It makes for the perfect ideological storm when IP law and ICT law meet and the right to freedom of expression stands in the way. Capitalist and socialist, activist and pacifist, pragmatist and idealist: differing legal experts abound in the battle for, or against, IP rights in the digital environment.
Two recent developments which illustrate this tension, might serve South Africans well, if observed with care.
First, the recent ruling of the General Court of the European Union in Constantin Film Produktion GmbH v EUIPO made it clear that aural vulgarity could be a bar to the registration of a mark. In this matter, an appeal against the decision of the Fifth Board of Appeal, the court held that the title of the German language film “Fack Ju Göhte” may not be registered because it is considered offensive to Johann Wolfgang von Goethe, the 19th century writer and lawyer who died in 1832. The court was not persuaded by the contention that the intentional misspelling is a satirical expression in “teenage language” and that the unique combination of the words renders the title innocent of obscenity.
Second, earlier this year, the proprietor of the USA brand Hard Candy Cosmetics withdrew its application for registration of the campaign hashtag #metoo as a mark in relation to several international classes, after substantial public outcry. This despite the fact that it undertook, after the fact, to donate the profits of all sales of cosmetic products and fragrances generated by the mark to support the social awareness movement.
The parallels between these recent examples and that of #JeSuisCharlie and #BlackFriday are not to be overlooked. Similarly, in South Africa, civil society has been known to express its vehement objection to the existence, popularization and protection, of certain works. It is not difficult to observe an analogy with the so-called “rape” cartoons by Jonathan Shapiro or the political commentary expressed as artwork in The Spear by Brett Murray or F**k White People by Dean Hutton, among others.
This, manifestly precarious, balancing act between IP rights and fundamental freedoms has seemingly played a significant role in, inter alia, some of the proposed legislative amendments to the IP regime in South Africa. For example, the Copyright Amendment Bill, 2017 is riddled with references to the “user” of the work and their (new) rights and, in relation to digital works, refer only to infringement of “the work” instead of infringement of copyright in the work. At the same time, the legislature proposes costly and impractical criminal sanctions for piracy but, in what may only be assumed to be an intentional move, leaves the door open to all intermediaries, including the operators of websites that facilitate piracy, to avoid statutory liability on the basis that their service is not “primarily” intended for infringing use.
These examples, at face value, suggest a move toward a more socially aware, emotionally intelligent and constitutionally nuanced interpretation of traditional IP rights in the digital environment. On closer inspection, however, that which is pretty from afar is shown to be far from pretty.
If the flexible societal norms, in our remarkably fluid and liberal digital age, are permitted to influence the registration of trade marks, what does it suggest for copyright law? Furthermore, if the boni mores of, constitutionally speaking, less liberal nations, are applied to limit the scope of IP rights in the digital environment, does South Africa stand any chance of achieving a sound balance between IP rights and fundamental freedoms in the digital environment?
The answer, it is submitted, must be a qualified yes. If the rights of copyright owners are to survive into the digital age, it has become necessary to innovate. Since public policy is set to limit copyright even further, and the technologically-dependent public interest seems to weigh against private rights without the need for a proper balancing exercise, copyright owners may have to resort to a fistfight. In other words, the internet has made it necessary to fight fire with fire, or, prosecute copyright infringement with the aid of public policy that does not rely on the Copyright Act alone.
Two examples best illustrate this point, namely website blocking and geo-blocking.
In the case of technologically-aided geographical restrictions on the dissemination of copyright-protected works, i.e. geo-blocking, the judgment in South African Broadcasting Corporation Soc Ltd v Via Vollenhoven & Appollis Independent CC (Freedom of Expression Institute Amicus Curiae) is instructive.
When required to balance the right to freedom of expression, and the right to impart information in particular, against the rights of the copyright owner, the court held that “[c]aution should be exercised in elevating lofty pronouncements to guiding principles in ascertaining the intent and purport of the Act within our constitutional framework.” Consequently, the court found that the “constitutional challenge [to disseminate works in the public interest] is misconceived and should fail”, because, in part, it seeks to undermine “the sanctity of contract - pacta servanda sunt [and] negates the caveat subscriptor rule”.
Incidentally, although the court made no mention of the fact that the work in question, entitled Truth Be Told: Project Spear, was already freely available on YouTube and is, at the time of writing, still publicly accessible, one may wonder if this did not play a role in the court’s decision to describe the role of copyright as nothing more than an economic incentive.
Be that as it may, for the purpose of geo-blocking, the judgment in Vollenhoven suggests, in no uncertain terms, that no party has the right to exploit works protected by copyright unless it is sanctioned by the Copyright Act. The court made it clear that an appropriate balance between the public and private interests is maintained by the Copyright Act and that the public interest cannot be relied upon to authorise the circumvention of a contractual prohibition on the dissemination of the work. Therefore, it follows, that the commonly held belief that one may access content from anywhere in the world as long as it is paid for, will not survive judicial scrutiny. The primacy of contract, between the copyright owner and the licensee, as well as between the service provider and the subscriber, supersedes considerations of public interest.
In the case of website blocking, South African law is remarkably well equipped to deal with digital piracy and yet it has not been applied at all. One may well ask why this is the case? There is no reason to suppose that the risk of public opposition to website blocking has anything to do with the dearth of case law on intermediary liability for copyright infringement. There is also no sense in tolerating piracy in anticipation of legislative intervention that is unlikely to occur.
In this respect, both Australia and the United Kingdom have introduced statutory mechanisms in favour of website blocking orders. The plethora of subsequent case law illustrate that such measures do not encroach on the public interest in the case of copyright infringement and, notably, are also available in the case of trade mark infringement. However, despite several revisions of the Copyright Amendment Bill, the South African legislature has not sought to introduce a similar measure of protection. Consequently, a local website blocking order must, apparently, be sought by some circuitous application of the law that relies on facilitation or authorisation of direct copyright infringement and the mechanics of internet communication. Considering the risk, particularly after the judgment in Laugh It Off, that the court may be persuaded to refuse a blocking order in the interest of net neutrality, or some other interpretation of the public interest, it is little wonder that this cause of action has not been pursued.
However, the Electronic Communications and Transactions Act did not anticipate this state of affairs. On the contrary, an intermediary would only be indemnified against liability for damages if it engages in the act of facilitating the location of infringing content and takes the prescribed steps. The ECT Act does not offer a safe harbour for intermediaries against injunctive relief, at least in the case of piracy by facilitation, and specifically reserves the power of the courts to instruct an intermediary to prevent or terminate unlawful activity.
Clearly, and despite the perceived shortcomings of the Copyright Act, the ECT Act provides the facility for a website blocking order. And yet, this avenue has not been explored. Once again, public interest may be the devil in the detail. The increasing pressure on governments worldwide, in the interest of net neutrality, to avoid statutory interference with the free flow of information by means of the internet, suggest that IP rights may not be allowed to set a precedent for stricter policing of digital communications. However, the ECT Act makes it clear that the mere act, of placing restrictions on which communications one will accept, may not be opposed on the basis of the public interest, whether or not such communication is lawful.
In conclusion, when the public interest in digital copyright infringement proceedings is reviewed, two things are apparent.
First, it is futile to expect that the legislature may be persuaded to act in the interest of copyright owners while the required intervention is perceived as contrary to the public interest, particularly in relation to digital content. If foreign trends are anything to go by, the line between the public interest and the public opinion will become more indistinct. As a result, the likelihood that the South African legislature will act to curb online piracy seems more remote than ever.
Second, it is unnecessary, and indeed reckless, to suggest that copyright owners must abide the infringement of their rights in the digital environment for fear of offending the public interest. In fact, it is clear that the public interest may prove to be the sharpest tool at the disposal of copyright owners and that the confines of the Copyright Act should not be lamented but, instead, embraced.