No Cutting Corners in Copyright Litigation

It is trite law that copyright is a technical subject.  A heavy burden of proof rests on the shoulders of a Complainant in copyright infringement proceedings.  In short, it is necessary for a Complainant to show that the works in respect of which protection is sought are eligible for copyright and that copyright subsists in the works.  This requirement includes proof that the works relied upon are indeed “works” as defined in the Copyright Act, 1978, are original and not copied from any pre-existing work, have been reduced to material form, were created by a qualified person, that the Complainant is the owner of the (copyright in the) works and that there has been an infringement of the works.  In respect of the latter, it is necessary for a Complainant to show a (qualitatively) substantial similarity between the alleged copyrighted work and the alleged infringing work and causality, i.e. actual access to the alleged copyrighted works by the alleged infringer and a copying.  A Court must be properly apprised of the relevant facts from which inferences or conclusions as to the subsistence of the rights on which a Complainant relies can be drawn.  The Complainant itself cannot simply draw conclusions and present these conclusions as facts without placing before the Court the factual basis from which the inferences or conclusions are drawn. 

Few cases have highlighted this principle as well as the judgment in the matter between TeleAtlas Africa (Pty) Ltd and MapStudio (a Division of New Holland Publishing (South Africa) (Pty) Ltd) -v- Afrigis (Pty) Ltd (Case no. 14421/11 in the North Gauteng, Pretoria Division of the High Court of South Africa dated 13 May 2011).  This matter revolved around the alleged copying of certain maps (in both hard copy and digital format).  The Complainant approached the High Court for an interdict claiming that its copyright in certain maps were being infringed making reference in its evidence to so-called “copy-traps” which it alleged were also incorporated in the Respondent’s maps covering corresponding areas.  The Court dismissed the application referring to various omissions in the Complainant’s papers which were detrimental to its cause.  The Complainant did not attach to its affidavits any of the Street Guides to which it referred and which presumably depicted the maps at issue.  Nowhere in their affidavits did the Complainant explain what a Street Guide is or what it consists of and identify which part of each Street Guide is an artistic work and which part is a literary work.  This is where the Court held the Complainant’s difficulties started, i.e. with the identification of the subject of the copyright.  As a result, it was impossible for the Court to form any idea as to the precise nature and extent of the Street Guides.

Due to the Complainants’ lacking evidence they were not able to show that they own the copyright in respect of the Street Guides and Digital Maps.  To add insult to injury the Court held that even if it is accepted that the Complainant is the owner of the copyright in respect of the maps, there are a number of obstacles in the way of finding an infringement of that copyright.  The Court highlighted three such obstacles:

1) The Respondent denied reproducing or adapting the Complainants works in any manner and went to great lengths in describing in detail how it created its maps.  There was no visual similarity between the Complainants’ maps and the allegedly infringing maps (the one set of maps being drawings with the other set consisting of aerial photographs with the street names superimposed thereon).  The Complainants copy-traps were disputed and the Respondent’s evidence indicated that most of the alleged copy-traps in any event appeared in other works;

2) The Complainant did not establish which Guides are the subject of the alleged infringement.  Without the relevant guide being identified, the Court could not find that the copyright in respect of any one Guide had been infringed;

3) The substantial part of the relevant Guide allegedly reproduced was not identified.  If the relevant annexures to the affidavits were pages from a book (as the Court held they appeared to be) it was not possible to conclude that they constitute a substantial part of the work.  There was thus no objective similarity between the works and the Respondent’s works did not contain any recognisable features of the Complainants works.

The Court proceeded to volunteer its guidance as to how the Complainant should have gone about proving its case.  It should be mentioned that even if the Complainant had set out its case in this manner, it would not be entitled to an interdict as the Court also held there to be no copying of any substantial part of the Complainants’ works by the Respondent.  The guidance, however, must be embraced so as to clear the preliminary hurdles before the question of a possible infringement is considered.  The Court set out its observations as follows:

• In order to establish a clear right the Complainant first had to identify the maps or digital maps which are alleged to be the subject of their copyright (this is of the utmost importance) and having done so the Complainants had to establish in respect of each map and digital map that–

  - Copyright subsists in the map or digital map, i.e.:

• Each author reduced it to material form;
• It is original in that it was not copied from other sources and was the product of the author’s or maker’s own labours – or if it was copied, was not slavishly copied and, as  a result of the author’s own skill and labour, it achieved originality;
• Each author was a qualified person because, when the map was made, the author was a South African citizen or was domiciled or resident in South Africa or the company in whose service the author was, was a company incorporated under the laws of the Republic of South Africa.  Alternatively, the map was first published in South Africa;
•  Each author of the map made the map in the course and scope of his employment by the employer;  and
• The author’s employer assigned the copyright in the map to a person who assigned it to the Complainant.
•  Having established that they are the owners of copyright in the maps and digital maps the Complainants had to prove that the Respondent infringed their copyright in the map or digital map by reproducing it (i.e. by making a copy of a substantial part of the map or digital map) or by making an adaptation of the work (i.e. an adaptation of a substantial part of the map).

As stated above, in proving each of these issues it is not sufficient for a Complainant to simply expect a Court to draw conclusions from its statements.  Detailed factual evidence must be adduced on each point from which a Court can draw its own conclusions.  Where possible, documentary and other corroborating material must be filed in support of factual statements.  Whilst copyright litigation can at the best of times pose a complicated ordeal, it is important to stick to the basics, e.g. where you rely on an alleged copyrighted work which is claimed to have been infringed, to actually attach a copy of the copyrighted work to the founding affidavit or ensure that it is otherwise properly before the Court.  Assuming that a Complainant has sufficiently dealt with the issues pertaining to subsistence and ownership of copyright and deals with the question of infringement, a copy of the alleged infringing work must similarly be put before a Court for a comparison on the issue of the similarities between them.  A Complainant should cut no corners nor take any shortcuts in putting its case before a Court.  It is only through appropriately dealing with each of the facta probanda that a copyright owner can have any reasonable prospect of success. 

Herman Blignaut is a partner at Spoor & Fisher. Herman’s field of practise includes trade mark, copyright and unlawful competition litigation, including but not limited to trade mark oppositions, trade mark and copyright infringement, domain name, company and close corporation name objections, trade mark searches and prosecution. Herman is a Fellow of the South African Institute of Intellectual Property Law (SAIIPL) and also lectures and acts as an examiner in Practice Copyright Law for the SAIIPL. He is the author of various articles and contributions to international publications. Herman can be contacted on +27 12 676 1129 or by email at h.blignaut@spoor.com.