to monopolise a generic term. If one intends
to register the trademark ‘CHAIR’ to sell chairs, the mark would be
rejected since ‘chair’ is the generic term for the product. This is also the
case for ‘Amenshi’ or ‘Manzi’ for water or ‘Inama’ for beef.

(e) Deceptive Marks

These are trademarks that are likely to deceive the public as to the nature,
quality or any other characteristics of the goods or their geographical
origin. The Trade Marks Act prohibits the registration of a trademark or
part of a trademark whose use is likely to deceive or cause confusion to
the public.1115
In Re H.N. Brock,1116 the Court of Appeal refused registration of the
word ‘ORLWOOLA’ because it sounded like the phrase ‘all wool’ which
would be deceptive to consumers if the goods to which the mark was
applied were made entirely of wool. Likewise, in Safemix Trademark,1117
the trade name SAFEMIX for thermostatically controlled valves was
held to be deceptive as to quality because the name gave the impression
that the valves were absolutely safe, which was incorrect.
However, in Pound Puppies Trademarks1118, the registration for the
mark ‘POUND PUPPIES’ applied to stuffed toy puppies costing one
pound sterling as being ‘pound puppies’ and therefore, there was no
suggestion that the public could be confused into believing that the name
was descriptive of the price. Also in Queen Diana Trademark1119, a
trademark used since 1971 was challenged on the grounds that it was
deceptive but it was held that a reputation had been established in the
goods and there was no likelihood that consumers would be deceived
into thinking that the proprietors had gained Royal patronage.

(f) Trademarks offending public morality

The Trade Marks Act prohibits the registration of a trademark, which

would be contrary to law or morality.1120 In Re Hallelujah Trademark1121,
a registration for the word ‘hallelujah’ in relation to clothing was held to
have religious connotations and as such it was refused registration as a
trademark in relation to women’s clothing.
1115
Supra note 1090.
1116
[1910] Ch. 130.
1117
[1978] RPC 397.
1118
[1988] RPC 530.
1119
[1991] RPC 395.
1120
Supra note 1090.
1121
RPC 605.
 TRADEMARK REGISTRATION 345

However, in Re La Marquise Footwear Incorporation’s

Application, 1122 the applicants registration for the word mark
‘OOMPHIES’ was allowed despite claims that its use related to the sex
appeal of the footwear and that such connotations may act as an
encouragement for foot-fetishists.

(g) Applications made in bad faith

A trademark which is applied for without a genuine or bona fide intention

to use the mark in relation to goods will be refused registration. In DEMON
ALE Trademark,1123 an application was made to register ‘DEMON ALE’
for beer. The owner of the trademark BIERE DU DEMON, used for
beer, filed an opposition. There was evidence that the applicant only
intended to register the trademark in order to prevent ‘alcopop’
manufacturers using it. There was no evidence that there was any bona
fide intention that the mark would be used by the applicant or with his
consent. Thus, the application was refused for being made in bad faith.
Likewise in Imperial Group Limited v. Phillip Morris and Company
Limited,1124 the Court of Appeal held that the mark ‘NERIT’ had been
registered in the absence of a bona fide intention to use it.

(h) Specially protected emblems

The Trade Marks Act prohibits the registration of marks relating to national
flags, armorial bearings, official emblems of States and international
organisations such as the Red Cross Sign.1125 Similarly, words such as
‘the President’, ‘Republic’ or ‘Zambia’, are not allowed to be
registered.1126
Where a representation of the armorial bearings, insignia, orders of
chivalry, decorations or flags of any State, city, borough, town, place,
society, body corporate, institution or person appears on a mark, the
Registrar, before proceeding to register the mark, must, if he so requires,
be furnished with a consent to the registration and use of such emblems
from such official or other person as appears to the Registrar to be entitled
to give consent, and in default of such consent, he may refuse to register
the mark.1127 Also, where the name or representation of any person appears
on a trademark, the Registrar must, if he so requires, before proceeding
to register the mark, be furnished with consent from him, and in default
of such consent he may refuse to register the mark.1128
1122
[1947] 64 RPC 27.
1123
[2000] RPC 345.
1124
[1982] FSR 72.
1125
Rule 15, Trade Marks Act.
1126
Supra note 1090.
346 INTELLECTUAL PROPERTY LAW

Relative Grounds for Refusal of Registration

The Trademarks Act prohibits the registration of a trademark that is

identical and resembles the earlier trademark. Therefore, no trade mark
must be registered in respect of any goods or description of goods that is
identical with a trade mark belonging to a different proprietor and already
on the register in respect of the same goods or description of goods, or
that so nearly resembles each other such as to be likely to deceive or
cause confusion. 1129 In Pianotist Company’s Application,1130 an
application to register ‘Neola’ for player piano was opposed by the
proprietor of the registered mark ‘pianola’ for musical instruments. The
court held that the two marks were not similar, hence no likelihood of
confusion. Parker, J. stated that when determining the similarity of words
in trade marks, the following factors should be taken into account.
(a) Judge the words by their look and by their sound.
(b) The goods to which marks are to be applied.
(c) The nature and kind of customer who would be likely to buy
those goods.
(d) The surrounding circumstances.
(e) A consideration of what is likely to happen if each of those
trademarks is used in a normal way as a trademark for the
goods of the respective owners of the marks.
If, in considering all those circumstances, you come to the conclusion
that there will be a confusion, that is to say, not necessarily that one man
will be injured and the other will gain illicit benefit, but that there will be
a confusion in the mind of the public which will lead to the confusion in
the goods, then you must refuse the registration, or rather you must refuse
registration in that case. Parker, J. concluded that having regard to the
nature of the customer, the article in question, and the price at which it is
likely to be sold, and all the surrounding circumstances, no man of
ordinary intelligence is likely to be deceived. If he wants a ‘pianola’, and
I cannot imagine that anybody hearing the word ‘pianola’ if pronounced
in the ordinary way in the shop, and knowing the instruments as all
shopmen do, would be likely to be led to pass off that customer a ‘neola’
instead of a ‘pianola’.1131
Similarly, in British Sugar Plc v. James Roberson and Sons,1132 British
Sugar Plc produces a large range of sugar-related products under the
general mark ‘silver spoon’. Among them is a syrup topping for ice cream
1127
Rule 17, Trade Marks Act.
1128
Rule 18, Trade Marks Act.
1129
Section 17 (1), Trade Marks Act.
1130
[1906] 23 RPC 774.
1131
Ibid.
1132
[1996] RPC 281.
 TRADEMARK REGISTRATION 347

and other desserts which they market as ‘silver spoon treat’ in toffee and
other flavours. They registered ‘treat’ for dessert sauces and syrups in
class 30 in 1992. James Robertson, the well-known jam manufacturer,
produced a toffee-flavoured spread which they sold as ‘Robertson’s Toffee
Treat’. In four months’ selling, no evidence was produced of confusion
between the products and passing off was not alleged. Jacob, J. held that
the spread was not and should not be regarded as similar to the desserts
and, therefore, the defendants were not infringing the mark.
Jacob, J. proposed that the following factors should be taken into
account when determining similarity of trademarks:
(i) the uses of the respective goods;
(ii) the users of the respective goods;
(iii) the physical nature of the goods;
(iv) the trade channels through which the goods are marketed;
(v) the respective locations of the goods where the goods are sold
in the supermarket; and
(vi) whether the two products or goods are rivals in the same market.
Where a trademark for goods is similar to an existing trademark and is
used in relation to similar goods, the courts will consider the extent of
the public confusion created by such similarity. The test is whether there
is a likelihood of confusion on the part of the public.
In Trade Kings Limited v. The Attorney General,1133 the applicant,
Trade Kings Limited, filed an appeal to the High Court against the refusal
of the Registrar of Patents, Trade Marks and Designs to register YEBO
as a trademark in class 3. The Registrar’s refusal was based on the
assumption that if YEBO was registered as a trade mark it would conflict
with EBU which is a registered trademark. Further, that the trademark
YEBO is not adapted to distinguish and that phonetically it would conflict
with LIFEBUOY and EBU, both of which are registered trade marks. In
determining whether YEBO as a trademark would if registered conflict
with registered trade mark EBU, Silomba, J. stated:

The test to be used 1134 in deciding the similarities or

dissimilarities between two words or marks was whether
the ordinary sensible members of the public would be
confused by the use of the two marks… YEBO though it
is a Ngoni word the manner it is pronounced by the Ngoni
would be of no relevance in view of the limited influence
the Ngoni language has on the Zambian public. In my view
the key letters in YEBO that are likely to distinguish the
mark from EBU are ‘Y’ at the beginning and ‘O’ at the
1133
1999 ZR p. 53.
1134
Judge Silomba relied on the English case of Newsweek Inc. v. BBC (1979) RPC 441.
348 INTELLECTUAL PROPERTY LAW

end. In this regard the ordinary sensible Zambian would,

in his or her pronunciation of the word YEBO, tend to
fuse Y and E into ‘YEE’ and B and O into ‘BOO’. The
result would be that trade mark YEBO would be
pronounced as YEEBOO which is phonetically different
from the trade mark EBU.

Silomba, J. allowed the appeal and quashed the decision of the Registrar
not to register the trade mark YEBO in class 3 of Part A of the register,
and ordered that the trade mark application No. 608/96 YEBO be
registered as a trade mark.
In William Bailey (Birmingham) Limited’s Application,1135 the court
held that the mark ‘Erectiko’ is similar to the mark ‘Erector’ and hence is
likely to cause confusion to the public as it relates to the same goods. In
that case the applicants sought to register ‘Erectiko’ in respect of toys.
The opponents, the registered proprietors of the mark ‘Erector’ which
they had used for many years in relation to toys such as construction sets,
objected to the application on the grounds that ‘Erectiko’ so nearly
resembled their trade mark that it was calculated to deceive and likely to
cause confusion. The Assistant Registrar dismissed their objections and
the opponents appealed.
Similarly, in Aristoc v. Rysta,1136 the plaintiffs marketed a brand of
stockings under the trademark ‘ARISTOC’. The defendants sought to
apply for the mark ‘RYSTA’ to stockings they manufactured. The
registration was refused as ‘RYSTA’ was considered to be too similar to
‘ARISTOC’ and as such was likely to deceive and cause confusion. The
court further held that the onus of proving that there is no likelihood of
deception and confusion is cast on the applicant for registration of a
mark,1137 which in this case the applicant has failed to discharge.

Registration Process

As already pointed out, there are three routes available for the registration
of a trademark. The first is the national route, which requires the proprietor
of the mark to apply for a trade mark under the Trade Marks Act, Cap
401, if the proprietor wishes to register and protect the trade mark outside
Zambia, he has to apply to the trade mark office of each country in which
he is seeking protection by filing the corresponding application in the
required language and paying the required fees. The basis for this is that
trade marks are territorial, meaning that a trademark is only protected in
the country where it is registered. Therefore, if a trademark has to be
protected in another country, it must be registered in that respective
1135
[1935] 52 RPC 136.
1136
[1945] AC 68.
1137
Eno v. Dunn (1890) 15 AC 252.
 TRADEMARK REGISTRATION 349

country. The Paris Convention provides that a mark duly registered in a

country of the Paris Convention or Union must be considered as
independent of marks registered in the other countries of all the union,
including the country of the origin.1138
The second route is the regional route. Under the regional route, the
proprietor who wishes to protect his trademark in countries which are
members of a regional trademark system may apply for registration, with
effect in the territories of all member countries, by filing an application
for a trade mark at the relevant regional office. The regional trademark
offices include ARIPO for the Banju Protocol on Registration of Trade
Marks, and the office for the Harmonisation of the Internal Market of the
European Union.1139
The third route is the international route. Under the international route,
the trade mark proprietor makes an application to either the International
Bureau of WIPO or the national trade mark office, designate some or all
the contracting parties of the Madrid system or Union in which he wishes
to have the trademark to be protected. The principal advantage of using
the Madrid system is that the trade mark owner can register his trademark
in all the countries party to the system by filing a single international
application, in one language, and subject to one set of fees and deadlines.
Thereafter, the international registration can be maintained and renewed
through a single procedure.

Aplication for Registration

Any person claiming to be the proprietor of a trademark used or proposed

to be used by him who is desirous of registering it must apply in writing
to the Registrar in the prescribed manner for registration either in Part A
or in Part B of the register.1140 The application for registration of a trade
mark requires the submission of the following items:1141
(i) a request for registration;
(ii) the name, address and signature of the applicant;
(iii) a statement of goods in relation to which it is sought to register
the trade mark;
(iv) a representation of the trade mark;
(v) a statement that the trade mark is being used, by the applicant
or with his consent, in relation to those goods, or that he has a
bona fide intention to use it;1142 and
(vi) prescribed fees.

1138
Supra note 283.
1139
Zambia has not yet ratified the Banju Protocol.
1140
Supra note 1009.
1141
Section 14 (1), Trade Marks Act.
1142
Section 22 (2), Trade Marks Act.
350 INTELLECTUAL PROPERTY LAW

Besides, to qualify for registration, the mark:

(a) must be distinctive in respect of goods for which its registration
and use is intended;1143
(b) must not be a mark prohibited from registration as a trademark
under any law including the Trade Marks Act itself;1144
(c) must not be confusingly similar to any trade mark which is the
subject either of a prior application by another person or of a
prior registration by another person which is currently valid or
whose validity expired within the last twelve months.1145
The Registrar may refuse the application or may accept it absolutely or
subject to such amendments, modifications, conditions or limitations, if
any, as he may think right.1146 In case of an application for registration of
a trademark in Part A of the register, the Registrar may, if the applicant is
willing, instead of refusing the application, treat it as an application for
registration in Part B and deal with the application accordingly.1147 In the
case of a refusal or conditional acceptance, the Registrar must, if required
by the applicant, state in writing the grounds of his decision and the
materials used in arriving at his decision, and the said decision is the
subject of appeal.1148
Where the proprietor of a trademark claims to be entitled to the
exclusive use of any part of the trademark, he may apply to register the
whole and any part as separate marks. Each separate trademark must
satisfy all the conditions of an independent trade mark and must have all
the incidents of an independent trade mark.1149 In addition, where a person
claiming to be the proprietor of several trade marks, in respect of the
same goods or description of goods, which while resembling each other
in the material particulars, yet differ in respect of statements of the goods
in relation to which they are respectively used or proposed to be used; or
statements of number, price, quality or names of places; or other matter
of a non-distinctive character which does not substantially affect the
identity of the trade mark; or colour; seeks to register those trade marks,
they may be registered as a series in one registration.1150

Examination

The examination of the application for the trademark registration is in

two stages, namely, formal examination and substantive examination.
1143
Section 14 (2), Trade Marks Act.
1144
Supra note 1090.
1145
Section 17, Trade Marks Act.
1146
Section 22 (3), Trade Marks Act.
1147
Section 22 (4), Trade Marks Act.
1148
Section 22 (5), Trade Marks Act.
1149
Section 26 (1), Trade Marks Act.
1150
Section 26 (2), Trade Marks Act.
 TRADEMARK REGISTRATION 351

The formal examination involves the examination of the application by

the trademark office to make sure that it complies with the administrative
requirements or formalities, such as whether the application form is
properly filed in and whether the prescribed fees have been paid.
The substantive examination, on the other hand, ensures that the
trademark office examines the application for a trademark to verify
whether it complies with all the substantive requirements, namely absolute
and relative grounds for refusal of registration.
It should be noted that in examining the trademark applied for
registration the trademark office conducts a search. The Trade Marks Act
provides that upon receipt of an application for the registration of a
trademark in respect of any goods, the Registrar must cause a search to
be made amongst the registered marks and applications, for the purpose
of ascertaining whether there are on record in respect of the same goods
or description of goods any marks identical with the mark applied for, or
so nearly resembling it as to render the mark applied for likely to deceive
or cause confusion, and the Registrar may cause the search to be renewed
at any time before the acceptance of the application.1151 After such search
and consideration of the application, and of any evidence of use or of
distinctiveness or of any other matter which the applicant may furnish or
may be required to furnish, the Registrar may accept the application
absolutely, or he may object to it, or he may express his willingness to
accept to such conditions, amendments, disclaimer, modifications or
limitations as he may think right to impose.1152
If the Registrar objects to the application, he must inform the applicant
of his objections in writing and, unless within two months the applicant
applies for a hearing or makes a considered reply in writing to those
objections, he must be deemed to have withdrawn his application.1153 If
the Registrar is willing to accept the application subject to any conditions,
amendments, disclaimer, modifications or limitations, he must
communicate such willingness to the applicant in writing and, objects to
such conditions, amendments, disclaimer, modifications or limitations,
he must within two months from the date of communication apply for a
hearing or communicate his considered objections in writing, and if he
does not do so he must be deemed to have withdrawn his application.1154
If the applicant does not object to such conditions, amendments,
disclaimer, modifications or limitations, he has to notify the Registrar in
writing and alter the application accordingly.1155

1151
Rule 31, Trade Marks Act.
1152
Rule 32, Trade Marks Act.
1153
Rule 33, Trade Marks Act.
1154
Rule 34, Trade Marks Act.
1155
Rule 34, Trade Marks Act.
352 INTELLECTUAL PROPERTY LAW

Procedure for Trade Mark Registration

Application
Application refused;
withdraw that is the end

Examination
(Formal and Substantive)
Objection by the
Registrar
Arguments

Objection overcome

Publication

Opposition by any
person
No opposition
Opposition

Registration
If opposition fails

Renewal
 TRADEMARK REGISTRATION 353

In a case where the Registrar makes any requirements to which the

applicant does not object, the applicant must comply with such
requirements before the Registrar issues such statement in writing. The
date when such statement is sent to the applicant must be deemed to be
the date of the Registrar’s decision for the purpose of appeal.1156 The
Registrar may ask the applicant to insert in his application such a
disclaimer as the Registrar may think fit, in order that the public generally
may understand what the applicant’s rights, if his mark is registered, will
be.1157

Publication

The Trade Marks Act requires the applicant of a trademark to advertise

the application so as to enable those who may be affected by the
registration of the trademark in question to raise an objection. Therefore,
once an application for registration of a trademark has been accepted,
whether absolutely or subject to conditions or limitations, the applicant
must advertise the application in the Trade Mark Journal. The
advertisement must state all the conditions and limitations subject to which
the application has been accepted.1158 However, the Registrar may, under
certain circumstances direct that the application be advertised before
acceptance.1159
In Trade Kings Limited v. The Attorney General,1160 Silomba, J. in
answering the question of the significance of advertising, stated that
advertisement was necessary to allow other interested parties to know
whether what was being proposed for registration was injurious to their
business interests. ‘As far as the applicant can ascertain, the Registrar
does not dispute, there were no objection or opposition from any quarter
to the registration of the trade mark YEBO, not even from ROP Limited,
the holders of trade mark EBU, in class 3 under 14/87. It must have,
therefore come as a big surprise to the applicant to be told, more than
one year after the advertisement, that the application was ineligible for
registration.’ Silomba, J. therefore, held that if there is no opposition to
the registration of an application for a trademark within the period allowed
in the advertisement the Registrar shall, unless the application has been
accepted in error, register the trademark YEBO.

1156
Rule 35 (2), Trade Marks Act.
1157
Rule 36, Trade Marks Act.
1158
Section 23(1), Trade Marks Act.
1159
Ibid.
1160
1999 ZR 53.
354 INTELLECTUAL PROPERTY LAW

Opposition

The Trade Marks Act allows any person to oppose the registration of a
trademark. Thus, any person may, within two months from the date of
any advertisement in the Trade Marks Journal of an application for
registration of a trade mark give notice to the Registrar of opposition to
the registration.1161 The notice to be given in writing in the prescribed
manner must include a statement of the grounds of opposition.1162 The
Registrar must send a copy of the notice to the applicant and, within two
months of the receipt of the opposition, the applicant must send to the
Registrar, a counter-statement of the grounds on which he relies for his
application, and if he does not do so, he will be deemed to have abandoned
his application.1163 If the applicant sends such a counter-statement, the
Registrar must furnish a copy of the persons giving notice of opposition,
and must, after hearing the parties, if so required, and considering the
evidence, decide whether, and subject to what conditions or limitations,
if any, registration is to be permitted.1164

Registration

When an application for registration of a trademark has been accepted,

and either the application has been opposed and the time for notice of
opposition has expired, or the application has been opposed and the
opposition has been decided in favour of the applicant, the Registrar
must, unless the application has been accepted in error or unless the High
Court otherwise directs, register the trademark.1165 The trademark, when
registered, must be registered as of the date of the application for
registration, and that date will be deemed the date of registration.1166
On the registration of a trademark, the Registrar will issue to the
applicant a certificate of registration of trademark.1167 Where, however,
the registration of a trade mark is not completed within twelve months
from the date of the application by reason of default on the part of the
applicant, the Registrar may, after giving notice of the non-completion
to the applicant in writing, treat the application as abandoned, unless it is
completed within the time specified in that behalf in the notice.1168

1161
Section 23 (2), Trade Marks Act.
1162
Section 23 (3), Trade Marks Act.
1163
Section 23 (4), Trade Marks Act.
1164
Section 23 (5), Trade Marks Act.
1165
Section 24 (1), Trade Marks Act.
1166
Ibid.
1167
Section 24 (2), Trade Marks Act.
1168
Section 24 (3), Trade Marks Act.
 TRADEMARK REGISTRATION 355

Duration and Renewal

The trademark does not give the proprietor a monopoly right. Therefore,
the Trade Marks Act allows the proprietor of a trademark indefinite
duration on condition that he renews the trademark.
The Trade Marks Act provides that a trademark registration is valid
for seven years but may be renewed from time to time.1169 The proprietor
of a trademark must renew the registration of the trademark, after payment
of a renewal fee, for a period of fourteen years from the date of expiration
of the original registration or of the last renewal of the registration.1170 It
must be noted that the Registrar may remove a trademark from the register
for non-payment of the renewal fee.1171

Revocation, Invalidity, Alteration and Rectification

The Trade Marks Act provides a number of ways in which the rights
conferred by a registered trademark, may be varied or cancelled. These
include:
(i) revocation of registration, or removal of a registration on
grounds that have arisen since registration;1172
(ii) declaration of invalidity, for cases where the mark ought not
to have been registered originally;1173
(iii) alteration;1174
(iv) rectification for corrections concerning errors or omissions
from the register other than matters concerned with validity.1175

Revocation

The cancellation of a trademark leads to loss by trademark proprietor of

his rights under the registration. The grounds on which a trademark may
be removed from the register include:

(a) Failure to Renew

A trademark is registered initially for a period of seven years. If, however,

the proprietor fails to renew his trademark registration, after the stated
period, and fails to pay renewal fees, the trademark will be removed
from the register.1176 Where a trademark has been removed from the
1169
Section 25 (1), Trade Marks Act.
1170
Section 25 (2), Trade Marks Act.
1171
Section 25 (4), Trade Marks Act.
1172
Section 31, Trade Marks Act.
1173
Part IV, Trade Marks Act.
1174
Section 40, Trade Marks Act.
1175
Part VIII, Trade Marks Act.
1176
Section 25, Trade Marks Act.
356 INTELLECTUAL PROPERTY LAW

register, the Registrar must cause to be entered in the register a record of

the removal.1177 Upon renewal or restoration and renewal of a registration,
a notice to that effect must be sent to the registered proprietor and the
renewal or restoration and renewal will be advertised in the Trade Marks
Journal.1178

(b) Failure to Use

The Trade Marks Act requires the applicant or proprietor of a mark to

state his bona fide intention to use the trademark once registered or that
he is already using it. Therefore, if the owner of a trademark fails to use
his mark, any person aggrieved may apply to the High Court for its
cancellation.1179

(c) The request of the registered owner

The registered owner may at any time renounce his registration for either
all or some of the goods for which the trademark is registered. At the
request of the registered owner the Trade Mark office will remove the
trademark from the register either wholly or in part.

(d) Cancellation on account of nullity

If a trade mark consists of a sign that that should not have been registered,
it can be declared null and void by the court at the request of any aggrieved
or interested person.1180 Furthermore, the High Court, on the application
of either the Registrar or any aggrieved person may expunge or vary the
registration of a trademark on the ground of any contravention of or
failure to observe a condition entered on the register.1181

(e) Loss of distinctiveness

If the registered trademark owner has provoked or tolerated the

transformation of a mark into a generic name for one or more of the
goods in respect of which the mark is registered, the mark becomes liable
for removal from the register.1182

1177
Rule 69, Trade Marks Act.
1178
Rule 70, Trade Marks Act.
1179
Section 31, Trade Marks Act.
1180
Supra note 1173.
1181
Section 38, Trade Marks Act.
1182
Supra note 1173.
 TRADEMARK REGISTRATION 357

Invalidity

The registration of a trademark may be declared invalid on the ground

that the trademark was registered in breach of the absolute grounds for
refusal of registration.1183 In addition, the registration of a trademark may
be declared invalid on the grounds that it is identical and resembles the
earlier trademark.1184

Alteration

The registered proprietor of a trademark may apply to the Registrar for

leave to add to or alter the trademark in any manner not substantially
affecting the identity of the trademark. The Registrar may refuse leave or
may grant it on such terms and subject to limitations as he may think
fit. 1185 The Registrar may, if it appears expedient to him, direct the
registered proprietor to advertise the application in the Trade Marks
Journal before making his decision.1186 Within two months from the date
of such advertisement, any person may give notice of opposition to the
application to alter or amend. The Registrar must send a statement of
objections to the applicant. The Registrar must, after hearing the parties
if so required, decide whether to allow the application to alter or amend
the registration of the trademark.1187 Where the application to alter or
amend the registration of the trademark has been allowed, it must be
advertised in the Trade Mark Journal.1188

Rectification

Any person aggrieved by the non-insertion in or omission from the register

of any entry, or by any entry made in the register without sufficient cause,
or by any entry wrongly remaining on the register, or by any error or
defect in any entry in the register, may apply to the High Court or, at the
option of the applicant, to the Registrar, and the High Court or the
Registrar may make such order for making, expunging or varying the
entry as the High Court or the Registrar may think fit.1189
It should be noted that in case of fraud in the registration, assignment
or transmission of a registered trademark, the Registrar may himself apply
to the High Court.1190 Where the High Court orders the rectification of
1183
Supra note 1090.
1184
Supra note 1145.
1185
Section 40 (1), Trade Marks Act.
1186
Section 40 (2), Trade Marks Act.
1187
Section 40 (2), Trade Marks Act.
1188
Section 40 (4), Trade Marks Act.
1189
Section 37 (1), Trade Marks Act.
1190
Section 37 (3), Trade Marks Act.
358 INTELLECTUAL PROPERTY LAW

the register, the Registrar must, on receipt of the notice, rectify the register
accordingly.1191 The said power to rectify the register conferred on the
High Court and the Registrar includes power to remove a registration in
part A of the register to part B.1192 the Registrar may, on request made in
the prescribed manner by the registered proprietor:
(i) correct any error in the name, address or description of the
registered proprietor of a trade mark;1193
(ii) enter any change in the name, address or description of the
person who is registered as proprietor of a trade mark;1194
(iii) cancel the entry of a trade mark on the register;1195
(iv) strike out any goods or classes of goods from those in respect
of which a trade mark is registered;1196
(v) enter a disclaimer or memorandum relating to a trade mark
which does not in any way extend the rights given by the
existing registration of the trade mark.1197
The Registrar may, on request made by a registered user of a trademark,
correct any error or enter any change in the name, address or description
of the registered user.1198

Registration Subject to Disclaimer

The Trademarks Act provides for registration of a trademark subject to a

disclaimer. Where the registration of a trademark is subject to a disclaimer,
the rights conferred by a registered trademark are restricted. Thus, if a
trade mark contains any part not separately registered by the proprietor
as a trade mark, or contains matter common to the trade or otherwise of
a non-distinctive character, the Registrar, or the High Court in deciding
whether the trade mark must be entered or remain on the register, may
require as a condition of its being on the register, namely, that the
proprietor must disclaim any right to the exclusive use of any part of the
trade mark or to the exclusive use of all or any portion of such trade
mark, or that the proprietor should make such other disclaimer as the
Registrar or the High Court may consider necessary for the purpose of
defining his rights under the registration.1199
No disclaimer entered on the register would affect any rights of the
proprietor of a trademark except those arising out of the registration of
the trademark in respect of which the disclaimer is made.1200
1191
Section 37 (4), Trade Marks Act.
1192
Section 37 (5), Trade Marks Act.
1193
Section 39 (1)(a), Trade Marks Act.
1194
Section 39 (1)(b), Trade Marks Act.
1195
Section 39 (1)(c), Trade Marks Act.
1196
Section 39 (1)(d), Trade Marks Act.
1197
Section 39 (1)(e), Trade Marks Act.
1198
Section 39 (2), Trade Marks Act.
1199
Section 19, Trade Marks Act.
1200
Ibid.
 TRADEMARK REGISTRATION 359

Registered users and Permitted use

A person other than the proprietor of a mark may be a registered user in

respect of all or any of the goods in respect of which it is registered, and
his use of the mark, in accordance with any conditions or instructions to
which his registration is subject, is known as the ‘permitted use’.1201 Such
user is deemed for all purposes to be used by the proprietor only.1202
In case of an infringement of a trademark, a registered user of a
trademark may call upon the proprietor to take proceedings to prevent
the infringement. If the proprietor refuses or neglects to prevent the
infringement within two months after being called upon to do so, the
registered user may institute proceedings for infringement in his own
name as if he were the proprietor, making the proprietor a defendant.
Where a proprietor has been added as defendant he is not liable for any
costs unless he enters an appearance and takes part in the proceedings.1203
The application for registration of a person as a registered user should
be made by the proprietor and the registered user in writing and must be
accompanied by information verified by statutory declaration relating to
the relationship, existing or proposed, between the proprietor and the
proposed registered user, the goods in respect of which registration is
proposed, any conditions or restrictions proposed with respect to the
characteristics of the goods, and the period of the proposed permitted
use if limited in duration.1204
If the Registrar, after considering the information furnished to him, is
satisfied that in all the circumstances the use of the trademark in relation
to the proposed goods or any of them by the proposed registered user
would not be contrary to the public interest, the Registrar may register
the proposed registered user as a registered user in respect to the goods
to which he is so satisfied.1205 The Registrar should, however, refuse an
application to be registered as a registered user if it appears to him that
the grant would tend to facilitate trafficking in a trademark.1206 If required
by the applicant, the Registrar must take steps for securing that information
given to him for the purposes of an application to register a person as a
registered user is not to be disclosed to trade or business rivals, except in
the case of matters entered on the register.1207
The registration of a person as a registered user may be varied or
cancelled. It may be varied by the Registrar as to the goods involved or
any conditions or restrictions to which it is subject, at the instance of the
1201
Section 33 (1), Trade Marks Act.
1202
Section 33 (2), Trade Marks Act.
1203
Section 33 (3), Trade Marks Act.
1204
Section 33 (4), Trade Marks Act.
1205
Section 33 (5), Trade Marks Act.
1206
Section 33 (6), Trade Marks Act.
1207
Section 33 (7), Trade Marks Act.
360 INTELLECTUAL PROPERTY LAW

registered proprietor.1208 It may be cancelled by the Registrar at the

instance of the registered proprietor, the registered user, any other
registered user of the trademark or at the instance of any person on any
of the following grounds:1209
(a) that the registered user has used the trademark otherwise than
by way of the permitted use or in such a way as to cause or to
be likely to cause deception or confusion;1210
(b) that the proprietor or the registered user misrepresented or failed
to disclose some fact material to the application for the
registration or that the circumstances have materially changed
since the date of the registration;1211
(c) that the registration ought not to have been effected, having
regard to rights vested in the applicant by virtue of a contract
in the performance of which he is interested.1212
The Registrar is empowered at any given time to cancel the registration
of a person as a registered user of a trademark in respect of which the
trademark is no longer registered.1213

Associated Trade Marks

Where a mark is registered, or is the subject of an application for

registration, in respect of any goods is identical with another mark
registered or the subject of an application for registration in the name of
the same proprietor in respect of the same goods or description of goods
or so nearly resembles it as to be likely to deceive or cause confusion if
used by a person other than the proprietor, the Registrar may require that
the marks be entered on the register as associated marks.1214 The Registrar
may also require that the trademarks be entered on the register as
associated marks where there is near resemblance of the marks that are
registered, or are a subject of an application in the name of the same
proprietor in respect of goods which are associated with those goods or
goods of that description.1215
On application made in the prescribed manner by the registered
proprietor as associated trademarks, the Registrar may dissolve the
association in respect of any of them if he is satisfied that there would be
no likelihood of deception or confusion being caused if that trademark
were used by another person in relation to any of the goods in respect of
1208
Section 33 (8)(a), Trade Marks Act.
1209
Section 33 (8)(b), Trade Marks Act.
1210
Section 33 (8)(c)(i), Trade Marks Act.
1211
Section 33 (8)(c)(ii), Trade Marks Act.
1212
Section 33 (8)(c)(iii), Trade Marks Act.
1213
Section 33 (10), Trade Marks Act.
1214
Section 28 (2), Trademarks Act.
1215
Ibid.
 TRADEMARK REGISTRATION 361

which it is registered and may amend the register accordingly.1216

Trademarks that are registered as, or deemed to be associated trademarks
should be assignable and transmissible only as a whole and not separately,
but they should for all other purposes, be deemed to have been registered
as separate trademarks.

Certification Trade Marks

A certification trade mark is a mark adapted in relation to any goods to

distinguish in the course of trade goods certified by any person in respect
of origin, material, mode of manufacture, quality, accuracy or other
characteristics from goods not so certified.1217 A certification mark may
not be registered if the proprietor carries on a trade in goods of the kind
certified.1218
The registration of a person as proprietor of a certification trademark
in respect of any goods should, if valid, give to that person the exclusive
right to the use of the trademark in relation to those goods.1219 The
certification trade mark will be infringed if a person not authorised by
the proprietor of the certification trademark uses a mark identical with it
or nearly resembling it as to be likely to deceive or cause confusion in
the course of trade in relation to any goods in respect of which it is
registered and in such manner as to render the use of the mark likely to
be taken either as being used as a trademark or in a case in which the use
is upon the goods or in physical relation or in advertising circular or
other advertisement issued to the public, as importing reference to some
person as having the right either as proprietor or by his authorisation to
use the trademark or to goods certified by the proprietor.1220
The right to the use of a certification trademark given by registration
shall be subject to any conditions or limitations entered on the register
and should not be deemed to be infringed by the use of any such mark in
any mode, in relation to goods to be sold or otherwise traded in any
place, in relation to goods to be exported to any market or in any other
circumstances to which the registration does not extend.1221
In addition, the right to use a certification trademark given by
registration will not be infringed by the use of any such mark by any
person:
(i) the proprietor of the trademark has applied the trade to the goods,
or has at any time expressly or impliedly consented to the use
of the trade mark;1222
1216
Ibid.
1217
Section 42 (1), Trademarks Act.
1218
Ibid.
1219
Section 42 (3), Trade Marks Act.
1220
Section 42 (3), Trade Marks Act.
1221
Section 42 (4), Trade Marks Act.
1222
Section 42 (5)(a), Trade Marks Act.
1223
Section 42 (5)(b), ibid.
362 INTELLECTUAL PROPERTY LAW

(ii) if the use of the trademark is reasonably necessary in order to

indicate that the goods are so adapted and neither the purpose
nor the effect of the use of the mark is to indicate otherwise
than in accordance with the fact that the goods are certified by
the proprietor.1223
Where a certification mark is one of two or more registration trade marks
that are identical or nearly resemble each other, the use of any of those
trade marks in exercise of the right to the use of that trademark given by
registration must not be deemed to be an infringement of the right so
given to the use of any other of those trademarks.1224
It is important to note that a certification trademark is not assignable
or transmissible without the consent of the Registrar.1225 The Registrar
may, on his own motion or the application of any person aggrieved, make
such order as he thinks fit for expunging or varying any entry on the
register relating to a certification trademark on the ground:
(i) that the proprietor is no longer competent, in the case of any of
the goods in respect of which the trademark is registered, to certify
those goods;1226
(ii) that the proprietor has failed to observe the provision of the
deposited regulations to be observed on his part;1227
(iii) that it is no longer to the public advantage that the trademark
should be registered;1228
(iv) that it is requisite for the public advantage that, if the trademark
remains registered, the regulations should be varied.1229

Well-Known Trade Marks

Well-known trademarks are trademarks that are considered to be well-

known by the competent authority of the country where the protection
for the trademark is sought. It is worth noting that well-known trademarks
benefit from stronger protection than other trademarks. For instance, well-
known trademarks may be protected even if they are not registered or
have not been used in a given territory. The main purpose of this stronger
protection is to prevent companies from free-riding on the reputation of
a well-known mark and/or causing damage to its reputation or goodwill.
The Paris Convention provides that countries in the Union undertake,
ex officio if their legislation so permits, or at the request of an interested
party, to refuse or to cancel the registration, and to prohibit the use of a
1224
Section 42 (7), ibid.
1225
Section 42 (8), ibid.
1226
Regulation 4 (1)(a), ibid.
1227
Regulation 4 (1)(b), ibid.
1228
Regulation 4 (1)(c), ibid.
1229
Regulation 4 (1)(d), ibid.
 TRADEMARK REGISTRATION 363

trade mark which constitutes a reproduction, an imitation, or a translation,

liable to create confusion, of a mark considered by the competent authority
of the country of registration or use to be well-known in that country as
being already the mark of a person entitled to the benefits of this
convention and used for identical or similar goods. These provisions
shall also apply when the essential part of the mark constitutes a
reproduction of any such well-known mark or an imitation liable to create
confusion.1230
It must be stated that in order to help competent authorities to determine
whether a trademark is well-known, the WIPO General Assembly in 1999
adopted guidelines known as ‘Joint Recommendation concerning
provisions on the protection of well-known marks’. Thus, in determining
whether a mark is a well-known mark, the competent authority shall take
into account any circumstances from which it may be inferred that the
mark is well- known.1231 In particular, the competent authority shall
consider information submitted to it with respect to factors from which
it may be inferred that the mark is or is not, well-known, including, but
not limited to, information concerning the following:
(i) the degree of knowledge or recognition of the mark in the
relevant sector of the public;
(ii) the duration, extent and geographical area of any use of the
mark;
(iii) the duration, extent and geographical area of any promotion of
the mark, including advertising or publicity and the
representation at fairs or exhibitions, of the goods to which the
mark applies;
(iv) the duration and geographical area of any registration, and/or
any applications for registration of the mark, to the extent that
they reflect use or recognition of the mark;
(v) the record of successful enforcement of rights in the mark, in
particular, the extent to which the mark was recognised as well
known by competent authorities; and
(vi) the value associated with the mark.1232
The above factors are not pre-conditions for reaching the determination
whether the mark is a well-known mark. Rather, the determination in
each case will depend upon the particular circumstances of that case. In
all cases, all the factors may be relevant, and in other cases, some of the
factors may be relevant.1233

1230
Supra note 283.
1231
Article 2 (1)(a), Joint Recommendation concerning provisions on Protection of Well-known Marks.
1232
Article 2 (1)(b), Joint Recommendation concerning provisions on Protection of Well-known Marks.
1233
Article 2 (1)(c), Ibid.
364 INTELLECTUAL PROPERTY LAW

Relevant Sector of the Public

The relevant public sector shall include, but shall not necessarily be limited
to:
(i) actual and/or potential consumers of the type of goods and/or
services to which the mark applies;
(ii) persons involved in channels of distribution of the type of goods
and/or services to which the mark applies;
(iii) business circles dealing with the type of goods and/or services
to which the mark applies;1234
(a) Where a mark is determined to be well-known in at least
one relevant sector of the public in a member State, the
mark shall be considered by the Member State to be a
well-known mark;1235
(b) Where a mark is determined to be known in at least one
relevant sector of the public in a Member State, the mark
may be considered by the Member State to be a well-
known mark;1236 and
(c) A Member State may determine that a mark is a well-
known mark, even if the mark is not well-known or, if
the Member State applies subparagraph (c), know, in any
relevant sector of the public in the member State.1237

Factors which shall not be required

A Member State shall not require, as a condition for determining whether

a mark is a well-known mark:
(i) that the mark has been used in, or that the mark has been
registered or that an application for registration of the mark
has been filed in or in respect of, the Member State;
(ii) that the mark is well-known in, or that the mark has been
registered or that an application for registration of the mark
has been filed in or in respect of, any jurisdiction other than
the Member State; or
(iii) that the mark is well known by the public in the Member
State.1238

1234
Article 2 (2)(a), ibid.
1235
Article 2 (2)(b), ibid.
1236
Article 2 (2)(c), ibid.
1237
Article 2 (2)(d), ibid.
1238
Article 2 (3)(a), ibid.
 TRADEMARK REGISTRATION 365

Paris Convention Trade Marks

The Trade Marks Act provides for applications for trademarks made under
the Paris Convention. Thus, any person who is a national of the Paris
Union1239 or nationals of countries outside the Union who are domiciled
or who have real and effective industrial or commercial establishments
in one of the countries of the Union,1240 and who has applied for protection
for any trademark in the Paris Union or his legal representative or assignee
is entitled to registration of his trade mark in priority of other
applicants.1241 The registration of the said trademark will have the same
date as the date of the application in the Convention country if it is made
within six months from the date of the application for protection in the
Convention country.1242 Where the applications have been made for the
registration of a trade mark in two or more convention countries, the
period of six months must be reckoned from the date on which the earlier
or earliest of those applications was made.1243
The application for registration of a trade mark under the Paris
Convention must be made in the same manner as is required in the case
of any ordinary application.1244 It should be noted that the proprietor of a
trademark is not entitled to recover damages for infringement that happens
prior to the actual date on which his trademark is registered in Zambia.1245

Trade Mark Agents

The Trade Marks Act provides for the registration of trademark agents.
The functions of the trademark agents are to act on behalf of any person
in connection with any matter or proceeding before the Registrar; to draw
and sign all documents; to make all communications between an applicant
and the Trade Marks Office and to represent an applicant at all attendances
before the Registrar.1246
The Registrar may remove from the register of trade mark agents the
name of any trademark agent upon proof of his satisfaction that such
trademark agent:
(i) has died;1247
(ii) has become of unsound mind;1248

1239
Article 2, Paris Convention.
1240
Article 3, Paris Convention.
1241
Section 73 (1), Trade Marks Act.
1242
Ibid.
1243
Section 73 (2), Trade Marks Act.
1244
Section 73 (3), Trade Marks Act.
1245
Section 73 (1)(ii), ibid.
1246
Section 90 (1), ibid.
1247
Section 87 (1)(a), ibid.
1248
Section 87 (1)(b), ibid.
366 INTELLECTUAL PROPERTY LAW

(iii)has been adjudged or otherwise declared bankrupt under any

written law, or has made an assignment to or composition with
his creditors;1249
(iv) has ceased to reside in Zambia, or has ceased to maintain a
place of business in Zambia;1250
(v) has applied for his name to be so removed;1251
(vi) has, after being convicted, in Zambia or elsewhere, of the crime
of theft, fraud, forgery or uttering a forged document or perjury,
been sentenced to serve a term of imprisonment without the
option of a fine, whether such sentence is suspended or not,
and has not received a free pardon; and
(vii) having been entitled to practise as a trade mark agent has ceased
to be so entitled, or has ceased to practise as such.1252
Besides, the High Court may order the Registrar to remove the name of
any trademark agent from the register of trademark agents or may suspend
any trademark agent from practicing as such for such time as it thinks fit
if it is satisfied, after due inquiry, that such person has been guilty of
conduct discreditable to a trademark agent or has been guilty of a breach
of any regulations prescribed for the conduct of trademark agents.1253
Where the name of any trademark agent has been removed from the
register of trademark agents, in the above mentioned circumstances, his
name must not be restored to the register except by direction of the High
Court which may further direct that such restoration be made either without
a fee or on payment of such fee as it may fix.1254

Offences

The Trade Marks Act prohibits trade mark agents from carrying out certain
activities in their practise as trade mark agents. Therefore no trademark
agent should have an interest either as a partner or manager or otherwise
in more than one firm of trademark agents in Zambia.1255 Furthermore,
no trademark agent shall practise under a name or title which includes
the name of any person who is not or was not in his lifetime ordinarily
resident in Zambia or registered or entitled to practise as a trademark
agent under the Trade Marks Act.1256 Besides, no person should practise
as trademark agent if he is a party to a contract of partnership or an
arrangement providing for the sharing or paying over of any professional
1249
Section 87 (1)(c), ibid.
1250
Section 87 (1)(d), ibid.
1251
Section 87 (1)(e), ibid.
1252
Section 87 (1)(g), ibid.
1253
Section 87 (2), Trade Marks Act.
1254
Section 87 (3), ibid.
1255
Section 91 (1), ibid.
1256
Section 91 (2), ibid.
 TRADEMARK REGISTRATION 367

fees relating to the business of a trademark agent with any person who is
prohibited from practicing as a trademark agent.1257
No person who is not a trademark agent should describe himself as or
hold himself out to be, a trademark agent, nor should he permit himself
to be so described or held out.1258 However, any person who is entitled to
practise as a legal practitioner in Zambia and any patent agent may practise
and describe himself as a trademark agent and perform functions of a
trademark agent.1259

1257
Section 91 (3), ibid.
1258
Section 89 (3), ibid.
1259
Section 88, ibid.
368 INTELLECTUAL PROPERTY LAW
 369

Chapter Twenty-seven

DEALINGS IN TRADE MARKS

A trademark is like any other personal property. It may, for example, be
assigned, licensed or transmitted under the operation of the law.

Rights Conferred by Trade Marks

The proprietor of a registered trademark acquires the exclusive right to

use the trade mark and the right to exclude others from using it. The
Trade Marks Act provides that the registration of a person in part A or
part B of the register of trademarks as proprietor of a trademark in respect
of goods must, if valid, give or be deemed to have given that person the
exclusive right to use the trademark in relation to those goods.1260
The right to use a trademark implies, first the right of the owner of the
mark to affix it on goods, containers, packaging, labels etc, or to use it in
any other way in relation to the goods for which it is registered. Secondly,
it implies the right to introduce the goods to the market under the trade
mark. Thirdly, the trade mark’s owner’s right to use his mark in advertising,
promotional activities, business papers, documents and so on.1261
In addition to the exclusive right to use, the registration of a trademark
grants to the proprietor of the trademark the right to exclude others from
using his mark. The right to exclude others from using the trademark
emanates from the basic function of a trademark, which is to distinguish
goods of one enterprise from that of other enterprises. The trademark
owner must be able to object to the use of identical or confusingly similar
marks in order to protect consumers and the general public from being
misled. The Trade Marks Act, therefore, allows the trade mark owner to
object to any use of his trademark by any person for goods for which it is
protected, to the affixing of the trademark on such goods and to the
offering of the goods for sale under the trademark, or the use of the mark
in advertising, business papers or any other kind of document.1262 In
addition, since consumers are to be protected against confusion, protection
also extends to the use of similar goods, if such use is likely to deceive or
cause confusion to the customer.1263
It is important to note that the exclusive right granted to the proprietor
of a trade mark is not absolute. The exclusive right must not prejudice
any existing rights. Therefore, the proprietor or a registered user of a
1260
Section 9 (1), Trade Marks Act.
1261
Supra note 16, at p. 82.
1262
Supra note 1260.
1263
Ibid.
370 INTELLECTUAL PROPERTY LAW

registered trademark is not allowed to interfere with or restrain the use

by any person of a trademark identical with or nearly resembling it, in
relation to goods, to which that person or a predecessor in title of his has
continuously used that trademark from a date anterior:
(a) to the use of the first-mentioned trademark in relation to those
goods by the proprietor or a predecessor in title of his, or
(b) to the registration of the first-mentioned trademark in respect
of those goods in the name of the proprietor or a predecessor
in title of his, whichever is the earlier, or to object, on such use
being proved, to that person being put on the register for that
identical or nearly resembling trade mark in respect of those
goods.1264
Furthermore, the exclusive right shall not apply to the following
circumstances.
(a) Where the trademark owner permits or expressly or impliedly
consents to the use of the trademark;1265
(b) Where the use of the trademark is reasonably necessary to
indicate the intended purpose of a product, provided the use of
the trademark is in the course of trade between any person and
the goods;1266
(c) Any bona fide use by a person of his own name or of the name
of his place of business, or of the name of the place of
business;1267
(d) The use by any person of any bona fide description of the
character or quality of his goods;1268 and
(e) Where trademark rights have been exhausted.

Assignment

The Trade Marks Act provides for the assignment and transmission of
registered trademarks. Thus, notwithstanding any rule of law to the
contrary, a registered trademark must be and should be deemed always
to have been assignable and transmissible either in connection with the
goodwill of a business or not,1269 and also in respect of either of all the
goods in respect of which it is or was registered, or of some, but not all,
of those goods.1270
It is worth noting that the provisions of assignability of registered
trademarks also apply equally to unregistered marks if, at the time of
1264
Section 12, Trade Marks Act.
1265
Section 9 (3)(a), Trade Marks Act.
1266
Section 9 (3)(b), Trade Marks Act.
1267
Section 13(a), Trade Marks Act.
1268
Section 13(b), Trade Marks Act.
1269
Section 27 (1), Trade Marks Act.
1270
Section 27 (2), ibid.
 DEALINGS IN TRADE MARKS 371

assignment or transmission of the unregistered mark, it was used in the

same business as a registered trademark and was assigned or transmitted
at the same time, to the same person and in respect of the same goods.1271
The proprietor of a registered trade mark who is proposing to assign
it in respect of any goods or services in respect of which it is registered
may submit to the Registrar a statement of case, and the Registrar may
issue to him a certificate as to the validity of the assignment, having
regard, in the case of trademarks, to the similarity of goods or the
association of the goods or descriptions of goods and to the similarity of
marks referred to in the case.1272 Such a certificate is conclusive as to the
validity of the assignment in the absence of fraud or misrepresentation
and in so far as such validity is dependent on the facts set out in case, but
only if the title of the assignee is registered within six months of the issue
of the certificate.1273
In the case of an assignment of a trademark otherwise than in
connection with the goodwill of the business, the assignee must, within
six months of the date of assignment or such extended time as the Registrar
may allow, apply to the Registrar for directions as to advertisement of
the assignment and advertise it in such form and manner and within such
period as the Registrar may direct.1274

Trade Mark Licensing

The registered trademark grants the trademark owner the exclusive right
to use the trademark and to allow or license third parties to use the
trademark. The trademark licence permits the third party to do the acts
which are covered by the exclusive rights of the trademark in relation to
goods, that is affixing the trade mark on goods, containers, packaging,
labels and using it in advertising, promotional activities, business papers
and documents.
Though the trademark owner allows the use of his trademark to a
third party, he retains the ownership of the trademark. In return for the
licence the trademark owner receives payment in the form of royalties.
The trademark, therefore, allows the trademark owner to retain the
ownership of his trademark and at the same time receive royalty from it,
in addition to the income from its own exploitation in products and
services it sells.
The third party or licensee is not usually allowed to assign the licence
or grant sub-licences, but such rights can be expressly granted in the
agreement. Besides, the trade mark licences can be either exclusive or
1271
Section 27 (3), ibid.
1272
Section 27 (5), ibid.
1273
Ibid.
1274
Section 27 (7), ibid.
372 INTELLECTUAL PROPERTY LAW

non-exclusive. In the case of a non-exclusive licence, the owner may use

the trademark himself and even permit others to use it. However, in the
case of exclusive licence the trademark owner is not permitted to license
the mark to any other person in the territory and cannot even use the
trademark himself. Exclusive and non-exclusive licences can cover the
whole territory of the country or only part of it. The licenses can cover
all or only some of the goods for which the trademark is registered.1275

Franchising

Franchising is another window/option through which the trademark owner

can allow or licence another person to exploit the trademark. Franchising
is an arrangement whereby one person, the franchisor, who has developed
a system for carrying out a particular business, allows another person
called the franchisee, to use that system in line with the prescriptions of
the franchisor, in exchange for compensation or royalty. 1276 The
relationship is a continuing one, as the franchisee operates in accordance
with standards and practices established and monitored by the franchisor
and with continuing assistance and support.1277
Franchising, thus, relates to a system, which the franchisor allows or
licences the franchise to exploit. This may be referred to as the franchised
system, or simply ‘the system’.1278 The franchised system is a package
comprising intellectual property rights relating to one or more trade marks,
trade names, industrial designs, inventions and works protected by
copyright, together with relevant expertise and trade secrets, to be
exploited for the sale of goods or provisions of services to end users.1279
In the field of trademarks, examples of franchising are found in industries
such as fast-food restaurants (e.g. Nandos) hotels or cosmetic retail shops.
The features found in a franchise relationship include:
(a) a licence to use the system including the trade mark;
(b) an ongoing interactive relationship; and
(c) the franchiser’s right to prescribe the manner of operating the
business.
In return for an agreed payment, the franchisee is allowed to use the
franchised system that is being given a licence to use the franchisor’s
system to carry out his business. Where the franchised system is to be
exploited at a particular location, such as at a franchised restaurant or
shop that location is usually referred to as the ‘franchised unit’.1280
1275
Supra note 16, at pp. 93 - 94.
1276
Ibid.
1277
Ibid., p. 98.
1278
Supra note 928, at p. 92.
1279
Ibid., p. 92.
1280
Ibid.
 TRADEMARK REGISTRATION 373

Besides, the relationship between the franchisor and franchisee is an

ongoing, involving multiple sales of the franchised services, over a period
of time, with the franchisor giving continuous assistance to the franchisee
in establishing, maintaining and promoting the franchised unit. This
includes updating the relevant information as the franchiser develops
new or better techniques for operating a franchised unit.1281 The franchisee
for his part has a continuing obligation to pay fees to the franchisor for
the use of the franchised system or to compensate the franchisor for
providing ongoing management services.1282
In addition, the franchisee abides by the directives given by the
franchisor which sets out the manner of operating the system. Such
directives may include quality control, protection of the system, territorial
restrictions, operational details and a host of other regulations that govern
the conduct of the franchisee in relation to the franchise.1283
It is worth noting that licensing of a trademark is usually a main
condition of the franchising agreement. In franchising agreements, the
degree of control of the trademark owner over the franchise is generally
greater than in the case of standard trade mark licensing agreements.1284

1281
Supra note 16, at pp. 98 - 99.
1282
Ibid.
1283
Ibid., p. 99.
1284
Supra note 928, at p. 9.
374 INTELLECTUAL PROPERTY LAW
 375

Chapter Twenty-eight

INFRINGEMENT, DEFENCES AND REMEDIES

Infringement

A registered trademark grants to the proprietor the exclusive right to use

the trademark and to exclude others from using the trademark. Besides,
the trade mark entitles the proprietor to enforce his rights against third
parties who infringe his trademark rights.
If a third party attempts to exercise one of the exclusive rights provided
under the Trade Marks Act1285 without the consent of the trademark
proprietor this will constitute infringement of the trademark. The
trademark proprietor as the one entitled to exercise the exclusive right
has the right to bring an action against infringers. Where the trademark is
owned by more than one person each co-owner must consent to the use
of the trademark by a third party and each co-owner must be joined to an
action against the alleged infringers.1286
Under Section 9 of the Trade Marks Act, the following situations will
give rise to a claim for trade mark infringement:

(a) A person who uses a registered trademark on the same goods in

relation to which the trade mark is registered.

In Mothercare (UK) Limited v. Penguin Books Limited,1287 the plaintiff

owned the trademark ‘Mothercare’ in relation to various consumer goods
and clothing for babies, pregnant women and young children. The
defendant published a book entitled ‘Mother Care/Other Care’ which
addressed the serious issue of working mothers and child care. Dillon, L.
J. held that there had been no infringement of the trademark ‘Mothercare’
in relation to books as the title was merely descriptive of the contents of
the book and not being used in a trademark sense. The two words were
quite distinct from the trademark ‘Mothercare’.
Dillon, L.J. further stated that, even if the plaintiffs established that

the name of the book was erroneously understood as a

representation that they were in some way associated with
the book does not, by itself, cause them any damage at
all… What they claim to fear is that potential customers
1285
Sections 9 (1) and 10 (10), Trade Marks Act.
1286
Section 74, Trade Marks Act.
1287
[1988] RPC 113.
376 INTELLECTUAL PROPERTY LAW

of the sort of goods that Mothercare sells, who suppose

from the name that Mothercare and in particular will insist
on buying any goods they need from shops other than
Mothercare’s shops. In my judgment such hypothetical
damage is altogether too far-fetched; it is not a reasonably
foreseeable consequence, in Lord Diplock’s words, of the
supposed misrepresentation. Beyond that, however, any
potential customer who looks sufficiently far into the book
to find out what it is actually about, is bound to realise that
the words ‘Mother care’ in the title are used descriptively
to refer to the care of children by their mothers as opposed
to the care of children by others and do not refer to
Mothercare, or any association with Mothercare, at all;
thus, there will have been no misrepresentation.

However, in Newsgroup Limited v. Rocket Record Company Limited,1288

the use of the plaintiff’s trademark ‘PAGE THREE’, by the defendant as
the name of rock band and the title of a song was held to be infringement
even though the trademark was not applied to the same or similar goods:

(b) A person uses a similar or resembling mark in respect of the same

goods or services to those in relation to which that mark is registered
and there is a likelihood of confusion on the part of the public.
(c) A person uses similar or resembling mark in respect of the same
goods or services to those for which the trademark is registered and
there is a likelihood of confusion on the part of the public.

In Wagamama Limited v. City Centre Restaurants Plc,1289 the plaintiff

ran a successful Japanese restaurant under the trademark name
‘WAGAMAMA’, a Japanese word. In April 1995, the defendant opened
an Indian restaurant under the name, ‘RAJAMAMA’. When sued, the
defendant changed the name of the restaurant to ‘Raja Mama’s’ but the
plaintiff alleged that this still constituted an infringement of their
trademark. The defendant was held liable for trademark infringement.
In Bravado Merchandising Services Limited v. Mainstream Publishing
(Edinburgh) Limited,1290 the petitioners owned the registered trademark
‘wet wet wet’, in relation to the pop group of the same name. The
respondents were the publishers of an unauthorised biography of the
group entitled ‘Sweet Little Mystery – Wet Wet Wet – The Inside Story’.
The pursuers sought interdict to prevent the publication of the book and
1288
[1981] FSR 89.
1289
[1995] FSR 713.
1290
1995 SCLR.
 INFRINGEMENT, DEFENCES AND REMEDIES 377

alleged infringement of their registered trademark. The petitioners argued

that the use of the three words ‘wet wet wet’, without punctuation
constituted an infringing use of their trademark, while the respondents
argued that the use was not identical. Their principal argument that
although the typeface on the front of the book appeared in italics and
‘wet wet wet’ the use of the trademark was merely descriptive of the
contents of the book which was about ‘wet wet wet’. It was admitted that
the book fell within the category of goods identical to those for which
the mark was registered. Lord McCluskey held that in the circumstances
before him, the petitioners succeeded in showing that the respondents
had used a sign identical with the registered trademark in relation to
goods for which the trademark was registered. Hence, the respondents
were liable for infringement of the trademark.
However, in British Sugar Plc v. James Robertson and Sons,1291 Jacob,
J. held that the spread was not and would not and should not be regarded
as similar to the dessert and, therefore, there was no infringement to the
trademark, ‘TREAT’.

(d) Infringement by breach of certain restrictions.1292

Where, by a contract in writing made with the proprietor or a registered

user of a trademark, a purchaser or owner of goods enters into an
obligation to the effect that he will not do, in relation to the goods, any
person who being the owner for the time being of the goods and having
notice of the obligation, does that act or authorises it to be done in relation
to the goods in the course of trade or with a view to any dealing in the
course of trade will be deemed to infringe the right to the use of the
trademark given by the registration, unless that person became the owner
of the goods by purchase for money or money’s worth in good faith
before or by virtue of a title derived through another who so became the
owner.1293
The acts which will constitute breach of restrictions are:-
(i) the application of the trademark upon the goods after they have
suffered alteration in any manner specified in the contract as
respects their state or condition, get-up or packaging;1294
(ii) in a case in which the trademark is upon the goods, the alteration,
part removal or part obliteration;1295
(iii) in a case in which the trademark is upon the goods and there is
also other matter, being matter indicating a connection in the
1291
[1996] RPC 281.
1292
Section 11, Trade Marks Act.
1293
Section 11 (1), Trade Marks Act.
1294
Section 11(2)(a), Trade Marks Act.
1295
Section 11(2)(b), Trade Marks Act.
378 INTELLECTUAL PROPERTY LAW

course of trade between the proprietor or registered user and the

goods, the removal or obliteration, whether wholly or partly, of
the trademark unless that other matter is wholly removed or
obliterated;1296
(iv) in a case in which the trade mark is upon the goods, the application
of any other trademark to the goods;1297
(v) in the case in which the trademark is upon the goods, the addition
to the goods of any other matter in writing that is likely to injure
the reputation of the trademark;1298

Defences

The Trade Marks Act provides a number of defences and exceptions to

trademark infringement.

(a) Unregistered Trademarks

The Trade Marks Act provides that the proprietor of a trademark is not
entitled to institute any proceedings to prevent or recover damages for
the infringement of an unregistered trademark.1299 However, this does
not affect the rights of action against any person for passing off goods as
the goods of another person or the remedies in respect of the same.1300

(b) Use of Names and Addresses

The use of a person’s name or name of his place of business will not be
infringement of an existing trade mark if such use is bona fide and
consistent with honest practices in the course of trade or industrial or
commercial matters. In Re Elvis Presley Trademarks1301, a businessman
and Elvis Presley fan named Sid Shaw challenged the various trademarks
which had been registered by Elvis Presley Enterprises (EPE) in respect
of the singer’s name. the trademarks challenged were ‘ALVIS’, ‘ELVIS
PRESLEY’ and ‘ELVIS A PRESLEY’ (in signature form) for toilet
preparations and other similar products. EPE had merchandised various
products bearing Elvis’ name during his lifetime and after his death. Sid
Shaw traded extensively in a wide range on Elvis Presley memorabilia
under his own registered trade mark ‘ELVIS YOURS’ the validity of
which was not challenged.
1296
Section 11 (2)(c), Trade Marks Act.
1297
Section 11 (2)(d), Trade Marks Act.
1298
Section 11 (2)(e), Trade Marks Act.
1299
Section 7, Trade Marks Act.
1300
Ibid.
1301
[1997] RPC 543.
 INFRINGEMENT, DEFENCES AND REMEDIES 379

The two questions considered by the court were:

(a) Could anyone claim exclusive right to use the names, ‘ELVIS’,
‘ELVIS PRESLEY’ and the ‘ELVIS A PRESLEY’, signature?
(b) If the answer to (a) was in the affirmative, who could claim such
exclusive right?
Laddie, J. held that:

1. Neither the singer, Elvis Presley, nor anyone else

exclusively owned his name. There is no copyright
protection afforded to either a name or a likeness of an
individual apart from any copyright which might exist in
a particular reproduction such as a photograph or a
drawing.
2. At the time of application for registration, the name Elvis
Presley was so well known that his names, including his
first name, ‘ELVIS’ were no longer distinctive. Laddie,
J. drew a comparison with the application for the TARZAN
Trademark1302 and stated that like Tarzan, the name Elvis
had entered the common vocabulary. As a result of this
proven lack of distinctiveness, the names did not function
as trademarks in the class of goods for which they were
being applied and did not qualify for registration. For
similar reasons, the signature ‘ELVIS A PRESLEY’, did
not qualify for registration and in addition EPE did not
produce any evidence that this signature had been used
on products in the UK or that members of the public had
learned to treat Elvis memorabilia as coming from a
particular source. The public was not likely to be deceived
if the signature was not registered, as they were indifferent
to the source of the memorabilia.
3. ELVIS and ELVIS PRESLEY, were peculiarly suitable
for use on a wide range of products sold as Elvis Presley
memorabilia. The products were bought by many because
they carried the name and likeness of the singer and were
associated with him not because they came from a
particular source. There was no reason to believe that
current merchandising practice produced a guarantee of
origin or quality to the public.

Laddie, J. further stated that even if Elvis was still alive he would not be
entitled to stop a fan from naming his son, his dog or goldfish, his car or
his house ‘Elvis’ or Elvis Presley’, simply because this was his birth
1302
[1970] RPC 450.
380 INTELLECTUAL
DEALINGS IN TRADE
PROPERTY
MARKS
LAW

name. To stop the use of the whole or part of his name by another he
would need to show that as a result of such use, the other person was
infringing a legal right. In the light of the fact that Elvis Presley did not
own his name and could not, if he was alive, prevent all and any uses of
it by third parties, EPE could not claim any greater rights. The applications
in respect of all three trademarks were therefore, dismissed.

(c) Honest Concurrent Use

It will not be infringement to use the same mark as the pursuer if the
defender’s mark is also registered. The Trade Marks Act provides that in
the case of honest concurrent use, the Registrar or the High Court may
permit the registration of trademarks that are identical or nearly resemble
each other in respect of the same goods or description of goods by more
than one proprietor subject to such conditions and limitations, if any, as
the Registrar or the High Court may think it right to impose.1303

(d) Proof of Established Reputation

If a defender can demonstrate that he had an established reputation in

respect of the use of the trademark in dispute prior to the proprietor’s
registration of the trademark which is the subject of a dispute, this will
provide a defence in terms of section 12 of the Trade Marks Act. The
said section prohibits the proprietor or a registered user of a registered
trademark to interfere with or restrain the use by any person of a trademark
identical with or nearly resembling it, in relation to goods, to which that
person or a predecessor in title of his has continuously used that trademark
from a date anterior:
(a) to the use of the first-mentioned trademark in relation to those
goods by the proprietor or a predecessor in title of his; or
(b) to the registration of the first-mentioned trademark in respect of
those goods in the name of the proprietor or a predecessor in
title of his;
whichever is earlier, or to object (on such use being proved) to that person
being put on the register for that identical or nearly resembling trademark
in respect of those goods.

(e) Exhaustion of Trade Mark Rights

Where the goods have been put into circulation validly or introduced on
the market by the trademark proprietor or with his consent, the use of the
trademark in relation to those goods cannot be prevented by the proprietor
by means of a trademark infringement claim except where the goods
have been subsequently tempered with in a way that impairs their quality.
1303
Section 17 (2), Trade Marks Act.
 INFRINGEMENT, DEFENCES AND REMEDIES 381

(f) The Right to use of a trademark given by registration will not be

deemed to be infringed by the use of such mark by any person

(i)in relation to goods connected in the course of trade with the

proprietor or a registered user of the trademark if, as to those
goods or a bulk of which they form a part, the proprietor or
the registered user conforming to the permitted use has applied
the trademark and has not subsequently removed or obliterated
it or has at any time expressly or impliedly consented to the
use of the trademark;1004 or
(ii) in relation to goods adapted to form part of, or to be accessory
to, other goods in relation to which the trademark has been
used without infringement of the right given or might for the
time being so used, if the use of the mark is reasonably
necessary in order to facilitate that the goods are so adapted
and neither the purpose nor the effect of the use of the mark is
to indicate otherwise than in accordance with the fact a
connection in the course of trade between any person and the
goods.1305
Besides, the use of a registered trademark, being one of two or more
registered trademarks that are identical or nearly resemble each other, in
exercise of the right to the use of that trademark given by registration
should not be deemed to be an infringement of the right so given to the
use of any other of those trademarks.1306

Remedies

The Trade Marks Act provides the following remedies for trademark
infringements.

(i) Damages

Damages are payable even if infringement is innocent. However, no

damages should be recovered for the infringement of unregistered
trademarks.1307 Furthermore, in case of applications for trademark under
the Paris Convention, the proprietor of a trademark is not entitled to
recover damages for infringement that happens prior to the actual date
on which his trademark is registered in Zambia:1308

1304
Section 9 (3)(a), Trade Marks Act.
1305
Section 9 (3)(b), Trade Marks Act.
1306
Section 9 (4), Trade Marks Act.
1307
Supra note 1299.
1308
Section 73 (1)(ii), Trade Marks Act.
382 INTELLECTUAL PROPERTY LAW

(ii) Accounts of profits

(iii) Injunction
(iv) Interdict
(v) Delivery up
(vi) Other remedies or other relief

It is worth noting that in any action for infringement of the right to the
use of a trademark given by registration in part B of the register, no
injunction, interdict or other relief should be granted to the plaintiff if
the defendant establishes to the satisfaction of the High Court that the
use of which the plaintiff complains is not likely to deceive or cause
confusion or to be taken as indicating a connection in the course of trade
between the goods and some person having the right either as proprietor
or as registered user to use the trade mark.1309

Offences

The Trade Marks Act provides a number of offences relating to registration

of trademarks as well as unauthorised use of a trademark. Trade Marks
Act makes it an offence for any person to falsify the entries in the register
knowing the entries to be false.1310
Besides, any person who makes a reproduction:
(i) with respect to a mark not being a registered trademark to the
effect that it is a registered trademark;1311
(ii) with respect of a part of a registered trademark not being a part
separately registered as a trademark to the effect that it is so
registered;1312
(iii) to the effect that a registered trademark in respect of any goods
in respect of which it is not registered;1313 or
(iv) to the effect that the registration of a trademark gives an exclusive
right to the use of the trademark in any circumstances in which
having regard to limitations entered on the register, the registration
does not give that right;
shall be guilty of an offence and liable to a fine of one thousand five
hundred penalty units or, in default of payment, to imprisonment not
exceeding six months, or both.1314
The Trade Marks Act further makes it an offence for deceiving or
influencing the Registrar or an officer.1315 Any person who is guilty of an
offence under the Act is liable to a fine not exceeding fifteen thousand
1309
Section 10 (2), Trade Marks Act.
1310
Section 68, Trade Marks Act.
1311
Section 69 (1)(a), Trade Marks Act.
1312
Section 69 (1)(b), Trade Marks Act.
1313
Section 69 (1)(c), Trade Marks Act.
1314
Section 69 (1)(d), Trade Marks Act.
1315
Section 70, Trade Marks Act.
 INFRINGEMENT, DEFENCES AND REMEDIES 383

penalty units or to imprisonment for a period not exceeding three years,

or to both.1316
In addition to the offences provided under the Trade Marks Act, section
377 of the Penal Code1317 provides a number of offences relating to
counterfeiting of trademarks. Thus, any person, is guilty of misdemeanour,
who does any of the following things with intent to defraud or enable
another to defraud any, that is to say:
(a) forges or counterfeits any trademark;
(b) applies any trade mark or any forged or counterfeited trademark
to any chattel or article not being the merchandise of any person
whose trade mark is so forged or counterfeited;
(c) applies any trademark or forged or counterfeited trademark to
any chattel or article not being the particular or peculiar
description of merchandise denoted or intended to be denoted
by such trademark or by such forged or counterfeited trademark;
(d) applies any trademark or any forged or counterfeited trademark
to any thing intended for any purpose of trade mark or
manufacture, or in, on, or with which the chattel or article is
intended to be sold, or is sold or offered or exposed for sale;
(e) encloses or places any chattel or article in, upon, under, or with
anything to which any trade mark has been falsely applied, or
to which any forged or counterfeit trade mark has been applied;
(f) applies or attaches any chattel or article to any case, cover, reel,
ticket, label, or other thing to which any trade mark has been
falsely applied, or to which any false or counterfeit trade mark
has been applied;
(g) encloses, places, or attaches any chattel or article in, upon, under,
with, or to any thing having thereon any trade mark of any other
person

Trade Marks and Internet Domain Names

Internet domain names have become a very important tool in business or

commerce. In order to promote, advertise and market their products many
business organisations have now established or launched a plan to launch
websites. The use of trademarks, names in the Internet domain addresses
has become one of the most contentious intellectual property issues arising
from the internet. The practice of speculatively registering domain names
that are likely to be associated with well known companies, often with
the intention of selling them back at an inflated price, has become known
as ‘cyber squatting’.1318
1316
Section 72, Trade Marks Act.
1317
Cap 87 of the Laws of Zambia.
1318
www.slcc.strath.ac.uk.
384 INTELLECTUAL PROPERTY LAW

It should be noted that domain names consist of three sections or

‘levels’ namely top level, second level and third level. The top level, the
last two letters of the address serves to identify the country of origin of
the website. For example, .zm points to a Zambian site; .za to a South
African website. American web addresses end in .com instead of .us.
The Top Level domain .com has come to be associated with an
international business e.g. www.hotmail.com.
The second level of a domain name indicates the type of organisation
which is operating the web site accessed by the domain name. For
example, the web address for the University of Zambia is
‘www.unza.ac.zm’ .ac.zm indicates academic institutions, colleges and
universities. Other second level domain indicators include:
org.zm used by non-profit making organisations such as NGOs;
co.zm used by commercial enterprise;
net.zm shows the network belongs to a network provider; and
gov.zm used by Zambian Government Ministries.
The third level domain name incorporates the name of the enterprise
within the website, for example, www.daily-mail.co.zm.
Most business houses choose to use their trading name to make the
web address more memorable for web users and by doing so to increase
the number of visitors to their website.1319 It should be noted that Internet
domain names are issued on a first come, first served basis. This has
allowed certain companies and individuals to register a large number of
company names, some time for speculating purposes, and then sell the
names to the owners of the trademark in that name. This has come to be
known as ‘cyber squatting’.
The courts have had the opportunity to determine cases relating to
‘cyber squatting’. Thus, in Harrods Limited v. UK Network Services
Limited and Others,1320 the defendant company registered domain name
‘harrods.com’ with a service provider without seeking the plaintiff’s
consent. Harrods raised proceedings against them for trademark
infringement, passing off and other subsidiary causes of action. Harrods
sought an interlocutory injunction by default when the defendant company
failed to show up in court.
Lightman, J. ordered the defendants to take all steps to release or
facilitate the release of the domain name ‘harrods.com’.
Similarly, in British Telecommunications Plc and others v. One in a
Million and Others,1321 the following companies sought a summary
judgment to prevent other parties from using its trade name or trademark
as a domain name on the internet: British Telecommunications Plc and
1319
Ibid.
1320
[1997] 4 EIRP D-106.
1321
Times Law Reports, 2 December 1997; www.slcc.strath.ac.uk.
 INFRINGEMENT, DEFENCES AND REMEDIES 385

Telecom Securicor Cellular Radio Limited (Cellnet), Virgin Enterprises

Limited, J-Sainsbury Plc, Ladbroke Group PLC and Marks and Spencer.
The defendants were, One in a Million Limited, Global Media
Communications and Junic who were all dealers in Internet domain names.
The defendants registered well-known commercial names as domain
names and sold them to potential users at a premium. The domain names
registered were marksandspencer.co; marksandspencer.co.uk; j-
sainsbury.com; Sainsbury.com; Ladbrokes.com; virgin.org; bt.org;
cellnet.net.
The plaintiffs alleged passing off and trade mark infringement. It was
held that the mere registration of a deceptive company name or a deceptive
Internet domain was not passing off. The reasoning was that the creation
of an instrument of deception, without either using it for exception or
putting it into the hands of someone else to do so was not passing off. In
respect of trade mark infringement, it was held that the plaintiffs in all
five actions were entitled to final injunctions quia timet restraining the
use of sale of the domain names and compelling the assignment of the
registration of the domain names of the plaintiffs.
In Brookes v. Leonard Payne,1322 Mr Brookes was granted an interim
interdict to protect his internet domain name ‘menu.co.uk’. Mr Brookes
ran a subscription service for local restaurants whereby he would post
menus for public inspection on his website. Mr Brookes discovered that
another party, Mr Payne, had set up a competing site to provide a summer
menu service using the domain name ‘menu.co.uk’. Mr Brookes did not
have trademark protection for the name ‘menu.co.uk’ but the interdict
was granted as he had made out a sufficient case in passing off, establishing
that there was a likelihood that the general public would be deceived into
thinking that he was responsible for the defender’s site.
Looking at the above-discussed cases, it is submitted that the courts
are willing to provide protection to trademark proprietors by the
application of existing legal principles relating to trademark protection
and unregistered trade names to which goodwill has attached.

1322
Supra note 1318.
386 INTELLECTUAL PROPERTY LAW
 387

Chapter Twenty-nine

PASSING OFF

Introduction

Passing off is a common law tort which can be used to enforce unregistered
trademark rights. The law of passing off and trademark law have common
origin and therefore are, in many respects similar. Passing off occurs
where the reputation of party A, is misappropriated by party B, such that
party B misrepresents this reputation and damages the goodwill of party
A. The Trademarks Act provides that no person is entitled to institute any
proceedings to prevent or to recover damages for the infringement of an
unregistered trademark, but nothing should be deemed to affect rights of
action against any person for passing off goods as the goods of another
person or the remedies in respect of the same.1323
The law of passing off prevents one person from misrepresenting his
goods or services as being the goods and services of the plaintiff, and
also prevents one person from holding out his goods or services as having
some association or connection with the plaintiff when this is not true.1324
In the case of Star Industrial Company Limited v. Yap Kwee Kor,1325
Lord Diplock stated that, a passing off action is a remedy for the invasion
of a right of property not in the mark, name or get-up improperly used,
but in the business or goodwill likely to be injured by the misrepresentation
made by passing off one person’s goods as the goods of another. Similarly,
Lord Herschell stated that passing off is a remedy for the invasion of a
right of property, the property being in the business or goodwill likely to
be injured by the misrepresentation rather than in the mark, name or get-
up improperly used.1326
Passing off and the law of registered trademark deal with overlapping
factual situations, but deal with them in different ways. Passing off does
not confer monopoly rights to any names, marks, get-up or other indicia.
It does not recognise them as property in its own right. Instead, the law
of passing off is designed to prevent misrepresentation to the public where
there is some sort of association between the plaintiff and the defendant.
Where the defendant does something, so that the public is misled into
thinking the activity is associated with the plaintiff, and as a result, the

1323
Supra note 1299.
1324
www.en.wikipedia.org.
1325
[1975] FSR 256, PC.
1326
Reddaway v. Banham [1896] AC at 209; 13 RPC 218, HL.
388 INTELLECTUAL PROPERTY LAW

plaintiff suffers some damage, under the law of passing off it may be
possible for the plaintiff to initiate action against the defendant.1327
The types of misrepresentation include, inter alia:
(i) using the mark of the plaintiff’s product;
(ii) using the get-up of the plaintiff’s product;
(iii) using the plaintiff’s advertising theme; or
(iv) using the design or shape of the plaintiff’s product.1328
For misrepresentation to be actionable, it must be one calculated to cause
damage to the plaintiff’s goodwill. The plaintiff need not prove actual or
special damage, a real and tangible probability of damage is sufficient
for a claim of damages.1329

Basic Requirements for a Passing Off Action

The law of passing off will restrain someone from passing off his goods
as being the goods of another person. Thus, in Perry v. Truefitt,1330 Lord
Langdale MR stated that ‘a man is not to sell his own goods under the
pretence that they are the goods of another trade.’ In Spalding and Brothers
v. AW Gamage Limited,1331 Lord Parker considered the nature of passing
off, stating:

The more general opinion appears to be that the right, (that

is, the right to take action to prevent passing off) is a right
of property…property in the business or goodwill likely
to be injured by the misrepresentation.1332

In that case the plaintiffs sold footballs. In 1910 and 1911, they used the
mark ‘orb’, for a moulded ball calling it in some instances the ‘Improved
Orb’. In 1912, after discovering faults in some of these moulded balls,
they produced a sewn ball under the mark, ‘Improved Sewn Orb’ and
sold off old stock to waste rubber merchants. The defendant store,
however, bought up these faulty moulded balls and advertised them in a
manner imitating the announcement of the sewn balls in the plaintiff’s
1912 catalogue. The Court granted an injunction in favour of the plaintiff.
The basic requirements for a passing off action were laid down by the
House of Lords in the case of Erven Warnik Besloten Vennootschap v. J
Townend and Sons (Hull) Limited.1333 The claimants, representatives of
the Dutch manufacturers of Advocaat, made a liqueur called Advocaat
1327
Supra note 1324.
1328
Ibid.
1329
Ibid.
1330
(1842) 49 ER 749.
1331
(1915) 84 LJ Ch. 449.
1332
Ibid., at 450.
1333
[1979] AC 731.
 PASSING OFF 389

which came to be well known. It was a high quality liqueur made from
brandwijn, egg yolks and sugar, which acquired a substantial reputation
and sold it in large quantities. The defendant decided to enter this market
and made a drink called ‘Kneeling’s Old English Advocaat’ which was
made from Cyprus sherry and dried egg powder, an inferior but less
expensive drink compared to the claimants’. This captured a large part
of the claimants’ market in the United Kingdom, but it could not be
shown that consumers would mistake it for the claimants’ drink.
Nevertheless, it was held that the reputation associated with the claimants’
product should be protected from deceptive use of its name by competitors
even though several traders shared the goodwill. There was a
misrepresentation made by the defendant calculated to injure the
claimants’ business or goodwill and the injunction was granted in favour
of the claimants.
Lord Diplock laid down the essential elements of passing off, as being:
(a) a misrepresentation;
(b) made in the course of trade;
(c) to prospective customers of his or ultimate consumers of goods
or services supplied to him;
(d) which is calculated to injure the business or goodwill of another
trader (in the sense that this is a reasonably foreseeable
consequence); and
(e) which causes actual damage to a trader by whom the action is
brought or (in a quia timet action) will probably do so.
In Reckitt and Colman Limited v. Borden Incorporation,1334 Lord Oliver
reduced the above essential elements to three, namely the existence of
the claimant’s goodwill, a misrepresentation as the goods or services
offered by the defendant, and damage (or likely damage) to the claimant’s
goodwill as a result of the defendant’s misrepresentation.
In the case referred to above,1335 the plaintiff sold lemon juice in a
yellow plastic lemon-shaped container. ‘Jif’ was embossed on the side
and printed on a neck-label. There was strong evidence that the purchasing
public would think that they were buying a ‘jif lemon’, if confronted
with the defendants’ lemon juice in similar packing. Walton, J. and the
Court of Appeal found the defendants’ proposed get-up to amount to a
threat of passing off against which a quia timet injunction should be
granted. The House of Lords agreed.
Lord Oliver stated the three elements which a plaintiff must establish
in order to make a case of passing off, as follows:

1334
[1990] 1 RPC 341 (the Jif Lemon case).
1335
Ibid.
390 INTELLECTUAL PROPERTY LAW

First, he must establish a goodwill or reputation attached

to the goods or services which he supplies in the mind of
the purchasing public by association with the identifying
‘get-up’ (whether it consists simply of a brand name or a
trade description, or the individual features of labeling or
packaging) under which his particular goods or services
are offered to the public as distinctive specifically of the
plaintiff ’s goods or services. Secondly, he must
demonstrate a misrepresentation by the defendant to the
public (whether or not intentional) leading or likely to lead
to the public to believe that the goods and services offered
by him are the goods and services of the plaintiff… Thirdly,
he must demonstrate that he suffers, or in a quia timet
action, that is likely to suffer damage by reason of the
erroneous belief engendered by the defendant’s
misrepresentation that the source of the defendant’s goods
and services is the same as the source of those offered by
the plaintiff.1336

Goodwill

Goodwill is a key element in action for passing off. Therefore, where

goodwill is missing, it is very difficult to prove passing off. Lord
Macnaghten in the case of Scandecor Development AB v. Scandecor
Marketing AB,1337 defined goodwill as:

the benefit and advantage of the good name, reputation,

and connection of a business. It is the attractive force that
brings in customers. It is the one thing which distinguishes
an old established from a new business at its first start.
The goodwill of a business must emanate from a particular
centre or source. However widely or extended or diffused
its influence may be, goodwill is worth nothing unless it
has power of attraction sufficient to bring customers home
to the source from which it emanates. Goodwill is
composed of a variety of elements. It differs in its
composition in different trades and in the same trade. One
element may preponderate here and another element there.

1336
Ibid., at 499.
1337
[1999] FSR 26 at 41.
 PASSING OFF 391

Duration of Goodwill

Though a registered mark is protected the moment it is registered, in

passing off the owner of a mark, name or ‘get-up’ must prove that he has
built a reputation around his name or mark in order for the same to be
protected. It must be noted that there is no defined timeframe within
which the mark or name can be said to have acquired a goodwill worth
protecting. This depends on circumstances. Thus in Stannard v. Reay,1338
it was held that three weeks was adequate enough to build up a goodwill
in the name ‘Mr Chippy’ for a mobile fish and chip van operating on the
Isle of Wight. Buckley, J. stated that in the light of the fact that the evidence
showed the claimants had built a substantial trade very quickly, they could
therefore be said to have developed goodwill in the use of that name.
Similarly, in BBC v. Talbot Motor Co Ltd,1339 the BBC was developing
a traffic information system for cars under the name ‘Carfax’. Though
not yet on the market, it had exhibited and received considerable publicity.
The BBC sought to restrain the defendants from using ‘Carfax’ for a
vehicle spare parts service. The Court held that since goodwill was found
to exist for the ‘Carfax’ even though it was not yet on the market, BBC
was entitled to prevent the defendants from using the same name for
their spare car parts sales operation. However, in Compatibility Research
Ltd v. Computer Psyche Co. Ltd,1340 the court rejected the plaintiffs’ claim
that the establishment of male and female symbols for their computer
business one month ahead of the defendants, was sufficient enough to
confer upon the said symbols goodwill.

Geographical Extent of Goodwill

The question as to what geographical area should the goodwill extend

has not been a easy to determine and has been subject to a number of
judicial interpretation. In Maxim’s Ltd v. Dye,1341 the claimant, an English
company, owned a world-famous restaurant in Paris known as ‘Maxim’s’.
The defendant opened a restaurant in Norwich and also named it
‘Maxim’s’. It was held that the claimant had goodwill in England derived
from the business in France which might be considered as being
prospective. Similarly, in Panhard et Levassor SA v. Panhard Levassor
Motor Co Ltd,1342 the court held that the French car manufacturer had
goodwill in the UK despite that it had no established place of business in
the UK. The goodwill was based on the fact that the claimants sold cars
1338
[1967] RPC 589.
1339
[1981] FSR 228.
1340
[1967] RPC 201.
1341
[1977] 1 WLR 1155.
1342
(1901) 18 RPC 405.
392 INTELLECTUAL PROPERTY LAW

to customers in the UK either directly from Paris or through importers.

Also in Poiret v. Jules Ltd,1343 the court protected the plaintiff’s goodwill
to his goods though he had no actual place of business in England, but he
exhibited his goods in England and sold them to customers either directly
or through an agent. A similar decision was arrived at in the case of
Sheraton Corporation of America v. Sheraton Motels Ltd,1344 where the
plaintiff was granted an injunction on the basis that though it had no
hotels in the UK it took bookings for its American hotels from an office
in the UK.
Also in WHIRLPOOL Trade Mark,1345 the Supreme Court of India
held that a trade did not need to show actual sales in India to establish
goodwill there. The goodwill, it was held, could result from the advertising
in magazines which were circulated in India.
It can be argued that the above cited cases show that for the plaintiff
to claim that his name or mark has goodwill in a particular territory, he
must prove that either he has a business outlet established in the said
territory or that he has some business activities in the territory, such as
goods bearing his mark or name found in the territory or that he has been
advertising or conducting exhibitions of his goods in the territory or
customers have been able to buy the same goods in another nearby
territory.
However, in Alain Bernadin et Cie v. Pavilion Properties Ltd,1346 the
plaintiffs who carried on a restaurant business in Paris under the title,
‘The Crazy Horse Saloon’ had for many years publicised their
establishment by publicity material distributed to tourist organisations
and hotels in the UK The court refused to grant them an injunction to
restrain the defendants from carrying on a restaurant business in London
under the same name on the grounds that the plaintiffs did not have any
business in the UK nor did they take bookings there.
Pennycuick, J. observed:

…the user has to be in this country. That it seems to me is

what one would expect: that the trader cannot acquire
goodwill in this country without some sort of user in this
country. His use may take many forms and in certain cases
very slight activities have been held to suffice. On the other
hand, I do not think that the mere sending to this country
by a foreign trader of advertisements advertising his
statement abroad could fairly be treated as user in this
country. He may acquire a reputation in a wide sense, in
1343
(1920) 37 R.P.C. 117.
1344
[1964] RPC 2002.
1345
[1997] FSR 905.
1346
[1967] RPC 581.
 PASSING OFF 393

the sense of returning travelers speaking highly of that

establishment, but it seems to me that those matters,
although they may represent reputation in some wide sense,
fall far short of user in this country and are not sufficient
to establish reputation in the sense for the purpose of a
passing off action.1347

In arriving at the above decision Pennycuick, J. referred to the statement

of Lord Macnaghten in C.I.R. v. Muller & Co.’s Margarine Ltd,1348 which
stated that,

Goodwill has no independent existence. It cannot subsist

by itself. It must be attached to a business. Destroy the
business and the goodwill perishes with it, though elements
remain which may perhaps be gathered up and revived
again.

He also referred to the judgment of Jenkins, L.J. in Oertli, A.G. v Bowman

(London) Ltd,1349 in which he stated:

It is of course essential to the success of any claim in respect

of passing off based on the use of a given mark or get-up
that the plaintiff should be able to show that the disputed
mark or get-up has become by user in this country
distinctive of the plaintiff’s goods so that the use in relation
to any goods of the kind dealt in by the plaintiff of that
mark or get-up will be understood by the trade and public
in this country as meaning that the goods are the plaintiffs’
goods.

In Amway Corporation v. Eurway International Ltd,1350 where the only

activity relied on by the plaintiffs apart from preliminary steps for
commencing business were what were referred to as ‘minor trading
activities’. Reliance was also placed on advertisements appearing in
American journals circulating in England, such as the National Geographic
Magazine. Brightman, J. held that this activity was entirely inadequate to
support passing off action based on goodwill in this country.
Also in Anheuser-Busch v. Budejovicky Budvar,1351 the plaintiffs had
brewed and sold ‘Budweiser’ beer in the USA for more than a century,
1347
Ibid., at p. 584.
1348
[1901] AC 217.
1349
[1957] RPC 388.
1350
[1974] RPC 82.
1351
[1984] FSR 413, CA.
394 INTELLECTUAL PROPERTY LAW

taking their inspiration from the brewing techniques of the Czech town
Budweis. The defendants were successors to ‘Budweiser’ as a mark for
their beer when exported from Czechoslovakia with labels in English,
French and German. By compromise agreement in 1911 between the
plaintiffs and the defendants’ predecessors, and with them the other
brewing company of Budweis, the plaintiffs acquired exclusive rights in
the mark outside Europe. The plaintiffs had sold no significant quantity
of their beer to the general public in the UK before 1974 and until 1980,
sold only small quantities. However, before this, the plaintiffs’ beer had
been regularly supplied in the UK to US diplomatic and, military
personnel through the U.S. embassy and P.X. (military base) outlets. At
the end of 1973, the defendants began a successful export business in the
Czech beer to the UK There was considerable evidence that as a result,
the public had become confused about the source of ‘Budweiser’ beer in
the UK The plaintiffs sued the defendants for passing off. The court
held that there was passing off and dismissed the appeal.
Oliver, L.J. stated as follows:

The plaintiffs in this instant case have proved, they submit,

the existence in the UK a reputation with a substantial
section of the public, and they have adduced evidence of
sales here to such members of the public as have been
admitted to bases and Embassy canteens and bars and as
have attended from time to time those open days and air
displays which have been organised at United States Air
Force bases.
I confess that for my part I am quite unable to treat
these sporadic and occasional sales as constituting in any
real sense the carrying on by the plaintiffs of a business in
this country. The fact is that no ordinary member of the
public, whether he be indigenous or a foreign tourist, could
consider himself a customer in this country for the
plaintiff’s beer. That, however, is not the end of the matter.
If it is right, as I believe that it is, to regard the occasional
and limited availability of the plaintiffs’ beer to members
of the British public in the UK as no more than a fortuitous
overspill from the main area of supply, there remains the
fact that the plaintiffs were in fact supplying to the P.X.
for consumption in this country a rough average of
5,000,000 cans of beer every year, a supply which had
begun well before the defendants’ appearance and was
continuing in 1973, when the defendants first started
marketing in Great Britain under the name ‘Budweiser’.
 PASSING OFF 395

The critical question upon which this appeal hinges seems

to me to be whether this supply can properly be considered
as the carrying of a business in England creating a goodwill
in this country which requires to be protected from the
defendants’ activities. If it does not, then it cannot, as it
seems to me, be elevated by such occasional outside supply
into something which it was not.
Mr Kentridge [for the plaintiff] has, throughout his clear
and helpful address to the court, repeatedly referred to
goodwill in the words of Lord Macnaghten in the Muller’s
Margarine case [1901] AC 217, as ‘the attractive force
which brings in custom’. But one asks oneself ‘what custom
in this country in 1973 was brought in by the knowledge
of members of the indigenous British public of the
plaintiffs’ Budweiser beer?’ And the answer must be that
there was none, because however attractive they may have
found the idea of drinking the plaintiffs’ beer, they could
not get it. In so far, therefore, as anyone was misled by the
defendants’ use of the name ‘Budweiser’, the plaintiffs
could suffer no damage either by loss of sales, for there
were none at that time and none were contemplated, nor
by loss of reputation, because if there was any such loss
the reputation was quite unconnected with either an ability
or a willingness to supply.
It may perhaps be tested in this way. Suppose an
American product which is well known in America, but is
and remains totally unknown to the general public in this
country. It is, however, sold in the P.X. stores on American
bases here but nowhere else. It is credibly arguable that
this could create a business goodwill in this country which
would entitle the American manufacturer to a nationwide
injunction against selling under a similar name in a market
in which it does not sell and in which the name has never
previously been used or heard of? It is, of course, true that
some of the cases to which reference has been made above
indicate that a business may be established by relatively
modest acts. Nevertheless, all those cases have this feature
in common, that the sales relied on were sales on the open
market to the public generally. None was concerned with
what we have here, namely, sales on a closed and separate
market to a particular section of the public only, having
the qualification of belonging to or being employed by
the United States Services.1352
rd
1352
Cornish, W.R., Cases and materials on Intellectual Property (3 ed.). London: Sweet & Maxwell (1999),
pp. 415 - 419.
396 INTELLECTUAL PROPERTY LAW

Analysing the above cases it is submitted that it is not every business

activity that may qualify as carrying on of a business in order to protect
the goodwill in a particular territory.

Misrepresentation

Misrepresentation is the second crucial element in the action for passing

off. However, the misrepresentation must be calculated to make or lead
the public believe that the goods or services being offered by the defendant
are the goods or services of the claimant. In Reddaway v. Banham,1353
the appellant manufactured belting which, for the purpose of
distinguishing it from similar products he called ‘Camel-hair Belting’.
The yam used was chiefly of camel hair though few people realised this.
The respondent, a former employee of the appellant, began making similar
belting, which he first called ‘Arabian’ and then, in response to particular
orders, ‘Camel-hair’. Other manufacturers used almost identical yam to
make belts and sold them as ‘Yale’, ‘Buffalo’, etc.
The trial judge, after the jury’s verdict for the plaintiff, granted an
injunction restraining the defendant from continuing to use the word
‘Camel-hair’ in such a manner as to lead purchasers into the belief that
they were purchasing belting of the plaintiff’s manufacture and yam,
thereby passing off their belting as and for the belting of the plaintiff’s
manufacture. The Court of Appeal reversed this, but it was restored by
the House of Lords.
Lord Herschell stated as follows:

The principle which is applicable to this class of cases

was, in my judgment, well laid down by Lord Kingsdown
in The Leather Cloth Company v. The American Cloth
Company (1865) 11 H.L. Cas. 538. Lord Kingsdown’s
words were as follows:

The fundamental rule is that one man has no right

to put off his goods for sale as the goods of a rival
trader, and he cannot therefore be allowed to use
names, marks, letters, or other indicia, by which
he may induce purchasers to believe that the goods
which he is selling are the manufacture of another
person.

1353
[1896] AC 199, HL.
 PASSING OFF 397

It is, in my opinion, this fundamental rule which governs

all the cases, whatever be the particular mode adopted by
any man for putting off his goods as those of a rival trader,
whether it is done by the use of a mark which has become
his trademark, or in any other way. The word “property’
has been sometimes applied to what has been termed a
trademark at common law. I doubt myself whether it is
accurate to speak of there being property in such a trade
mark, though, no doubt, some of the rights which are
incident to property may attach to it. Where the trademark
is a word or device never in use before, and meaningless,
except as indicating by whom the goods in connection with
which it is used were made, there could be no conceivable
legitimate use of it by another person. His only object in
employing it in connection with goods of his manufacture
must be to deceive. In circumstances such as those, the
mere proof that the trademark of one manufacturer had
been thus appropriated by another, would be enough to
bring the case within the rule laid down by Lord
Kingsdown, and to entitle the person aggrieved to an
injunction to restrain its use. In the case of a trademark
thus identified with a particular manufacturer, the rights
of the person whose trademark it was would not, it may
be, differ substantially from those which would exist if it
were, strictly speaking, his property. But there are other
cases which equally come within the rule that a man may
not pass off his goods as those of his rival, which are not
of this simple character; cases where the mere use of the
particular mark or device which had been employed by
another manufacturer would not of itself necessarily
indicate that the person who employed it was thereby
inducing purchasers to believe that the goods he was selling
were the goods of another manufacturer.
The name of a person, or words forming part of the
common stock of language, may become so far associated
with the goods of a particular maker that it is capable of
proof that the use of them by themselves, without
explanation or qualification by another manufacturer,
would deceive a purchaser into the belief that he was getting
the goods of A, when he was really getting the goods of B.
In a case of this description, the mere proof by the plaintiff
that the defendant was using a name, word, or device which
he had adopted to distinguish his goods would not entitle
398 INTELLECTUAL PROPERTY LAW

him to any relief. He could only obtain it by proving further,

that the defendant was using it under such circumstances
or in such manner as to put off his goods as the goods of
the plaintiff. If he could succeed in proving this, I think he
would, on well-established principles, be entitled to an
injunction.
In my opinion, the doctrine on which the judgment of
the Court of Appeal was based, that where a manufacturer
has used as his trademark a descriptive word, he is never
entitled to relief against a person who so uses it as to induce
in purchasers the belief that they are getting the goods of
the manufacturer who has therefore employed it as his
trademark, is not supported by authority and cannot be
defended on principle. I am to see why a man should be
allowed in this way more than in any other to deceive
purchasers into the belief that they are getting what they
are not, and thus filch the business of a rival.1354

Spalding v. Gamage, 1355 Lord Parker held that there had been
misrepresentation about the quality of the ‘Orb’ balls sold by the defendant
and was likely to occasion actual damage to the plaintiff.
Lord Parker of Waddington stated:

My Lords, the action in which the appeal arises is what is

known as passing-off action … I think it well to say a few
words as to the principle on which such actions are founded.
The principle is stated by Lord Justice Turner in Burgess
v. Burgess (1843-60) 14 Ch. D. at 78, and by Lord Halsbury
in Reddaway v. Banham [1906] AC at 2004, in the
proposition that nobody has any right to represent his goods
as the goods of somebody else. It is also sometimes stated
in the proposition that nobody has the right to pass off his
goods as the goods of somebody else. I prefer the former
statement, for whatever doubts may be suggested in the
earlier authorities, it has long been settled that the actual
passing-off of a defendant’s goods for the plaintiff’s need
not be proved as a condition precedent to relief in equity
either by way of injunction or of an inquiry as to the profits
or damages. Nor need the representation be fraudulently
made. It is enough that it has been made, whether
fraudulently or otherwise, and that damage may probably
ensue. The representation is in fact treated as the invasion
1354
Supra note 1352, at pp. 396 - 397.
1355
(1915) 32 RPC 273, HL.
 PASSING OFF 399

of a right giving rise at any rate to nominal damages, the

inquiry being granted at the plaintiff’s risk if he might
probably have suffered more than nominal damages.
… My lords the proposition that no one has a right to
represent his goods as the goods of somebody else must, I
think, as has been assumed in this case, involve as a
corollary the further proposition, that on one, who has in
his hands the goods of another of a particular class or
quality, has a right to represent these goods to be the goods
of that other of a different quality or belonging to a different
class. Possibly, therefore, the principle ought to be re-stated
as follows: A cannot, without infringing the rights of B,
represent goods which are not B’s goods or B’s goods of a
particular class or quality to be B’s goods or B’s goods of
that particular class or quality. The wrong for which relief
is sought in passing off action consists in every case of a
representation of this nature.
My Lords, the basis of a passing-off action being a
false representation by the defendant, it must be proved
that in each case as a fact that the false representation was
made. It may, of course, have been made in express words,
but cases of express misrepresentation of this sort are rare.
The more common case is, where the representation is
implied in the use or imitation of a mark, trade name, or
get-up with which the goods of another are associated in
the minds of the public, or of a particular class of the public.
In such cases the point to be decided is whether, having
regard to all the circumstances of the case, the use by the
defendant, in connection with the goods of the mark, name,
or get-up in question, impliedly represents such goods to
be the goods of the plaintiff, or the goods of the plaintiff
of a particular class or quality, or, as it is sometime put,
whether the defendant’s use of such mark, name, or get-
up is calculated to deceive. It would, however be impossible
to enumerate or classify all the possible ways in which a
man may make the false representation relied on.1356

Similarly, Lord Oliver, Reckitt & Colman v. Borden,1357 in holding that

the defendants’ proposed get-up amounted to threat of passing off and
hence upheld the decision of the Court of Appeal to grant the plaintiff an
injunction stated that
1356
Supra note 1352, at pp. 397-398
1357
[1990] 1 W.L.R. 491, HL
400 INTELLECTUAL PROPERTY LAW

… I apprehend that the law is perfectly clear, that anyone,

who has adopted a particular mode of designating this
particular manufacture, has a right to say, not that other
person shall not sell exactly the same article, better or
worse, or an article looking exactly like it, but that they
shall not sell it in such a way as to steal (so to call it) his
trademark, and make purchasers believe that it is the
manufacture to which that trade mark was originally
supplied.1358

Analysing the cases discussed above it can safely be submitted that

misrepresentation need not only be there but must be intended to deceive
or confuse the public. Thus, where the plaintiff cannot prove deceit or
confusion on the public that the defendant is passing off his goods as that
of the plaintiff the courts are reluctant to remedy the invasion of the
rights of the plaintiff. Therefore in Cadbury Schweppes v. Pub Squash,1359
the plaintiffs launched a lemon squash under the name ‘Solo’, in yellow
cans with a medallion that bore a general resemblance to many beer cane-
cans. Intensive and successful television advertising suggested (i) that it
resembled squash sold in pubs in former times and (ii) that it was
thoroughly masculine to have as a drink. Some months later the defendant
brought out a similar drink, also in yellow cans, under the name ‘Pub
Squash’ and it concluded a similar, though smaller publicity campaign.
Soon afterwards, the plaintiffs’ market slumped by 16 per cent. This
conduct was alleged to constitute passing off. It was held that there had
been no significant confusion or deception at the point of sale which was
immediately corrected, and that it was established that the public
associated yellow cans only with ‘Solo’, and the themes in the television
advertising had not become distinctive of the plaintiff’s product.

Damage

Damage is the last element in the action for passing off. The plaintiff, to
be entitled to damages must demonstrate that he has suffered, or in a
quia timet action, that is likely to suffer damage by reason of the erroneous
belief engendered by the defendant’s misrepresentation that the source
of the defendant’s goods and services is the same as the source of those
offered by the plaintiff. In Taittinger, S. v. Allbev Ltd,1360 the defendants
produced and sold a non-alcoholic carbonated drink called ‘Elderflower
Champagne’. The plaintiffs, acting as representatives of all wine producers
1358
See also Farina v Silverlock (1856) 6 De G.M. & G. 214, 218, per Lord Cranworth, L.C.
1359
[1981] RPC 429.
1360
[1993] FSR 641, CA.
 PASSING OFF 401

of the Champagne region of France with Sales in England, issued

proceedings for passing off. The Court of Appeal held that there was
sufficient deception of the members of the public to satisfy the requirement
of damage.
Also in Gillette UK Limited v. Edenwest Limited,1361 the plaintiff
manufactured and sold disposable razor blade called ‘Gillette Gil’. The
defendant purchased and resold counterfeit Gillette Gill blades without
realising that they were not genuine products. The plaintiffs sued, inter
alia, for passing off, seeking an injunction, which was granted, and
damages. The defendant resisted the damages claim on the ground that it
did not know that the blades it sold were counterfeit.
Blackburne, J. in holding that the defendant was liable to damages
for passing-off, referred to the speech of Lord Parker of Waddington, in
the case of A.G. Spalding v. A. W. Gamage Ltd (1915) 32 R.P.C. 273
who said:

… it has long been settled that the actual passing-off of a

defendant’s goods for the plaintiff’s need not be proved
as a condition precedent to relief in equity either by way
of injunction or of an inquiry as to the profits or damages.
Nor need the representation be fraudulently made. It is
enough that it has been made, whether fraudulently or
otherwise, and that damage may probably ensue, though
the complete innocence of the party making it may be a
reason for limiting the account of profits to the period
subsequent to the date at which he becomes aware of the
true facts. The representation is in fact treated as the
invasion of a right giving rise at any rate to nominal
damages, the inquiry being granted at the plaintiff’s risk if
he might probably have suffered more than nominal
damages.
Blackburne, J. also referred Lord Parmoor, who in the same case,
who said (at p. 289):

No person has a right to offer for sale, or sell, goods of

another trader of an inferior or different class, under
conditions calculated to represent such goods of the same
trader of a representation, he commits an actionable wrong,
quite irrespective of motive or fraud. A plaintiff who
establishes a case of this character is entitled to an
injunction and, if necessary, to an inquiry into damages.
1361
[1994] RPC 279.
402 INTELLECTUAL PROPERTY LAW

Blackburne, J. thus, concluded, in my view those dicta point the way and
justify me in the view which I would have taken in the absence of authority,
which is that dishonesty on the defendant’s part is not necessary before a
plaintiff can recover damages (other than merely nominal damages) for
passing off.
In Stringfellow v. McCain Foods,1362 the court rejected the plaintiff’s
claim of damages on the grounds that the plaintiff has failed to establish
a likely loss of bookings at the club. In that case the claimant owned a
top London nightclub while the defendant named their new brand of
long thin oven chip ‘Stringfellows’ and advertised it on television with a
disco scene set in a domestic kitchen. The plaintiff sought relief against
passing off, alleging that damage to his reputation would flow from a
supposed association between the chips and the club. The plaintiffs had
a public opinion survey conducted upon understanding of the word
‘Stringfellows’, which was subject of a degree of criticism, but not rejected
out of hand as evidence by the Court of Appeal. Neither this evidence
nor that of other witnesses served to convince the Court of Appeal that
there had been any misrepresentation of the relevant kind up to the
appearance of the television advaertisement.

Remedies

As passing off is an invasion of property rights, the remedies the plaintiff

is entitled to are injunctions and/or damages or as an alternative, an account
of profits. Furthermore, an order may be granted for the delivery up or
destruction of articles to which the name or mark has been applied or, if
possible, an order for the obliteration of such names or marks.
Damages will usually be based upon the actual loss attributable to the
passing off, that is, resulting from the loss of sales experienced by the
claimant. In some cases , however, damages may be calculated on a royalty
basis, that is, based on the amount that the defendant would have paid,
had he sought the licence to use the name or mark from the plaintiff.
Besides, the nominal damages will be available against a trader who
commits passing off innocently. This was laid down by Lord Parker of
Waddington in Spalding v. Gamage Ltd,1363 where he stated:

Nor need the representation be fraudulently made. It is

enough that it has been made, whether fraudulently or
otherwise, and that damage may probably ensue, though
the complete innocence of the party making it, may be a
reason for limiting the account of profits to the period
1362
[1984] RPC 501, CA.
1363
(1915) 84 LJ Ch. 449.
 PASSING OFF 403

subsequent to the date at which he becomes aware of the

true facts. The representation is in fact treated as the
invasion of a right giving rise at any rate to nominal
damages, the inquiry being granted at the plaintiff’s risk,
if he might probably have suffered more than nominal
damages.

Malicious Falsehood

Malicious falsehood is a tort that is related to passing off. Malicious

falsehood could arise where someone publishes information that is capable
of serious damage or calculated to disparage a trader’s position or
reputation.1364 An example would be where one trader unjustifiably states
that the goods of another trader are of poor quality. In White v. Mellin,1365
Lord Watson stated:

In order to constitute disparagement which is, in the sense

of law, injurious, it must be shewn that that the defendant’s
representations were made of and concerning the plaintiff’s
goods; that they were in disparagement of his goods and
untrue.

It should be noted that it is not every statement that one trader makes
against another trader as regards quality of the goods, that will amount to
malicious falsehood. In Hubbuck & Sons Ltd v. Wilkinson, Heywood &
Clerk Ltd,1367 a published statement that the defendant Zinc paint had a
slight advantage over the claimant’s paint was held not to be malicious
falsehood, even if the statement had been made maliciously.
In addition, the statement which the plaintiff complains of must refer
to him or his goods or services. Thus, in Schulke & Mayr UK Ltd v.
Alkapharm UK Ltd,1367 the claimant had, at one time, been the defendant’s
distributor for a disinfectant for dentists’ instruments manufactured by
the defendant. Subsequently, the claimant began to manufacture its own
equivalent product and, around the same time, the defendant issued an
advertisement which made certain claims in relation to the defendant’s
disinfectant. The advertisement claimed that the defendant’s disinfectant
was ‘the most powerful; the most stable’ and also stated that these
attributes had been independently confirmed. There was no reference
whatsoever to the claimant’s product. The Court held that the statement

1364
Section 3, The Defamation Act, Cap 68.
1365
[1895] AC 154 at p. 166.
1366
[1899] 1 QB 86.
1367
[1999] FSR 161.
404 INTELLECTUAL PROPERTY LAW

did not amount to malicious falsehood as it never mentioned nor referred

to the plaintiff or his goods.
It must be submitted that for an action for malicious falsehood to
succeed two ingredients, namely falsity and malice, must be present. In
White v. Mellin,1368 the plaintiff action failed where the defendant sold
the plaintiff’s infants’ foods after fixing labels to the wrappers stating
that the defendant’s food for infants was far more nutritious and healthful
than any other. There was no proof that the statement was untrue or that
it had caused damage to the claimant.
It is worth noting that in an action for malicious falsehood, there in no
requirement for one to prove special damage. Therefore, where the goods
have been slandered or in case of other malicious falsehood, it is not
necessary to allege or prove special damage:
(a) if the words upon which the action is founded are calculated to
cause pecuniary damage to the plaintiff and are published in
writing or other permanent form;
(b) if the said words are calculated to cause pecuniary damage to the
plaintiff in respect of any office, profession, calling, trade or
business held or carried on by him at the time of the publication.1369

1368
Supra note 1365, at p. 166.
1369
Section 5, The Defamation Act, Cap 68.
 405

PART VI: LAW BREACH OF CONFIDENCE

406 INTELLECTUAL PROPERTY LAW
 407

Chapter Thirty

CONFIDENTIAL INFORMATION

Introduction

The law of breach of confidence is concerned with the protection of

secrets or commercially valuable information that may have been
communicated or obtained in confidence. The action for breach of
confidence protects confidential information by preventing persons to
whom the said information has been divulged in confidence from using
that information to gain unfair benefit for themselves, or further disclosure
of such information.
There are various types of information that can be considered to be
confidential in nature because the subject is one which in normal
circumstances would generally not be disclosed to the public. However,
in practice, confidential information generally tends to fall into three
categories namely, trade secrets, government secrets and private personal
information.1370
In the context of intellectual property rights, the law of breach of
confidence is particularly relevant to protect inventions and designs before
they are formally registered and protected by intellectual property rights.
In the case of patents, for example, if the importance of the invention or
product is in the processes, rather than the end product, the processes or
method of production may be kept effectively secret by the law of
confidence. Similarly, if the owner of the invention decides not to patent
his invention for fear of his competitors using the same after expiration
of the patent protection, he may opt to protect the said invention under
the law of confidence. Notable examples are the formula for making
Coca-Cola and the source code for windows. The law of confidence
imposes a duty of confidentiality on any person who is connected with
the production process. The protection provided by the law of confidence
lasts till the process is discovered by another inventor separately.

Historical Development

The law of breach of confidence traces its roots from the middle of the
nineteenth century. The leading case to deal with the subject matter was
Prince Albert v. Strange.1371 Queen Victoria and her consort had executed
1370
Supra note 1318.
1371
(1849) 2 De G. & Sm. 652; (1849 1 Mac & G 25, LC.
408 INTELLECTUAL PROPERTY LAW

a private collection of etchings of which impressions had been printed

and carefully guarded. By his amended bill, the Prince asserted that
Strange, together with two other defendants, both called judge, and their
confederates, had in some manner obtained impressions, which had been
surreptitiously taken from the plates. The defendants were restrained by
injunction from exhibiting, publishing, parting with or disposing of the
etchings, and from printing a descriptive catalogue of the etchings. The
defendant, Strange, while protesting his loyalty as a subject, maintained
that as a matter of strict right, he was free to publish both etchings and
catalogue and would surrender the copies in his possession only if
indemnified as to costs. He then applied to have the injunction dissolved
so far as it related to the catalogue. The defendant appealed from Knight
Bruce V.C.’s refusal to grant this application.
Lord Cottenham, L.C. said:

…I am clearly of opinion that the exclusive right and

interest of the plaintiff in the composition or work in
question being established, there being no right or interest
whatever in the defendant, the plaintiff is entitled to the
injunction of this court to protect him against the invasion
of such right and interest by the defendant, which the
publication of any catalogue would undoubtedly be; but
this case by no means depends solely upon the question of
property, for a breach of trust, confidence, or contract,
would of itself entitle the plaintiff to an injunction. The
plaintiff’s affidavits state the private character of the work
or composition, and negative any licence or authority for
publication, the gifts of some of the etchings to private
friends certainly not implying any such licence or authority
and state distinctly the belief of the plaintiff, that the
catalogue and the descriptive and other remarks therein
contained, could not have been compiled or made, except
by means of the possession of the defendant, or of his
intended partner Judge, must have originated in a breach
of trust, confidence, or contract; and upon the evidence on
behalf of the plaintiff, and in the absence of any explanation
on the part of the defendant, I am bound to assume that the
possession of the etching by the defendant or Judge has its
foundation in breach of trust, confidence, or contract; and
upon this ground also I think the plaintiff’s title to the
injunction sought to be discharged, fully established.
 CONFIDENTIAL INFORMATION 409

The nature of an action for breach of confidence was further considered

in the case of Morison v. Moat.1372 In that case Morison senior and Moat
senior entered a partnership to exploit Morison senior’s ‘invention’
(unpatented), which was sold as ‘Morison’s Universal Medicine’. Morison
senior gave the recipe of the medicine to Moat senior under a bond not to
reveal it to any other person. Shortly before Moat senior’s death he
appointed his son, the defendant, to succeed him in partnership, as he
had power to do. Morison senior and his sons were led to believe that
Moat had not told the secret recipe to the defendant, but he had. The
partnership eventually terminated and Moat junior began to manufacture
in accordance with the recipe of his own account. The Morisons succeeded
in obtaining an injunction to restrain him, though they failed to have
enjoined from using the name, Morison’s Universal Medicine.
Turner, V.C stated as follows:

The defendant admits that the secret was communicated

to him by Thomas Moat. His allegation that he acquired
knowledge of it by acting as partner in the concern is
disapproved; and it is shewn that, if he did acquire such
knowledge, he did so surreptitiously. The question is
whether there was an equity against him; and I am of the
opinion that there was. It was clearly a breach of faith and
of contract on the part of Thomas Moat to communicate
the secret. The defendant derives under that breach of faith
and of contract, and I think he can gain no title to by it.

The case of Saltman Engineering Co Ltd v. Campbell Engineering Co

Ltd1373 laid the foundations of modern form of the law of breach of
confidence. Saltmans associated companies owned copyright in drawings
for a leather punch. On their behalf, a third person, Monarch arranged
for the defendant to manufacture punches for them. It was alleged that in
implied breach of confidence the defendant used the drawings to
manufacture and sell its own punches.
Lord Green, M.R. described the nature of the confidence as follows:

The main part of the claim is based on breach of

confidence, in respect of a right which may be infringed
without the necessity of there being any contractual
relationship. Thus, if two parties make a contract, under
which one of them obtains for the purpose of the contract
or in connection with it some confidential matter, then,
1372
(1851) 9 Hare 241, 68 ER 492.
1373
(1948) 65 RPC 203, CA.
410 INTELLECTUAL PROPERTY LAW

even though the contract is silent on the matter of

confidence, the law will imply an obligation to treat that
confidential matter in a confidential way, as one of the
implied terms of the contract, but the obligation to respect
confidence is not limited to cases where the parties are in
contractual relationship.
The information, to be confidential, must, I apprehend,
apart from contract, have the necessary quality of
confidence about it, namely, it must not be something
which is public property and public knowledge. On the
other hand, it is perfectly possible to have a confidential
document, be it a formula, a plan, sketch, or something of
that kind, which is the result of work done by the maker
on materials which may be available for the use of anybody;
but what makes it confidential is the fact that the maker of
the document has used his brain and this produced a result
which can only be produced by somebody who goes
through the same process.
What the defendants did in this case was to dispense in
certain respects with the necessity of going through the
process which had been gone through in compiling these
drawings, thereby to save themselves a great deal of labour
and calculation and careful draughtsmanship. No doubt,
if they had taken a finished article, namely, the leather
punch, which they might have bought in a shop, and given
it to an expert draughtsman, that draughtsman could have
produced the necessary drawings for the manufacture of
machine tools required for making that particular finished
article. In at any rate a very material respect they saved
themselves that trouble by obtaining the necessary
information either from the original drawings or from the
tools made in accordance with them. That, in my opinion,
was a breach of confidence. In the view that I take this
case is a simple one: there has been a breach of confidence,
the duty of confidence owed in the circumstances of this
case by the defendants to Saltmans. It is not necessary to
go into the question whether there was an implied
obligation of confidence as between the two contracting
parties, Monarch and the defendants. I need say nothing
about that, because quite obviously in the circumstances,
if Monarch obtained any relief based on that, they could
hold it only for the benefit of the Saltmans, who are the
owners of this confidential matter.
 CONFIDENTIAL INFORMATION 411

Elements of the Breach of Confidence

The elements of the action for breach of confidence were laid down by
Megarry, J. in the case of Coco v. AN Clark(Engineers) Ltd.1374 The
plaintiff, Marco Paolo Coco, developed the ‘Coco’ moped engine which
featured, inter alia, some engine parts. He entered into negotiations with
the defendants with a view to them ultimately manufacturing it. After
approximately four months of discussions, the defendant broke off
negotiations, alleging difficulties with the transmission design. The
defendant then wrote to the plaintiff offering him a royalty of 5 shillings
per engine on the first 50 000 engines made, but this was not accepted.
The defendants subsequently manufactured and sold their own ‘scamp’
moped. They admitted that the piston and carburetor were of the same
type as the plaintiff’s. The plaintiff sought an injunction against the
manufacture and sale of any machines in which the defendants had made
use, directly or indirectly, of any confidential information the property
of the plaintiff.
Megarry, J. identified three elements required to establish the action
for breach of confidence. He stated as follows:

In my judgment, three elements are normally required if,

apart from contract, a case of breach of contract is to
succeed. First, the information itself (in the words of Lord
Greene, M.R. in the Saltman case), must ‘have the
necessary quality of confidence about it.’ Secondly, that
information must have been imparted in circumstances
importing an obligation of confidence. Thirdly, there must
be an unauthorized use of that information to the detriment
of the party communicating it.

The plaintiff, was however, not granted the injunction. Though the
information was passed on an occasion of confidence, it was not clear
that the nature of the information was confidential nor could the plaintiff
establish clear misuse of the information.
For information to be treated as confidential and subject to protection
by the law of confidence it must meet the requirements stated in the case
of Coco v. AN Clark(Engineers) Ltd,1375 namely:
(i) Quality of Confidence;
(ii) Obligation of Confidence; and
(iii) Unauthorised Use of Information

1374
[1969] RPC 41.
1375
Ibid.
412 INTELLECTUAL PROPERTY LAW

Confidential Quality

Various types of information may be considered as confidential

information. These may include technical, commercial or personal or
private information. In R v. Department of Health,1376 Simon, J. stated
that there are four main classes of information traditionally regarded as
confidential, being trade secrets, personal confidences, government
information and artistic and literary confidences. In that case the use of
information about patients’ prescriptions which had been converted into
an anonymous form was acceptable. The purpose of the law of confidence
in such circumstances was to protect personal confidences and this did
not give the patients a property right in the information.
The law of confidence does not require information to be completely
secret in order to be considered confidential. Information will be protected
provided that it is limited in the scope of its availability. The information
to be protected must not be common or public knowledge or a matter of
public record. Information which is not readily available to the general
public is capable of protection, but once information becomes publicly
available or known by a substantial number of people it will lose its
confidential character. In Coco v. AN Clark (Engineers) Ltd1377 Megarry,
J. stated ‘However secret and confidential the information, there can be
no binding obligation of confidence if that information is blurted out in
public or is communicated in other circumstances, which negative any
duty of holding it confidential.’
Therefore, simply marking the document ‘PRIVATE AND
CONFIDENTIAL’ will not be considered sufficient to make the document
so marked qualify as confidential if the information is in public domain.
In Dalrymples Application,1378 a manufacturer distributed over 1 000
technical bulletins containing information about a new manufacturing
process to members of a trade association. The bulletins were marked
‘CONFIDENTIAL’ and contained a notice that the contents of the bulletin
should not be disclosed to non-members. The court refused to find that
the information was confidential in this case because it was felt that the
trade association had not taken sufficient steps to ensure that the
information could not be accessed by non-members.
Similarly, in Mustad & Sons v. Dosen,1379 the court held that secret
information concerning the details of an invention which was the subject
of a patent application had lost its confidential character as soon as it had
been published in a patent application. The Patent Office Register is a
public document and while it was accepted that the general public would
1376
[2001] FSR 74.
1377
Supra note 1374.
1378
RPC 449.
1379
[1963] 3 All ER 416.
 CONFIDENTIAL INFORMATION 413

be unlikely to actually access the Register the information was considered

to be in the public domain and therefore was not protected by the law of
confidence.

Trade Secrets

All businesses have trade secrets. Thus any confidential business

information that provides an enterprise with a competitive edge may be
considered to be a trade secret. These may include the manufacturing
processes, techniques and know-how, lists of customers, formulas for
producing products, personal records, financial information, manuals,
ingredients, business strategies, business plans, marketing plans,
information about research and development activities. The unauthorised
use of such information by persons other than the holder is considered
unfair practice and a violation of the trade secret.
The TRIPS Agreement provides for the protection of undisclosed
information which:
(c) is secret in the sense that it is not, as a body or in the precise
configuration and assembly of its components, generally known
among or readily accessible to persons within the circles that
normally deal with the kind of information in question;
(d) has commercial value because it is secret; and
(e) has been subject to reasonable steps under the circumstances, by
the person lawfully in control of the information, to keep it secret.
In Thomas Marshall (Exports) Ltd v. Guinle,1380 Megarry, J. provided a
working definition of trade secrets. In that case the Defendant, Guinle,
was the managing director of the plaintiff company for a period of ten
years during which time he was involved in the company’s imported
clothing business. The defendant’s contract of employment provided that
he was not to engage in any other business without the company’s consent
while he was employed as managing director; that during and after his
employment, he was not to disclose confidential information in relation
to the affairs, customers or trade secrets of the company and its group;
and that after ceasing to be managing director he was not, inter alia, to
use or disclose confidential information about the suppliers and customers
of the group. Without the company’s knowledge, the defendant began to
trade on his own account and on behalf of his two companies in
competition with the company’s customers. The defendant purported to
resign as managing director at a time when his contract had another four-
and-a-half years to run. The company applied for interim injunctions to
restrain the defendant, inter alia, from disclosing or using any confidential
information or trade secret of the company during or after his employment.
1380
[1979] 1 Ch. 227.
414 INTELLECTUAL PROPERTY LAW

It was held that the court would restrain the defendant from continuing
further breaches of his employment contract and that an interim injunction
would be granted in respect of the defendant’s breach of the obligations
of fidelity and good faith to his employer.
In order to define trade secrets in a business or industrial setting
Megarry, V-C formulated the following requirements to be satisfied if
information was to be considered as confidential:
1. The information must be such that the owner believes that its
release would be injurious to him, or would be advantageous to
his rivals or to others.
2. The owner must believe that the information is confidential or
secret and not already in the public domain.
3. The owner’s belief under 1 and 2 must reasonable; and
4. The information must be judged in the light of the usage and
practices of the particular industry or trade concerned.

Government Secrets

The issue of government secrets raises important public policy issues

over and above those encountered in relation to other types of confidential
conformation. The preservation of secrets pertaining to national security
and international relations is balanced against issues of free speech and
open dissemination of news and current affairs. Thus, the State Security
Act1381 Cap 111 of the Laws of Zambia makes it an offence for any
person to communicate certain information.
Any person who has in his possession or under his control any code,
password, sketch, plan, model, note or other document, article or
information, which relates to or is used in a protected place or anything
in such a place, or which has been made or obtained in contravention of
the Act, or which has been entrusted in confidence to him by any person
holding office under the Government, or which he has obtained or to
which he has had access owing to his position as a person who holds or
has held such office or as a person who is or was a party to a contract
with the Government or a contract the performance of which in whole or
in part is carried out in a protected place, or as a person who is or has
been employed under a person who holds or has held such an office or
was a party to such a contract, and who:
(a) uses the same in any manner or for any purpose prejudicial to
the safety or interests of the republic; or
(b) communicates the same to any person other than a person to
whom he is authorised to communicate it or to whom it is in the
interests of the republic his duty to communicate it; or
1381
Chapter 11 of the Laws of Zambia.
 CONFIDENTIAL INFORMATION 415

(c) fails to take proper care of, or so conducts himself as to endanger

the safety of, the same; or
(d) retains the sketch, plan model, note, document or article in his
possession or under his control when he has no right or when it
is contrary to his duty so to do, or fails to comply with any lawful
directions with regard to the return or disposal of the same
shall be guilty of an offence and liable on conviction to imprisonment
for a term of not less than fifteen years but not exceeding twenty-five
years.1382
Furthermore, the State Security Act prohibits the communication of
classified information. Therefore any person who communicates any
classified matter to any person other than a person to whom he is
authorised to communicate it or to whom it is in the interests of the
Republic his duty to communicate shall be guilty of an offence and liable
on conviction to imprisonment for a term not less than fifteen years but
not exceeding twenty-five years.1384
In the case of Attorney-General v. Guardian Newspaper Ltd1385 and
Attorney-General v. The Observer Ltd1386 the UK Government failed to
use the breach of confidence action to prevent the ex-members of the
security services from disclosing national secrets. The author of
‘Spycatcher’, Peter Wright, had been a member of MI5, a British security
intelligence organisation. On his retirement he moved to Australia and
wrote an account of his career in the secret service despite the fact that
former members of M15 owe a lifelong duty of confidence to the Crown.
Both cases involved newspapers which printed extracts from the
‘Spycatcher’ books. The House of Lords considered whether state secrets
should in all circumstances be treated as confidential. Ultimately, the
injunctions against The Guardian and the Observer were refused and the
law of breach of confidence was not used to prevent these newspapers
reporting the contents of the book. Publication of the ‘Spycatcher’ in the
United States had destroyed the confidential nature of its contents. The
Court considered that no further damage could, therefore, be done by
publishing information quoted in the book.

Personal Information

If personal information is not generally known and would not be disclosed

by the subject of the information it will be protected by the law of
confidence. In Argyll v. Argyll,1386 the Duke of Argyll was prevented from
1382
Section 4 (1), State Security Act.
1383
Section 5, State Security Act.
1384
[1988] 3 All ER 567.
1385
[1989] AC 109.
1386
[1967] Ch. 302.
416 INTELLECTUAL PROPERTY LAW

publishing information about his wife’s private affairs and personal habits.
The information was based on the confidential relationship or spouse
privilege which exists between married couples.
Also doctors have a duty to refrain from disclosing information
concerning their patients without the patient’s consent. Similarly, lawyers
are bound by a duty of confidence to refrain from disclosing information
confided in them by their clients to third parties.

Confidential Obligation

The second requirement in an action for breach of confidence is that

there must be obligation of confidence which arises from the
circumstances in which the information was imparted.1387 This obligation
may arise by express agreement or prior notice, or it may be implied by
law, for instance, in a fiduciary relationship or by general equitable
principles.

Fiduciary Relationships

In a fiduciary relationship equity imposes an obligation on the trustees to

act not in their interests, but in the interests of the beneficiaries. The
close relationship between the trustees and beneficiaries entail that some
information will pass between the parties which is likely to be considered
confidential. The obligation can arise in a number of cases such as
company directors and top managers owe a fiduciary duty to their
company. Likewise professionals such as lawyers and accountants may
owe fiduciary duties to their clients.
In Farman & Plantt Ltd v. I Barget Ltd,1388 the plaintiff company,
engaged in the reproduction furniture trade, commissioned a report on
its somewhat parlous financial condition. One of the defendants, Hutchins,
then the sales manager of the plaintiff, appears to have taken the report
from the desk and then circulated it to the other sales representatives of
the company, so as to lure them to the rival firm which Hutchins was
intending to join. The court held this to be a clear breach of confidence
by a senior employee and as such was actionable.
It is worth noting, however, that it is not every fiduciary duty that
gives rise to liability for breach of confidence. Thus in Baker v.
Gibbons,1389 a director of a cavity wall insulation firm set up a rival
operation and solicited some of the company’s agents in the hope of

1387
Per Megarry, J. Coco v. AN Clark (engineers) Ltd [1969] RPC 41.
1388
[1977] FSR 260.
1389
[1972] 1 WLR 693; [1972] 2 All ER 759.
 CONFIDENTIAL INFORMATION 417

persuading them to transfer their allegiance to his firm. This was contrary
to his breach of his fiduciary obligations towards the company, but the
court held that there was no breach of confidence because the names and
addresses of the agents concerned were in the public domain and therefore
did not represent confidential information.

Contractual Relationships

Provisions are often found in formal contracts dealing with matters of

confidence and imposing a duty on one or both parties not to disclose or
use certain information which may be considered confidential. In
Exchange Telegraph Co v. Gregory & Co,1390 the plaintiffs operated a
news agency service providing up-to-date share price information to its
subscribers. The defendants were originally subscribers but the contract
was not renewed by the claimants since the Stock Exchange, the source
of the information did not want the service offered to parties such as the
defendants who were outside brokers, not subject to the rules of the Stock
Exchange. In pique, the defendants arranged to obtain the information
service from another subscriber and then sold it to their own subscribers.
The terms of the plaintiffs’ subscription contract included a provision
that information was not to be passed on to non-subscribers. The court
held the defendants to be liable for infringing the plaintiff’s rights of
confidentiality.
In the absence of an express contractual provision the person who
wishes to maintain confidentiality will have to rely on an implied duty of
confidence to prevent unauthorised disclosure. In Tournier v. National
Provincial & Union Bank of England,1391 the claimant banked with the
defendants and his account was overdrawn. The bank kept a careful eye
on Tournier’s affairs, and noted that he had endorsed a cheque payable
to his account over someone else’s account, this party being a bookmaker.
The bank rang his employer and revealed this information which led him
to be dismissed by his employer. Tournier sued the bank and the Court of
Appeal found in his favour, as there was an implied term in the banker-
customer relationship that information derived from the contract should
not be disclosed by the bank, unless the law compels such a disclosure.

Employer/Employee Relationship

An employee owes a duty of confidentiality to his employer and this

duty may be expressly stated in the contract of employment. In the absence
of an express contractual provision, the employer who wishes to maintain
1390
[1896] 1 QB 147.
1391
[1924] 1 KB 461.
418 INTELLECTUAL PROPERTY LAW

confidentiality will have to rely on an implied duty of confidence to

prevent unauthorised disclosure or use. It is possible for the courts to
hold that a duty not to disclose applies to them. In judging whether or not
the recipient of information is bound by a duty of confidence, the courts
will consider whether

… the circumstances are such that any reasonable man

standing in the shoes of the recipient of the information
would have realised that upon reasonable grounds the
information was being given to him in confidence, then
this should impose upon him the equitable obligation of
confidence.1392

It must be noted that the information which the employer is concerned

most about are ‘trade secrets’ which have been passed on to the employee
or which the employee has acquired during the course of employment.
In Hivac Ltd v. Park Royal Scientific Instruments Ltd,1393 the plaintiff
company manufactured small thermionic valves for use in hearing aids,
being at the end of the war the only company in Britain to do so. Five of
its skilled manual workers worked on Sundays for the defendant company,
which had been established to make hearings aids with valves that
competed with the plaintiff’s. The plaintiff was subject to the Essential
Work Order and so could not dismiss the five, who by contract were
subject to 24 hours notice, without following a complex statutory
procedure. It sought interlocutory relief enjoining the defendant from
procuring breach by the workers of their employment contracts. The court
found in favour of the plaintiff and granted the injunction.
Similarly in Printers & Finishers v. Holloway,1394 the court granted an
injunction to prevent the defendant from using confidential information
(documentary material) he acquired from his employer. In that case, the
defendant, manager of the plaintiff company’s flock printing plant,
showed a director and employee of Vita-Tex around the plant. The plant
had been set up under a confidential know-how agreement and the
defendant was under instructions to keep the process involved secret. He
removed some secret documents and copied others; he also ordered a
machine part for Vita-Tex from the know-how licensors. He then left his
employ and the plaintiff began proceedings against him, two Vita-Tex
directors and Vita-Tex itself for various injunctions relating to breach of
confidence.

1392
Supra note 1387.
1393
[1946] 1 All E.R. 350 CA.
1394
[1965] 1 W.L.R. 1.
 CONFIDENTIAL INFORMATION 419

Former Employee’s Obligations

Employees are considered to owe a duty of confidence to their employers

even if no express confidentiality provisions appear in their contract of
employment. It is not a breach of duty for an employee while still
employed by a company to make plans or preparation for future
employment as long as they do not intend to use trade secrets or other
confidential information. In Faccenda Chcken Ltd v. Fowler,1395 the
plaintiffs owned a number of refrigerated vans and operated a mobile
service selling frozen chickens to retail shops and catering companies.
Fowler, an ex-employee set up in competition with his previous employers
who attempted to prevent him from doing so by raising an action for
breach of confidence. The plaintiffs alleged that Fowler was using
confidential information in breach of his obligation of confidence by
using his knowledge of sales information and customer lists to compete
with them.
Goulding, J. identified three classes of information which the employee
might acquire in the course of his employment, as follows:
1. Information either trivial in nature or available from public
sources which could not be regarded as confidential. This class
is uncontroversial, and the law of confidence does not apply to
it.
2. Information which an employee must treat as confidential either
because this is expressly communicated to him or because the
information is obviously confidential in nature. This information
may become part of the employee’s own skill and knowledge
and, if so, can be protected during the continuance of employment
but can be used to the employees benefit once they leave. If an
employer wishes to protect such information he must do so by
express contractual provision usually in the form of a
confidentiality clause or restrictive covenant.
3. Specific trade secrets so confidential that they cannot lawfully
be used for anyone’s benefit except the original employer
notwithstanding that the employee may have learned this
information by heart.
It was held that the information used by the defendant fell into the first
two categories, as it had not been restricted to high-level employees in
any way and he could not, therefore, be prevented from using it. Since
Mr Fowler was simply making use of information obtained in the course
of his previous employment, rather than disclosing it to a third party for
gain he escaped liability for breach of confidence.
1395
[1986] 1 All ER 617.
420 INTELLECTUAL PROPERTY LAW

Court of Appeal in upholding Goulding, J. decision that the

information in issue in the case fell within the second class held that:
(a) In the absence of any express term, the obligations of employee
in respect of the use and disclosure of information are the subject
of implied terms.
(b) While the employee remains in the employment of the employer
the obligations are included in the implied term which imposes a
duty of good faith or fidelity on the employee. For the purposes
of the present appeal it is not necessary to consider the precise
limits of this implied term.

Third Party Relationship

It must be noted that confidential information does extend to third parties.

In Saltman v. Campbell,1396 the plaintiffs were the owners of the drawings
of a type of tool used for making leather punches. They instructed another
linked company, Monarch, to arrange with the defendants to manufacture
tools from the drawings and the defendants did this, but also retained the
drawings for their own use. In finding that there had been a breach of
confidence, the Court of Appeal held that it made no difference that the
parties had not been in a direct contractual nexus, since the confidentiality
of the drawings, and the rights of Saltman in respect of them were obvious
to the defendants. Also in Argyll v. Argyll,1397 the Sunday newspapers
were restrained to disclose information which was private and of
confidential nature which the Duchess had told the Duke, and which the
Duke passed on to the newspapers. The newspapers had also been aware
of the confidential character of the information.
In Fraser v. Thames TV Ltd,1398 three actresses formed a rock group
with the assistance of a manager and developed an idea for a TV series
known as The Rock Follies. They discussed the idea orally with Thames
TV in confidence, and it was agreed that the actresses were to have first
refusal should the series proceed. When Thames TV decided to proceed,
one of the actresses could not get a release from another part and Thames
replaced her with another actress. It was held that the court would prevent
a person disclosing an idea in written or oral form until it became general
public knowledge, provided that the circumstances imputed an obligation
of confidence, and the content was clearly identifiable, potentially
attractive in a commercial sense and capable of being brought to fruition.
In Attorney-General v. Guardian Newspapers Ltd (No. 2)1399 Lord
Goff stated:
1396
[1963] 3 All ER 413.
1397
[1965] 1 All ER 611; [1967] Ch. 302.
1398
[1984] 1 QB 44.
1399
[1990] 1 AC 109, at 281.
 CONFIDENTIAL INFORMATION 421

If a person into whose possession the confidential

information comes publishes it, and is aware of its
confidential nature, he will prima-facie be guilty of a breach
of confidence and any such publication, if threatened, can
therefore, be restrained by injunctions as a threatened
breach of confidence, subject of course to the usual
limitations on the duty of confidence. One of these
limitations is that information is no longer confidential
once it has entered the public domain, once information
relating to national security has entered the public domain,
I find it difficult to see on what basis further disclosure of
such information can be restrained.

Unauthorised use of Confidential Information

The third element in an action for breach of confidence is the unauthorised

use of confidential information to the detriment of the party
communicating it. The obligation of confidence obliges the recipient of
confidential information to make use of it for only those purposes
specified either explicitly or implicitly by the owner of the information.
The person obliged may not make use of the information himself or
disclose it to others. A breach of confidence need not be deliberate and if
any person fails to take reasonable care to identify and look after
confidential information that has been passed to him, then he will be
liable for breach of confidence through negligence.
In Seager v. Copydex (No. 1),1400 the plaintiff invented and patented
one carpet-grip, the ‘Klent’, which he was seeking to exploit. While
discussing with two of the defendant’s managers the possibility of the
defendant marketing the ‘Klent’, the plaintiff revealed to them in
confidence the crucial idea for another grip, whose characteristics were a
V-tang and a strong point. The managers stated that they were not
interested in the idea. However, after the negotiations over the ‘Klent’
failed the defendant developed their own carpet grip which turned out to
embody the very idea of the plaintiff’s alternative and to be called the
‘Invisigrip’, a name which the plaintiff said he had suggested. The
defendants claimed that they had not used the plaintiff’s design idea in
the preparation of their carpet grip. It was claimed that the defendants
had ‘honestly forgotten’ confidential information communicated to them
by the plaintiff.
The Court of Appeal found in favour of the plaintiff and awarded
damages on the basis that the defendants had unconsciously copied the
1400
[1967] 2 All ER 415, CA; [1967] RPC 349.
422 INTELLECTUAL PROPERTY LAW

plaintiff’s design idea and used the information imparted to them during
confidential negotiations.
Besides the unauthorised use of information, the plaintiff must
establish proof of detriment or loss suffered as a result of the unauthorised
use of his confidential information. In Attorney-General v. Guardian
Newspapers Ltd (No. 2),1401 Lord Keith considered as orbiter that the
unauthorised disclosure of confidential information would in itself
constitute proof of detriment to the plaintiff without further proof of
actual financial loss.
The information obtained pursuant to a statutory requirement can be
disclosed without breaching the law of confidence. Thus, in Hoechst UK
Ltd v. Chemiculture Ltd,1402 the plaintiffs Hoechst made and sold agro-
chemicals including a pesticide called fenoxaprop-ethyl (FPE) which was
marketed in France and Belgium under the name PUMA and in the U.K.
under the registered trademark CHEETAH. The defendant acquired
PUMA FPE in Belgium and sold it in the UK as CHEETAH. Pesticides
such as FPE and their containers had to be approved under the Food and
Environmental Protection Act. Officers of the Health and Safety Executive
of the National Agriculture Centre, acting pursuant to powers under the
Act, raided the defendant’s premises. One of the officers passed
information obtained during the raid of the plaintiffs who used it to support
a successful exparte application for an Anton Piller order against the
defendant based upon allegations of passing off and trademark
infringement. The defendant applied to have the Anton Piller order
discharged on the grounds that information obtained during the raid was
confidential and its disclosure to the competitor like Hoechst was a beach
of confidence.
Morritt, J. stated:

Given the purposes of the Act and the mutual interest of

both Hoechst and the Ministry and through the Ministry
and Safety Executive in ensuring that FPE sold as
CHEETAH should be confined to FPE in a container duly
approved and properly sold under the name CHEETAH, I
do not think that there is any impediment to the disclosure
of information by the Ministry or the Health and Safety
Executive to Hoechst which is relevant to that mutual
interest and concern.

Morrit, J. therefore, held that the information disclosed by the Health

and Safety Executive to Hoechst was relevant to this mutual interest so
that there was no breach of confidence.
1401
[1990] 1 AC 109, at 255 - 256.
1402
[1993] FSR 270.
 CONFIDENTIAL INFORMATION 423

Similarly, in R v. Licensing Authority, ex parte Smith Kline & French

Laboratories Ltd,1403 Smith Kline & French Laboratories (SKF) originated
a drug called Cimetidine to control gastric acid secretion and heal peptic
ulcers. SKF marketed the drug under the name ‘Tagamet’ and obtained
patents in respect of it in 1972, which were extended to 1992 on the
basis that during the last four years the patents would be endorsed ‘licences
of right’. SKF and others wishing to sell the drug had to obtain a product
licence from the licensing authority. SKF objected to the licensing
authority using confidential information submitted by SKF in support of
its own application in order to consider other companies’ applications
for product licences. The House of Lords upheld the Court of Appeal
holding that there was no breach of confidence stating that the licensing
authority, at its discretion and in performance of its duties under the
Medicines Act, had a right to make use of all the information provided
by applicants for product licences in determining whether to grant other
obligations.

Remedies

The remedies available for breach of confidence are injunction, damages,

accounts of profits and delivery up and destruction of infringing materials.

Injunctions

The purpose of the law of confidence is to ensure that secrets and

confidential information is preserved from being disclosed or
communicated to third parties. Therefore, the most appropriate remedy
is the quia timet injunction, which will be granted to prevent or restrain
one from publishing, disclosure or use of the confidential information.
However, it must be noted that once the confidential information has
fallen in the public domain the injunction will not be granted because it
is ineffective. In Attorney-General v. The Observer Ltd,1404 the House of
Lords held that injunctions would not be granted against the Observer
and the Guardian preventing them from reporting on the contents of the
Spycatcher because publication abroad had effectively destroyed the
secrecy of the contents of the book.
It is worth mentioning that an injunction is an equitable remedy and
as such is granted at the discretion of the court. The court may refuse to
grant an injunction where another remedy, such as damages, may be more
appropriate. In Coco v. AN Clark (Engineers) Ltd,1405 the court decided
1403
[1989] 1 All ER 175.
1404
[1989] AC 109.
1405
[1969] RPC 41.
424 INTELLECTUAL PROPERTY LAW

that the payment of damages in form of royalties would be an appropriate

alternative pending full trial.

Damages

Compensatory damages are available where a breach of confidence has

taken place. Damages are assessed at the value of the information that
the defendants have taken. In Seager v. Copydex Ltd (No. 2),1406 Lord
Denning M.R. stated as follows:

The value of the confidential information depends upon

the nature of it. If there was nothing very special about,
that is, if it involved a particular inventive step but was the
sort of information which could not be obtained by
employing any competent consultant, then the value of it
was the fee which a consultant would charge for it; because
in that case the defendant company, by taking the
information, would only have saved themselves the time
and trouble of employing a consultant. But, on the other
hand, if the information was something special, as for
instance, if it involved an inventive step or something so
unusual that it could not be obtained by just going to a
consultant, then the value of it is much higher. It is not
merely a consultant’s fee, but the price which a willing
seller and a willing buyer would pay for it. It is the value
as between a willing seller and a willing buyer.

Accounts of Profits

Where the confidential information has been exploited commercially in

breach of confidence, account for profits may be an appropriate remedy.
Thus, in Peter Pan Manufacturing v. Corsets Silhouette, 1407 a
manufacturer of brassieres made use of the confidential information under
a licence agreement. After the expiry of a licence agreement, the
manufacturer continued to use the information, in breach of confidence.
In an action for breach of confidence, the plaintiff asked for an account
of profits based on the whole of profits accruing from the brassieres but
the defendant claimed that the account of profits should be based only
on the profit resulting from the wrongful use of the confidential
information, that is the profit relating to the parts of the brassieres
incorporating the confidential information. The difference between the
1406
[1969] RPC 250.
1407
[1963] 2 All ER 402; [1963] RPC 45.
 CONFIDENTIAL INFORMATION 425

two sums was substantial and the claimant was awarded the higher sum
because it was accepted by the court that the defendant would not have
been able to make the brassieres at all, without the use of the confidential
information.
Pennycuick, J. in arriving at the said decision referred to the case of
Lever v. Goodwin,1408 where Cotton, L.J. stated:

It is well known that, both in trade mark cases and patent

cases, the plaintiff is entitled, if he succeeds in getting an
injunction, to take either of two forms of relief. He may
either say ‘I claim from you the damage I have sustained
from your wrongful act’, or ‘I claim from you the profit
which you have made by your wrongful act’ … the profit
for which the defendants must account is the profit which
they have made by the sale of soap in that fraudulent dress
to the middlemen. It is immaterial how the middlemen
deal with it.

Delivery up and Destruction of Articles

The court has discretion to order that any goods or products, for example,
manufactured, as a result of the unauthorised use of the confidential
information or which incorporate the tangible expression of such
information must be destroyed.

Public Interest Defence

In breach of confidence actions the defendant can avoid liability by

establishing that he in fact had the plaintiff’s consent to disclose or use
the information that is the subject of the action. Furthermore, the
defendant can escape liability of the breach of confidence where he
discloses confidential information if it is in the public interest that the
confidential information is made available to the public at large or to a
restricted class of the public such as an official body. One of the earliest
of the cases to deal with the issue of public interest was the case of Gartside
v. Outram,1409 where a firm of wool-brokers sought to prevent their former
sales clerk from using customer information obtained by him during his
period of employment, while he in turn alleged that their business was
conducted in a fraudulent manner. It was held that if proven these
allegations would destroy any obligation of confidence since there is no
confidence in the disclosure of an iniquity.
1408
[1887] 36 Ch. D 1.
1409
(1856) 26 LJ Ch. 113.
426 INTELLECTUAL PROPERTY LAW

Similarly, the public interest defence is relevant to the administration

of justice. Thus, in Lion laboratories Ltd v. Evans,1410 the plaintiffs were
the manufacturers of the intoximeter device used by the police for
measuring alcohol consumption by road users. The defendants who were
former employees of the firm revealed to the press documents obtained
while they were employees which indicated that the devices were erratic
and unreliable. An action against the former employees for breach of
confidence failed on the grounds that the faulty intoximeters represented
a serious threat to the fair administration of justice and that it was essential
to ventilate public disquiet about the accuracy of the evidence provided
by the machines.
In W v. Egdell,1411 W had killed five people and had been diagnosed
as suffering from paranoid schizophrenia. At his trial, his plea of
diminished responsibility was accepted and he was detained under the
Mental Act. Later, W’s condition improved and his doctor recommended
transfer to a regional secure unit. The Home Secretary however, refused
his consent to transfer. W applied to a mental health tribunal for discharge
or transfer. The doctor was instructed to examine W and make a report.
The report was not favourable to W and the doctor sent a copy to W’s
solicitor in the belief that it would be placed before the tribunal, but W’s
solicitor withdrew the application. The Doctor concerned that there will
be no copy of the report on W’s file for future reference, sent a copy of
his report to the Home Secretary. W complained that this was a breach of
the confidential relationship between a patient and a doctor.
The Court of Appeal held that though W had a personal interest to a
duty of confidence by a doctor to his patient was not a matter of private,
but of public interest. The public interest in maintaining confidence had
to be balanced against the public interest in protecting others from possible
violence. In this case, the public interest in restrictive disclosure
outweighed the public interest that a patient’s confidence should be
respected.
Bingham, L.J. stated that,

only the most compelling circumstances could justify a

doctor in acting in a way which would injure the immediate
interests of his patient perceived them, without obtaining
his consent.1412

In Woodward v. Hutchins,1413 an ex-employee was selling stories about

the private lives of the rock stars, in blatant breach of his obligations of
confidence. Nonetheless, the Court of Appeal refused to grant the
1410
[1985] QB 526; [1984] 2 All ER 417.
1411
[1989] 1 All ER 1089; [1990] Ch. 359.
 CONFIDENTIAL INFORMATION 427

injunction and held that the stars were keen to manage and manipulate
their own images so as to appear in the best possible light, and, therefore,
could not object if what were presumed to be true, but less flattering,
tales about them were released. Lord Denning MR stated that as there
should be ‘truth in advertising’, so there should be ‘truth in publicity’.1414
Besides Bridge, L.J. stated that:

it seems to me that those who seek and welcome publicity

of every kind bearing on their private lives so long as it
shows them in favourable light are in no position to
complain of invasion of their privacy by publicity which
shows them in unfavourable light.1415

It must be observed that the confidential information obtained through a

statutory duty cannot be used for other purposes for which it was not
intended. In Marcel v. Commissioner of Police of the Metropolis,1416 the
court held that the police were not entitled to disclose those documents
to a third party to use in civil proceedings, because the public interest in
ensuring that the documents were used solely for public purposes
appropriate to the powers of seizure conferred on the police outweighed,
the public interest in ensuring that all relevant information was available
in civil proceedings. The police had a duty not to disclose such documents
to third parties except by the order of the court.
Furthermore, in Hellewell v. Chief Constable of Derbyshire,1417 the
plaintiff complained that the police had given copies of the photograph
of him to local shopkeepers involved in a shop watch scheme and who
were concerned at the level of shoplifting. At that time the plaintiff had
been charged with theft, though not convicted. The judge stated that the
police were not free to use the photograph in whatever way they wished
and that it might be described as a piece of confidential information.
Nonetheless, the Judge referring to the plaintiff’s long list of convictions
and the fact that the dissemination of the photograph was limited to
shopkeepers and their staff held that the actions of the police were
obviously and unarguably in the public interest. The police had acted in
good faith for the prevention or detection of crime.
However, in Robert v. BBC,1418 the plaintiff had made a statement to
the police under caution after being suspected of defrauding a number of
banks. The statement was read in open court by the judge, but the plaintiff
1412
[1990] Ch. 359 at 423.
1413
[1977] 1 WLR 760; [1977] 2 All ER 751.
1414
Ibid., at 764 and 754.
1415
Ibid., 765 and 755.
1416
[1991] 1 All ER 845.
1417
[1995] 1 WLR 804.
1418
[1999] FSR 70.
428 INTELLECTUAL PROPERTY LAW

was not convicted. The court whilst accepting that a statement made to
the police was subject to an obligation of confidence held that once it
had been read in open court by the judge that obligation had come to an
end. The defendant was therefore allowed to continue with its plans to
broadcast a programme that made reference to the statement.
 429

BIBLIOGRAPHY

Abbott, F., Cottier, T. and Gurry, F., The International Intellectual

Property System: Commentary and Materials, Part One & Two. The
Hague: Kluwer Law International (1999).
Alikhan, S., Socio-Economic Benefits of Intellectual Property Protection
in Developing Countries. Geneva WIPO Publication No. 454(E)
(2000).
Bainbridge, I.D., Intellectual Property (3rd ed.). London: Pitman
Publishing (1996).
Bodenhausen, G.H.C., Guide to the Application of Paris Convention for
the Protection of Industrial Property (as Revised at Stockholm in 1967).
WIPO Publication No. 611(E).
Cornish, W.R., Intellectual Property: Patents, Copyright, Trade Marks
and Allied Rights (4th ed.). London: Sweet & Maxwell (1999).
Cases and Materials on Intellectual Property (3rd ed.). London: Sweet
& Maxwell (1999).
Fiscor, M., Collective Management of Copyright and Related Rights.
Geneva WIPO Publication No. 855(E) (2000).
Ginsburg, J.C., Litman, J., Goldberg, D. and Greenbaum, A.J., Trademark
and Unfair Competition Law: Cases and Materials (2nd ed.) USA:
Michie Law Publishers, Contemporary Legal Education Series (1996).
Hawes, J.E., Trademark Registration Practice. USA: West Group (1998).
Intellectual Property Needs and Expectations of Traditional Knowledge
Holders. WIPO Report on Fact-Finding Missions on Intellectual
Property and Traditional Knowledge (1998-1999). Geneva WIPO
Publication No. 768E (2001).
Intellectual Property on the Internet: A Survey of Issues. Geneva WIPO
Publication No. 856, (2002).
WIPO, Department of Secondary and Higher Education Ministry of
Human Resource Development and Indian Institute of Technology,
International Conference on Intellectual Property Education and
Training, Collection of Papers Compiled by the WIPO Worldwide
Academy, Geneva WIPO Publication No. 775(E) (2001).
Kamil, I., Intellectual Property: A Powerful Tool for Economic Growth.
Geneva WIPO Publication No. 888.
Manual of Patent Examining Procedure (8th ed.). USA: Thomson West
(2005).
Secrets of Intellectual Property, A Guide for Small and Medium-Sized
Exporters. International Trade Centre and WIPO Publication. Geneva
(2004).
Merges, R.P., Patent Law and Policy: Cases and Materials (2nd ed.). USA:
Michie Law Publishers, Contemporary Legal Education Series (1992).
430 INTELLECTUAL PROPERTY LAW

Mwakyembe, H. and Kanja, G.M., ‘Implications of the TRIPS Agreement

on the Access to Cheaper Pharmaceutical Drugs by Developing
Countries: Case Study of South Africa v. The Pharmaceutical
Companies’, Zambia Law Journal, Vol. 32, pp. 111-147 (2002).
Sterling, J.A.L., World Copyright Law. London: Sweet and Maxwell
(1998).
Torremans, P., Holyoak and Torremans Intellectual Property Law (3rd
ed.). London: Butterworths (2001).
WIPO Intellectual Property Handbook. Geneva WIPO Publication No.
489(E) (2001).
Vaver, D., Principles of Copyright Cases and Materials, Geneva WIPO
Publication No. 844(A/E/F) (2002).
WIPO Worldwide Academy & University of Turin Post Graduate
Specialisation Course on Intellectual Property: Collection of Research
Papers. Geneva WIPO Publication No. 774.1(E), (2001).
WIPO Worldwide Academy & University of Turin Masters in Laws in
Intellectual Property: Postgraduate Specialisation Course on
Intellectual Property: Collection of Research Papers. Geneva WIPO
Publication No. 915(E) Geneva (2003).
WIPO Worldwide Academy Collection of Documents on Intellectual
Property compiled by WIPO Worldwide Academy. Geneva WIPO
Publication No. 782(E) (2003).
 431

INDEX

A
Adaptations 44, 52
Aggregate of sounds 54, 114
Anonymous 78, 87, 89, 412
Article 27 of the Universal Declaration of Human Rights 23
Artistic Work 3, 4, 15, 19, 20, 22, 32, 36, 47
Audiovisual Work 15, 20, 29, 31, 43, 46, 88
Authors 5, 9, 18, 19, 21, 23, 25, 68
Authorship 41, 43, 72, 75, 75, 78, 89, 199
B
Berne Convention 19, 114, 128
Bills 56
Broadcasting 5, 25, 26, 28, 29, 114, 127
C
Cable Programme 15, 26, 28, 29, 31, 54, 55, 73
Cinematographic Work 29, 44, 72, 115, 116
Commissioned Work 85, 92
Compilations 4, 15, 37, 41, 42, 49, 182
Composers 22, 86, 126, 162
Convention Establishing the World Intellectual Property 1
Copyright and Performance Rights Act 20, 26, 27, 28, 29, 47, 49,
53, 97, 111
Copyright Law 3, 5, 16, 17, 19, 32, 52, 70
Copyright Products 11, 22, 23
Copyright Protection 29
Copyright Work 4, 5, 15, 15, 23, 25, 61, 67, 72, 76, 83, 103, 117
Counterfeit 9, 23, 383, 401
D
Defendant 8, 31, 35, 37, 45, 66, 68
Derivative Works 52, 105
Disposition 21, 66, 207
E
Economic Rights 5, 30
432 INTELLECTUAL PROPERTY LAW

F
Film Producers 5, 25, 26, 29
Foreign Owners 9, 23
I
Independent Contractor 86, 269
Industrial Property 3, 7, 66, 218, 245
Integrity 91, 92, 93, 101
Intellectual Property 1, 2, 3, 4
J
Joint Ownership 87, 172
judgment 16, 33, 36, 38
L
Literary Work 1, 3, 15, 17, 30, 31, 34, 36, 43, 45, 55
M
Moral Right 5, 17, 91, 92, 94
Musical work 160
O
Ownership 16, 18, 72, 75, 82
P
Passing Off 7, 35, 341, 378, 385, 387, 402
Performers 5, 20, 22, 25, 26, 110, 115
Phonogram Producers 27, 115
Piracy 9, 17, 22, 23, 52, 70
Prejudicial 5, 92, 95, 174
Professional Capability 25
Protected Work 5, 36, 43, 113, 126, 156, 180, 188
Publishing right 30
R
Recording 4, 15, 20, 22, 27, 28
Related Rights 3, 4, 5, 20, 21, 25, 76
Reputation 5, 7, 94, 95, 344
Requisite Originality 41, 50
Rome Convention 26, 29, 127, 207
 INDEX 433

S
Scientific Work 1, 3
Sensationalist Interviews 63
Singers 22, 26
Skilled Occupation 86
T
Trademark 2, 4, 7, 11, 36, 218, 300, 329
Translations 44, 46, 52, 105
Typographical Arrangement 15, 16, 30, 31, 43, 55, 56, 158, 158
W
Writers 22, 86