SOUTH AFRICA Law and Practice Contributed by: Daniel Pekar, André du Plessis, Sarah Suleman and Shaawn Phooko, KISCH IP
9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing) The Copyright Act 98 of 1978 makes the statutory provision that a copyright will not be infringed by any fair dealing of a literary or musical or artistic work for the purposes of: • research or private study or the personal or private use of a person; • criticism or reviewing work; or • reporting current events (eg, newspapers, maga - zines or broadcasting). However, there must be acknowledgement of the work by the source being mentioned or the name of the author of the work. The Copyright Act 98 of 1978 does not allow for a defence of satire or parody to copyright infringement. The Copyright Act 98 of 1978 does not explicitly out - line an exception for freedom of expression or speech. 9.3 Exhaustion In South Africa, the doctrine of exhaustion of trade mark rights applies to goods that are first sold and resold within the country. In other words, the proprie - tor has little control over the further distribution of the goods once they have consented to the selling of the goods on the market. In South Africa, the exhaustion of copyright applies when a genuine article of work is sold and subse - quently resold in the country. As per the foregoing explanation, a genuine article must be sold then resold for this principle to be applicable.
Injunctive relief for a copyright owner includes damag - es, an interdict, and the delivery of infringing materials. In South Africa, judges have discretion over whether to grant the relief/remedies being requested by the liti - gants and to provide their reasons thereto. Injunctive relief will be granted when the court has satisfied itself that the party seeking relief has sufficiently pleaded their case and provided the court with relevant evi - dence thereto, regardless of the defences the other party may have raised to the claim. The court will take the following factors into account: jurisdiction, locus standi (ie, whether the plaintiff can bring the case in their own name), factual position and evidence. A trade mark owner needs to establish proprietorship over the mark, and this can be done by way of furnish - ing a trade mark certificate or by providing evidence that will prove proprietorship (in the case of unregis - tered rights protected under common law). Evidence must be provided to prove that their rights have been infringed by the defendant and that the infringement has caused or will likely cause harm to their business through confusion in the market. In relation to copy - right, the plaintiff must prove that they are the owner of the work, that it was reduced to material form, that it is original, and that they are resident of a Berne Convention country. In addition, the plaintiff must be able to show that their protected work was the source from which the offending work was derived and that the offending work was done without consent. Grounds to Oppose Injunctions A trade mark or copyright defendant may oppose a preliminary injunction in the following ways: • trade mark – by proving consent, by pleading hon - est concurrent use and/or by proving the goods are parallel imports; and • copyright – by pleading the conceptualisation of the offending work and how it was not sourced from the protected work. 10.2 Monetary Remedies In trade mark and copyright matters, a party can be awarded actual damages or special damages. Where actual damages are awarded, the parties must embark on a damage-determining exercise, which is usually
10. Remedies 10.1 Injunctive Remedies
Injunctive relief for a trade mark owner includes: • interdicting and restraining the offending party from using the owner’s trade marks; • ordering the delivery up for destruction of the offending goods; and • obtaining an inquiry into damage.
514 CHAMBERS.COM
Powered by FlippingBook