Sleep(ing) out of copyright ownership

Newsletters |

7 December 2017

The law around ownership of the copyright subsisting in databases where two independent parties contributed to the final work.

In the recent case of Philanthropic Collection (Pty) Ltd v Girls & Boys South Africa the Johannesburg High Court (“the Court”) had to decide, among other things, whether the transacting parties shared joint ownership in the copyright subsisting in the database of donors for Philanthropic Collection’s 2015 SleepOut charity event.

A summary of the facts of the case are as follows: Philanthropic Collection (Pty) Ltd (“Philanthropic”) learned that Girls & Boys SA (“G & B”), which was the sole beneficiary of the 2015 SleepOut charity event (an event owned, organized and promoted by Philanthropic), was using the database of donors of the SleepOut event to solicit donations for an unrelated fund raising campaign of its own, as it was not a beneficiary for the years of 2016 and 2017.

Philanthropic claimed that it was the sole owner of the copyright subsisting in the database which was created specifically for its SleepOut event and on this basis, it approached the High Court on an urgent basis, inter alia, for an interdict restraining G & B from reproducing, adapting, accessing or using the said database without it’s authorisation. G & B, on the other hand, contended that the parties owned the database jointly and it was therefore entitled to use it.

The background to the creation of the database at issue is as follows:

Donors of the SleepOut event were required to register on Philanthropic’s website, to which the donors’ personal particulars were automatically transferred to an electronic database. Philanthropic’s website had a credit card payment functionality for donors to donate money. It then transpired that some donors preferred to donate via Electronic Fund Transfer (“EFT”). As the EFT functionality was not built into Philanthropic’s website, G & B’s employee (Mr. Veldman) drafted a form for donors who wanted to pay via the EFT payment method to provide their personal information, whereafter Mr. Veldman would manually input the personal information into Philanthropic’s electronic database.

G & B was of the view that it had joint ownership in the copyright subsisting in the database by virtue of the fact that, through its employee, it had drafted a form for donor entities to pay by EFT and had manually inputted the donors’ personal information into Philanthropic’s electronic database.

The issue of copyright ownership:

The Court dealt extensively with the issue of copyright ownership and found that electronic databases are categorized as Literary Works under the Copyright Act. Thereafter, the Court had to determine whether the Literary Work in issue was “original” which would then mean that the work could be the subject of copyright protection.

The Court held that a work is original when it is “… not copied from an existing source and if its production required a substantial degree of skill, judgement or labour”. The court examined the requirement of originality and the question of ownership and found that Mr. Veldman’s form for donors failed to meet the test for originality in terms of our law as he did not apply a “substantial amount of skill, judgment, labour…” to the database.

The Court warned against overextending the definition of an “author” in our law and held that “the definition of an author has to be considered in the context of the whole event, the role of the parties during the event, the innovation and its purpose”. In this case, the Court was of the view that whilst G & B’s employee had manually captured the particulars of donors who wanted to donate via EFT onto Philanthropic’s electronic database, the purpose behind G & B’s conduct was not to create a database for G & B to solicit donors, but was merely an act to add onto Philanthropic’s existing database for purposes of the SleepOut event.

The Court further found that without the SleepOut event, there would not be a database to begin with and that G & B had relied on the concurrence of Philanthropic to capture the data it claimed to own.  In the circumstances, the Court ruled in favour of Philonthropic and held, inter alia, that G & B did not have joint ownership over the copyright subsisting in the database.

Conclusion:

This case should have you questioning where the ownership in the copyright subsisting in any original and protectable work in your partnership or joint venture truly lies. An owner of copyright enjoys monopolistic rights which preclude others from, inter alia, reproducing, adapting and using a work without the owner’s authorization. As such, parties to a partnership or joint venture can fall short if they do not ensure that they have secured ownership rights in the database that they ought to have.

The lesson to be learnt from this case is that it is advisable to have a written agreement in place with any third party that contributes towards creating or developing further a work that is capable of copyright protection, so as to confirm where the ownership of the copyright vests, and to ensure that you do not get caught “Sleep(ing)Out” on this important issue. Ask us how.

Zama
Zama Buthelezi
Associate
Trade Mark Attorney
Email zamab@kisch-ip.com
Tel +27 11 324 3027

Koketso
Koketso Molope
Candidate Attorney
Trade Mark Department
Email koketsom@kisch-ip.com
Tel +27 11 324 3083