1. “Empires of the mind are the empires of the future.

Countries which innovate or create intellectual

property are more likely to control the world in terms of trade in goods and services.” With the aid
of examples critically discuss the arguments for and against intellectual property.

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.

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

(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

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 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.

(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.
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, thought that 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.

(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. Secondly, developed countries refuse to allow traditional-

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 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.
2. Explain the difference between Copyright and Related or Neighbouring Rights.
3. With the aid of decided cases discuss the copyright concept that the idea of the author is not
protected, but only the expression of the idea is protected by copyright.

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.

Article 9 (2) of Trade Related Aspects of Intellectual Property Agreement (TRIPS) states that
copyright protection shall extend to expressions and not to ideas, procedures, methods of operation or
mathematical concepts as such.

Section 8 (3) of the Copyright and Performances Act states that Copyright shall not subsist in a
literary or musical work or in a computer program unless and until it is recorded in writing or in some other
form, and a reference in this Act to the time of making of such a work is a reference to the time at which it
is so recorded. This impliedly points to the fact that copyright does not protect the idea but the expression
of the idea.

Designer Guild Ltd v. Russell Williams (Textiles) Ltd-concerned an infringement of fabric design- 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 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.”

Donoghue v. Allied Newspapers Ltd- In explaining the copyright law principle that copyright does not
protect ideas but the expression of the ideas Farwell, J. stated:

a.) 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.

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 b.) `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.

c.) 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.

4. Chile is a well-known politician agreed to give an exclusive interview to Tusunge Newspaper about
politics in Zambia. The newspaper journalist, Ndimu wrote an article from the notes he took at the
interview with Chile. Ndimu showed the article to Chile. Ndimu published the article in Tusunge
Newspaper. Due to excitement the article raised among the Zambian community Ndimu wished to
publish the article in two other newspapers outside Zambia. Chile is not pleased with Ndimu and
Tusunge Newspaper decision to publish the article in the other two newspapers as he claims he owns
the copyright in the exclusive interview he gave to Tusunge’s Journalist Ndimu. Chile decides to
approach you for advise, knowing you are an expert in Intellectual Property Law. Please advise Chile
as to his copyright right, if any.

Idea vs Expression Dichotomy- Article 9 (2) of TRIPS, Section 8 (3) of the Copyright and
Performances Act- Designer Guild v Russell Williams Textiles- Donoghue v Allied
Newspapers (analogous to the facts in casu) 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 Chile; the ideas of all these stories, and in fact the stories themselves, were
supplied by Chile; 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 Ndimu and not Chile. Chile
was not the author, or even the joint author, of the articles in Tusunge Newspaper. If that be so, it
must necessarily follow that he cannot maintain this action.

5. The Copyright and Performances Rights Act require a work to be “original” before it can qualify for
copyright protection. With the aid of decided cases discuss what is meant by the term
“ORIGINALITY”.

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 Most copyright laws insist that a work has to be ‘original’ before it can qualify for copyright protection.
‘Unoriginal’ works do not have copyright. Section 8 (1) (a) of the Copyright and Performances Act
states that the products of creativity in which copyright may subsist are the following categories of
works: (a) original- (i) literary works; (ii) musical works; (iii) artistic works; or (iv) computer programs.
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 outlined under (b) to
(g). 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. Primary among these points
are the two basic concepts, namely:
(i) that the work must not be merely a copy of a previous work; (Not a copy) and
(ii) that the work is a result of the investment of individual skill, labour or judgment
(i) Not a Copy
University of London Press Ltd V. University Tutorial Press Ltd- 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.

Interlego v. Tyco Industries (The Lego Bricks Case)- For copyright to exist there must be
original work. Even though modifications are technically significant if they are not visually
significant they would not give rise to a new copyright. To hold otherwise would result in the
possibility that copyright in what was essentially the same work could be extended indefinitely
by merely making minor changes.

British Northrop Ltd v. Texteam Blackburn Ltd- 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.

(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

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 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.
MacMillan v. Cooper- 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 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.

Ladbroke (Football) Ltd v. William Hill (Football) Ltd- 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 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. 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.
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. In the present
case, if it is permissible to take into account all the skill, judgment and labour expended in
producing the respondents’ coupon, there can be no doubt that it is ‘original.’

British Leyland Motor Corp Ltd v. Armstrong Patents Co- the Court emphasised the need
for skill and labour as a condition for work to attract copyright.

G.A. Cramp & Sons Ltd v. Frank Smythson Ltd- 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.

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 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.

L.B. (Plastics) Ltd v. Swish Products Ltd- 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.

The USA, Canada and civil law countries require the work to possess some degree of creativity for it to
attract copyright protection. Thus based on a civil understanding the test of originality is that a copyright
must not be a copy and must have some modicum of creativity.

In the United States before the Supreme Court’s decision in the case of Feist Publications Inc. v. Rural
Telephone Service Co. Inc- The 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. Modicum of creativity entails
that there must be at least a little bit of creativity in forming the copyright. 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.

Tele-Direct (Publications) Inc. v. America Business Information Inc- 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.

6. There are two types of rights granted to the authors under copyright, namely the moral rights and
economic rights. Discuss the moral rights and economic rights granted to the authors under
copyright.

There are two types of rights granted to the authors under copyright, namely the moral rights and
economic rights. Article 27(2) of the Universal Declaration of Human Rights recognises that the

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creators of any scientific, literary or artistic production have both moral and ‘material’, or economic,
interests in their work which have a right to be protected. 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.

MORAL RIGHTS- P I D P R F

The Copyright and Performance Rights Act, does recognise moral rights.

Section 24 (2) of the Act provides that notwithstanding the transfer of the copyright, or any part of it, the
author or director of audio-visual 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 audio-visual works are accorded moral rights, while the owners of the entrepreneurial related
rights are not granted moral rights. 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- Found in Section 24 (2) (a) of the Copyright and Performances Act. 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. 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 paternity 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 audio-visual work. 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

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 subsist. 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. 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.
(ii) Integrity Right- Found in Section 24 (2) (b) of the Copyright and Performances Act. 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 audio-visual work. The right of
integrity draws its origin from article 6bis of the Berne Convention. 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?
Tidy v. Trustees of National History Museum- Ratte J held that 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. This case supports the objective test.
Snow v. Eaton Centre Ltd- ‘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. This case supports the subjective test.
Prise de Parole Inc. v. Guerin, Editeur Ltee- 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. This supports the fact that both considerations
are to be taken into account.
Like the paternity right, the 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. Furthermore, the right does not apply to works created by the

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 author in the course of employment or works made by the author on the commission of some
other person.
(iii) False attribution of a work- 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. 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 audio-visual 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 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.
(iv) Right to Privacy in Relation to Photographs and Films- It must be observed that the right
to privacy in relation to photographs and films is not included in the Copyright and
Performance Rights Act. A person who has commissioned the taking of a photograph or the
making of a film for private and domestic purposes has the right, where copyright subsists in
the resulting work, not to have copies issued to the public and that the work is not exhibited or
shown in public and that the work is not broadcast or included in a cable programme service.
While this right will serve to protect the privacy of the commissioners of such works, it will
also enable them to secure the exploitation rights to the works, even though copyright is
owned by the photographer or film copyright owners. In Mail Newspapers v Express
Newspapers (1987), the issue related to family photographs. A husband had granted
exclusive rights of publication to one newspaper following an accident to his wife and took
action to prevent another paper securing prints from the photographer. The issue related to
whether the wife had been a joint commissioner of the photographs. Today, the moral right to
privacy would enable the same exploitation.
(v) Divulgation Right- It must be observed that the divulgation right is not included in the
Copyright and Performance Rights Act. 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

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 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 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 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.

(vi) Retraction Right- It must be observed that the retraction right is not included in the Copyright
and Performance Rights Act. The retraction right is the right of the author to withdraw his
work from the publication because of changed opinion. 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.

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.

Duration and Transmission on Death- Section 24 (3) of the Copyright and Performance
Rights Act provides that moral rights shall expire on the death of the author or director of the
audio-visual work. Thus, author’s moral rights cannot be infringed when he is dead. 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 audio-visual work cannot waive his moral rights.

Remedies- Section 24 (4) (5) and (6) of the Copyright and Performances Rights Act.

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.

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Types of Economic Rights

(i) Reproduction Right- The right is provided for in Section 17 of the Copyright and
Performances Act. The right of the copyright owner to prevent others from making copies of his
works is the most basic right under copyright. Reproduction refers to the action of making a copy
or to the copy produced by the act of reproduction of a work protected by copyright. Section 2
Copyright and Performance Rights Act defines copying as a reproduction of a work or an
adaptation of a work, whatever the medium in which the reproduction is made or stored.
Reproduction of copyright works can be in any 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- Section 17 of the Copyright and Performances Act provides for this right.
The copyright owner has the exclusive right to translate the work. Translation is the expression of
a work in a language other than that of the original version. In Radji v. Khakbaz, 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

In Apple Computer, Inc. v. Mackintosh Computers Ltd, 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. Hugessen, J. stated: 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.
(iii) Adaptation Right- Section 17 of the Copyright and Performances Act provides for this 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

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 musical work for piano into one for full orchestra, or vice-versa. Section 2 of the Copyright and
Performance Rights Act defines ‘adaptation’ to include:
(a) in relation to any literary work an adaptation to 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.
In Sillitoe et al. v. McGraw-Hill Book Co. Ltd, 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.
(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. Section 44 of 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. In addition, the Act in Section 45 (1)
grants to a performer the right called the ‘performer’s right’ to exploit his performance by means
of recording, broadcast or inclusion in a cable programme service. 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, it was held that the question whether an
entertainment is given in public or in private depends, in my opinion, solely upon the character of
the audience. Further in Turner V Performing Rights Society it was held that the nature of the
audience, when properly understood in my opinion, puts the matter beyond doubt as to whether
the performance is public or not.

(v) Communication Right- Section 17 of 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. Section 2 of the Copyright and Performances Act
provides that ‘communication to the public’ of a work includes the performance, playing or
showing of the work in public. The right of communication to the public has been defined by the

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 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.” In Telstra Corporation Ltd v. Australasian Performing Right
Association Ltd- Can the transmission of music on hold by Telstra 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. 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.

(vi) Broadcasting Rights- Section 17 of 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. 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. Section 2 of 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, or other
information, embodied in a program 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 provided
by a material substance; or (iv) any member of the public actually receives the images or sounds;
Section 2 of the Copyright and Performances Rights Act "cable program" means the
aggregate of sounds, or of sounds and visual images, or other information, embodied in a
program as transmitted by a cable program service.

(vii) Distribution Right- Section 19 (e) of the Copyright and Performances Act provides for the
distribution right by making it an offence (copyright infringement) if anyone without the consent of

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 the owner distributes otherwise than in the course of trade or business to such an extent as to
affect prejudicially the owner of the copyright. This recognises that an owner has the right to
distribute his own property. 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. 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.

(viii) Rental Right- 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. Rental right is the making available for use of a work, for a limited and for direct or
indirect economic or commercial advantage. 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.

(ix) Right of Display- This right is not recognised in the Copyright and Performances Act.
Nonetheless, 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. The display right covers literary,
musical, dramatic and various artistic works as well as individual images of a motion picture or
other audio-visual 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.

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7. Mr and Mrs Chita who are celebrities based in Lusaka commissioned a professional photographer by
the name of Mano to take photographs of their newly born babies namely Cho and Chi. Mr and Mrs
Chita plans to sell the photographs of their babies to magazines both in Zambia and outside Zambia
so that they can raise the money to donate to various charities in Zambia. Mano without the consent
of Mr and Mrs Chita sells the photographs of Cho and Chi to Swangwapo Magazine for K2, 000,000
which intends to publish the said photographs in their magazine. Mr and Mrs Chita after finding
what Mano has done, decides to approach you for advise, knowing that you are an expert in
Intellectual Property Law. Please advise Mr and Mrs Chita as to their rights, if any, against Mano and
Sangwapo Magazine.

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. The right to privacy applies in the case of a photograph or film
which is in copyright. The photograph must have been taken only for private and domestic purposes.
It must have been commissioned. The right will not apply if a photographer took a photograph entirely
on his own initiative, or the subject of the photograph was included incidentally. In Mail Newspapers
Plc v. Express Newspapers 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. In the case of Douglas v Hello! It was held that they could not use
this right. The photographs of the celebrity wedding had been intended to be sold commercially.

The question is not clear as to what context the photos were taken in. If they were commissioned in a
domestic or private context Mr. and Mrs.Chita can invoke their moral right to privacy in relation to
photographs to prevent Mano and Sangwapo from further publishing the photos as per Mail
Newspaper v Express Newspapers. However, as already seen in the facts their intent was to have
commercial exploitation of the photos so as to raise money for various charities. Looked at from this
perspective it can be argued to say that then the commissioning of the photos was such that it was
done in a commercial setting, that being the case no copyright would subsist in Mr and Mrs Chita thus
no entitlement to invoke the moral right can exist. If taken in a commercial context the rationale in
Douglas v Hello! Will persist entitling the couple to no redress

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 In terms of remedies they would first have to exhaust the remedies prescribed in Section 24 (4) and
(5) of the Copyright and Performances Act before being able to institute proceedings as per
Section 24 (6) of the Copyright and Performances Act.

8. Discuss the differences between ‘Authorship’ and ‘Ownership’

9. Copyright Infringement requires that the plaintiff must prove that the defendant has
misappropriated his work. Discuss the elements that must be proved to show that copyright work
has been misappropriated.
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- 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. In Franklin Mint Corp. v. National Wildlife Art
Exchange Inc 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.

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. In short, to prove appropriation or copyright infringement in a work the plaintiff must prove
that:
(a) that there was copying in that the works are similar. Not identical but similar.

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 (b) the plaintiff’s work was created first, and
(c) the defendant had prior access to the plaintiff’s work, of which he must have availed himself.

Francis Day and Hunter v Bron (1963)- The composer of a song called ‘Why’ was alleged to have
infringed the copyright in another song, ‘Spanish Town’. The two songs were not identical and the
defendant claimed not to have consciously heard the plaintiffs’ song. Willmer LJ said: … in order to
constitute reproduction, within the meaning of the Act, there must be: (a) a sufficient degree of
objective similarity between the two works; and (b) some causal connection between the plaintiffs’
and the defendant’s work.

Subconscious copying and Intention of the infringer- There is copyright infringement where
someone unconsciously copies the work which is protected by copyright. In Francis Day and Hunter
v Bron (1963) it was held that copying need not be deliberate and that it may be subconscious. The
defendant claimed that he had never consciously studied the plaintiffs’ song, nor played it, but the
plaintiffs responded that given that the song had been extensively exploited in the US it was
overwhelmingly probable that he must have heard it and that the degree of similarity between the
works raised an inference of subconscious copying. On the facts, this argument failed; however,
Willmer LJ was prepared to recognise, first, the psychological possibility of subconscious copying
based on proof, or a strong inference of, de facto similarity arising from familiarity with the copyright
work. (It was this element that was lacking.) Secondly, he recognised that subconscious copying
might amount to copyright infringement because no element of mens rea is required for infringement.

The USA’s courts like the English courts have held that subconscious copying may be an
infringement. Thus, in Bright Tunes Music Corp v Harrisongs Music Ltd, 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.’

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

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 music cassette. Indirect copying, on the other hand, occurs where the work is presented in some form
other than its initial presentation.

Substantial Copying- Section 17 (7) of the Copyrights and Performances Act states that
copyright will be infringed by the doing of an act controlled by the copyright in a work which includes
the doing of that act in relation to a substantial part of the work. Section 2 of the Copyrights and
Performances Act defines "substantial part" to includes any part of a work which on its own can be
identified as a part of the work by someone who is familiar with the work. 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, 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. In Hager v ECW Press Limited- “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:
 the quality and quantity of the material taken;
 the extent to which the defendant’s use adversely affects the plaintiff’s activities and diminishes
the value of the plaintiff’s copyright;
 whether the material taken is the proper subject matter of a copyright;
 whether the defendant intentionally appropriated the plaintiff’s work to save time and effort;
 whether the material taken is used in the same or a similar fashion as the plaintiff’s.
Hawkes & Son (London) Ltd v Paramount Film Service Ltd, 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 4 minutes long, and the extract the defendants used was 20 seconds long
and comprised 28 bars. The defendant claimed that the 5% of the plaintiff’s work that had been
used was not “a substantial part’ of the work. The court disagreed with the defendant. 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.

10. 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
authorization.
Discuss the acts that are restricted or controlled under the Copyright and Performances Rights Act.

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11. Explain the differences between primary infringement and secondary infringement

There are two types of copyright infringement, namely primary and secondary 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, CDs or
videos or DVD without the consent of the copyright owner. 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. This requires an objective test.

The Copyright and Performance Rights Act enumerates a number of different types of secondary
infringement under

Section 19 of the Copyrights and Performances Act

Section 20 of the Copyright and Performances Act

Section 48 (2) and (3) of the Copyright and Performances Act

Section 49 (2) and (3) of the Copyright and Performances Act

12. Even though the copyright owner has the exclusive right to use and to prevent others from using his
work without authorization, copyright law permits people to do some acts in relation to the work
that are not restricted or controlled by the copyright owner. Explain the defences to copyright
infringement.
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. 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

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 copyright is extremely wide in scope and its term of protection is longer than any other
intellectual property rights. For example, in terms of copyright in literary, musical and artistic
work Section 12 (1) of the Copyrights and Performances Act grants protection of the
copyright for the life of the author plus 50 years. This creates a monopoly on copyright.

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.

1. CONSENT OF THE 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. Thus, copyright in a work is not infringed if
the owner of the copyright in the work expressly or impliedly authorised or consented to
the allegedly infringing act. In Mellor v. Australia Broadcasting Commission, 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 plaintiffs
had consented to the performance by the statements in its pamphlets. The Court agreed
with the defendant and dismissed the action. 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. 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, 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.

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 2. PUBLIC INTEREST- In Beloff v. Pressdram Ltd 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.

a.) Public Interest Defence regarding 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. Hyde
Park Residence Ltd v Yelland [2000] RPC 604, CA
Concerning: whether the public interest defence applied to copyright infringement
Facts: The day before Diana, Princess of Wales, and Dodi Al Fayed were killed in a
car crash, they had been recorded on video at a Paris property, with the time of their
arrival and departure displayed. Stills from the video were made and published in The
Sun newspaper to show that Mr Mohamed Al Fayed had lied about the duration of
the visit. When sued for copyright infringement, The Sun failed in the defences of
public interest and fair dealing for the purpose of reporting current events. Legal
principle: If 1
1information of interest contained within the work (the times of arrival and departure)
could have been made available without infringing copyright, publication would not be
necessary and the public interest defence would be unavailable.
b.) Public Interest Defence in breach of confidentiality actions
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 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 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. The courts will

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 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.

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, 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, Spy catcher.

3. FAIR DEALING- What is fair dealing? Fair dealing is an exemption in the Copyright and
Performances Act which allows you to use other people’s copyright material for the
purpose of research, private study, education, criticism, review or news reporting,
provided that what you do with the work is ‘fair’
Section 21 (1) (a) of the Copyright and Performances Act states that it shall not
constitute copyright infringement where there is fair dealing with a work for private study
or for the purposes of research done by an individual for his personal purposes,
otherwise than for profit; Section 21 (2) of the Copyright and Performances Act states
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. In Sillitoe v. McGraw Hill
Book Co Ltd 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.

Section 21 (b) of the Copyright and Performances Act states that it shall not
constitute copyright infringement when there is fair dealing with a work for the purposes
of criticism or review, whether of that work or any other work, provided there is a

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 sufficient acknowledgement; Section 21 (4) of the Copyright and Performances Act
states that "sufficient acknowledgement" means 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. In Sillitoe v. McGraw-Hill Book Co (UK) Ltd, the
court held that a sufficient acknowledgement must recognise the position or claims of the
author. Section 21 (2) of the Copyright and Performances Act, states that an act
which conflicts with the normal commercial exploitation of a work or that 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. In Ashdown v. Telegraph Group Ltd,
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.

Section 21 (c) of the Copyright and Performances Act states that it shall not
constitute copyright infringement where there is fair dealing with a work for the purposes
of reporting current events- (i) in a newspaper, magazine or similar periodical, provided
there is a sufficient acknowledgement; or (ii) by broadcasting or by inclusion in a cable
program service or by its use in an audio-visual work. Section 21 (4) of the Copyright
and Performances Act states that "sufficient acknowledgement" means 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. Section 21
(2) of the Copyright and Performances Act, states that an act which conflicts with the
normal commercial exploitation of a work or that 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.

4. JUDICIAL PROCEEDINGS- Section 21 (d) of the Copyright and Performances Act

states that it shall not constitute copyright infringement when the reproduction of a work
for the purposes 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.

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 5. READING AND RECITATION- Section 21 (e) of the Copyright and Performances Act
states that it shall not constitute copyright infringement where the reading or recitation in
public of any reasonable extract from a published literary work, provided there is a
sufficient acknowledgement. Section 21 (4) of the Copyright and Performances Act
states that "sufficient acknowledgement" means 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. In Sillitoe v. McGraw-Hill Book Co (UK) Ltd, the
court held that a sufficient acknowledgement must recognise the position or claims of the
author.

6. EDUCATION USE- What is the defence of education use?

a. Instruction and Examination

Section 21 (f) of the Copyright and Performances Act states that it shall not
constitute copyright infringement where the reproduction of a work for the purposes
of the education system of Zambia- (i) by a teacher or pupil in the course of
instruction, provided that the reproduction is not made by means of an appliance
capable of producing multiple copies; or (ii) as part of the questions to be answered
in an examination; or (iii) in answer to such questions. Section 21 (2) of the
Copyright and Performances Act, states that an act which conflicts with the normal
commercial exploitation of a work or that 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.

b. Performance, Play or Showing a work

Section 21 (g) of the Copyright and Performances Act states that it shall not
constitute copyright infringement where the performance of a dramatic work 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,
if the audience is 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.

7. INCIDENTAL INCLUSION- Section 21 (h) of the Copyright and Performances Act

states that it shall not constitute copyright infringement where there is the incidental

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 inclusion of a work in an artistic work, audio-visual work, sound recording, broadcast or
cable program. In Hawkes & Sons (London) Ltd v. Paramount Film Service Ltd, the
incidental inclusion defence failed because the twenty-eight bars of the march ‘Colonel
Bogey’ were included deliberately in the newsreel as background music. Section 21 (i)
of the Copyright and Infringement Act states that the publishing, broadcasting,
inclusion in a cable program service, or the communication to the public by any other
means of anything whose making was, by virtue of paragraph (h), not an infringement of
the copyright.

8. LIBRARY AND ARCHIVES- Section 21 (j) of the Copyright and Performances Act
states that it shall not constitute copyright infringement where the reproduction of a work
by a library or archive designated for the purposes of this paragraph by the Minister for
the purpose of making a copy of any item in the permanent collection of the library or
archive- (i) 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 (ii) in order to replace in the
permanent collection of another designated library or archive an item which has been
lost, destroyed or damaged. Provided that it is not reasonably practicable to purchase a
copy of the item in question.

9. COMPUTER PROGRAM- Section 21 (k) of the Copyright and Performances Act

states that it shall not constitute copyright infringement where the reproduction of a
computer program made from a copy of the program 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.

10. BROADCAST OR CABLE PROGRAM- Section 21 (L) of the Copyright and

Performances Act states that it shall not constitute copyright infringement where the
recording of a broadcast or cable program by an individual is for the purpose of allowing
the individual to listen to or view the broadcast or program at a time more convenient to
him.

11. Section 21 (3) of the Copyright and Performances Act states that copyright in a
literary, musical or artistic work is not infringed by an act done at a time when, or in
pursuance of arrangements made at a time when- (a) the work is of unknown authorship;
and (b) it is reasonable to assume- (i) that copyright has expired; or (ii) that the author
died fifty years or more before the beginning of the calendar year in which the act is done
or the arrangements are made.

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13. Explain the enforcement techniques and remedies available in copyright infringement.
14. Discuss the conditions that an invention must satisfy in order to be eligible for patent protection.
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. Section 2 of the Patents Act defines “invention” to mean
a solution to a specific problem in a particular field of technology and includes a product or a process.

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, it must be capable of industrial application and must fall
within the patentable subject matter.

Section 15 (1) of the Patents Act prescribes the conditions for patenting of an invention and
protection and it states that subject to section seventeen, which requires that a patent must fall in the
realm of a patentable subject matter a patent may be granted for an invention which satisfies the
following conditions: (a) it is new or novel; (b) it involves an inventive step; and (c) it is capable of
industrial application.
Section 15 (2) of the Patents Act states that a patent granted, which satisfies the conditions
specified in subsection (1) and this Act shall be protected for the period specified in section sixty-five.
Section 65 (3) of the Patents Act prescribes a protection period of 20 years from the filing date of
the application for the grant of a patent.

1. Novelty- Section 2 of the Patents Act states that “novelty” means the newness of an invention
both in form and function or performance.

Section 18 of the Patents Act states that an invention shall be considered new if it does not form
part of the state of the art immediately before the priority date.

Section 2 of the Patents Act defines “state of the art” to mean— (a) all matter, whether a product,
process or information about anything, which has been made available or disclosed to the public in
Zambia in tangible form or by written or oral disclosure or description, by use or in any other way,
prior to the lodging or priority date of the application for the grant of a patent; (b) matter contained in
an application for another patent which was published or became open to public inspection on or after
the priority date of that invention if — (i) that matter was contained in that application for that other
patent as lodged, published or opened to public inspection; and (ii) the priority date of that matter is
earlier than that of the invention; or (c) an invention used secretly but on a commercial scale within
Zambia.

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 Section 2 of the Patents Act states that the priority date means the cut-off date stipulated in Section
41 of the Patents Act. Section 41 (1) of the Patents Act states that the priority date of an invention,
to which an application for the grant of a patent relates, shall be the date on which the application was
first filed in the convention country.

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 the invention or the invention has been published,
performed or exhibited in public, before the date on which the application was first filed in the
convention country (effective or priority date.). Similarly, if there is an earlier patent application that
discloses the same invention and that patent is only published on the day that someone else makes
an application for the same patent, there is no novelty in 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.
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. However, Section 18 (2) of the Patents
Act provides exceptions to this by stating that the novelty of an invention shall not be destroyed if
disclosure:
(a) of the invention occurred within twelve months preceding the date of filing of the application for the
grant of a patent;
(b) was due to, or made in consequence of, the matter having been obtained unlawfully or in breach
of confidence by any person—

(i) from the inventor or any other person to whom the matter was made available in confidence by the
inventor or who obtained it from the inventor because the person or the inventor believed that the
person was entitled to obtain it;

or (ii) from any other person to whom the matter was made available in confidence by any person
mentioned in subparagraph (i) or in this subparagraph or who obtained it from any person so
mentioned because that person or the person from whom that person obtained it believed that such
person was entitled to obtain it;

(d) was made due to, or in consequence of, the inventor displaying the invention at an international
exhibition, recognised by the Agency, and the applicant states, on lodging an application for the
grant of a patent, that the inventor has notified, in the prescribed manner, that the invention has

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 been so displayed and, within the prescribed period and in accordance with any prescribed
conditions, files written evidence in support of the statement; or
(e) was to the public for the purpose of providing the result of a research undertaken by any
university, research institution or development institution, within six months preceding the date of
lodging an application for the grant of a patent.
2. 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. Section 2 of the Patents Act states that “inventive
step” means a feature of an invention that involves a technical advancement to existing
knowledge which makes the invention not obvious to a person skilled in the art. Section 19 of
the Patents Act states that an invention shall be considered to involve an inventive step if it is
not obvious to a person ordinarily skilled in the art, on the date of filing of the application for the
grant of patent or, where priority is claimed, on the priority date validly claimed. 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’.
3. 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. Section 2 of the Patents Act
states that “industrial application” means an application capable of being made or used in an
industry. Section 20 of the Patents Act states that an invention shall be considered to be
capable of industrial application if it can be made or used in an 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.
4. 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 patentable subject matter. 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.

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 mathematical 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

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 well as diagnostic methods; (vi) mere presentations of information; and (vii) computer software in
a certain limited context.

The Patents Act provides circumstances in Section 17 of the Patents Act under which a patent
application can be refused.
Despite section fifteen, a patent shall not be granted for any of the following inventions and the
invention shall be excluded from being protected as specified in section fifteen (2): (a) methods of
treatment of the human or animal body by surgery or therapy, as well as diagnostic methods,
except in relation to products for use in any of these methods; (b) plant or animal varieties or
essentially biological processes for the production of plants or animals other than non-biological
and microbiological processes and the products of such processes; (c) DNA, including
complementary DNA sequences, cells, cell lines and cell cultures and seeds; (d) the whole or part
of natural living beings and biological materials found in nature, even if isolated or purified,
including the genome or germplasm of any natural living being; (e) new uses of a known product,
including the second use of a medicine; (f) juxtaposition of known inventions or mixtures of known
products or alteration of the use, form, dimensions or materials, except where in reality they are
so combined or merged that they cannot function separately or where their characteristic qualities
or functions have been so modified as to produce an industrial result or use not obvious to a
person skilled in the art; (g) inventions which contravene or are inconsistent with public order,
public morality, principles of humanity and environmental conservation; (h) public health related
methods of use or uses of any molecule or other substance, whatsoever used, for the prevention
or treatment of any disease which the Minister responsible for health may designate as a serious
health hazard or as a life threatening disease; (i) an invention which is frivolous or claims
anything obvious or contrary to well established natural laws; or (j) an invention which is
traditional knowledge or is an aggregation or duplication of traditional knowledge.

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, 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 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

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 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.

15. Disclosure of the invention is at the centre of the patent system. Discuss why the Patent law or
system requires the inventor to disclose or describe his invention before it can be granted patent
protection.
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.

Section 32 (1) of the Patents Act deals with the disclosure and description of an invention and it

states that a complete specification shall— (a) describe the invention fully or in a manner sufficiently

clear, concise and complete for the invention to be evaluated, carried out, performed or worked on by

a person having ordinary skill in the art to which the invention relates; (b) disclose the best method or

mode known to the applicant of performing, working on or carrying out the invention; (c) end with one

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 or more claims defining the subject matter for which protection is claimed or sought; and (d) where

the invention relates to a chemical product or process, include a description of internationally

recognised chemical denomination of the claimed product or of the product obtainable by the claimed

process.

Biogen Incorporation v. Medeva Plc [1997] RPC 1- The need for disclosure of the invention was

considered by the House of Lords. 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. 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

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 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.

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. 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.

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 “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. 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.”

16. The Patents Act allows interested individuals to oppose the grant of a patent to a patentee.
Therefore, any person interested, including the state may within three months from the date of
publication of the patent application make a written notice to the registrar to oppose the grant of
the patent. Discuss any four grounds upon which the grant of a patent can be opposed.

Section 56 of the Patents Act provides for opposition to the grant of a patent. It states that a person,

including the State, may oppose the grant of a patent at any time, within a period of three months

from the date an application for a grant of a patent is advertised, or within such further period as the

Registrar may allow, and before the sealing of the patent, by filing a written notice of opposition to the

Registrar, stating any of the following grounds:

(a) that the applicant is not entitled in accordance with section twenty-three, to make an application

for the grant of a patent; that is that the applicant is not the inventor, an assignee of the person

claiming to be the inventor; a legal representative of the inventor or assignee; two or more persons

who claim to be the inventors, or a successor in title to an inventor or assignee

(b) that the person making the application or the person through whom the applicant claims an

invention, wrongfully obtained the invention or any part of it from the person opposing the grant;

(c) that an invention claimed in a complete specification is also claimed in another complete

specification published on or before the priority date of an applicant’s claim and filed in pursuance of

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 an application for a grant of a patent and has a priority date which is earlier than that of an applicant’s

claim;

(d) that an invention claimed in a complete specification is not new as it was publicly known or

publicly used in Zambia or elsewhere before the priority date of that claim;

(e) that an invention claimed in a complete specification is obvious and does not involve any inventive

step;

(f) that the subject matter of a claim in a complete specification is not an invention, is not patentable

or is excluded from patent protection in accordance with this Act;

(g) that an invention claimed in the complete specification does not have any industrial use or

application;

(h) that the complete specification does not sufficiently describe the invention and the best method or

manner in which it is to be performed; full disclosure of the invention has not been carried out

sufficiently.

(i) that, the claims in the complete specification do not sufficiently define the subject matter for which

protection is sought;

(j) that an invention described in a complete specification is not the same with the one described in a

provisional specification;

(k) that in the case of a convention application, the application was not made within twelve months

from the date of the first application for protection of an invention made in a convention country by the

applicant or a person from whom the applicant derives title;

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 (l) that the complete specification does not disclose or wrongly mentions the source or the

geographical origin or biological material used for the invention;

(m) that an invention claimed the complete specification is anticipated, having regard to the

knowledge, oral or otherwise, available within any traditional community in Zambia or elsewhere;

(n) that the application is frivolous in that it claims an invention which is contrary to well established

natural laws;

(o) that the use of the invention would be contrary to law or morality;

(p) that the application for the grant of a patent contains a material misrepresentation or a false

statement which the patentee knew of at the time when the declaration was made;

(q) that the application for a grant of a patent is in contravention of the rights of the person giving

such notice or of any persons under or through whom the person claims;

(r) that an application for the grant of the patent does not satisfy the requirements of this Act;

or (s) that the application is for an invention which is traditional knowledge.

17. Discuss the three elements that have to be proved in order to establish patent infringement.

Patent Infringement occurs if a validly patented product or process is exploited without the patentee’s

consent in the absence of a valid defence. In order to establish infringement, the proprietor of the

patent must prove the following three elements.

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 A.) Carrying out of Prohibited Act- The proprietor of a patent enjoys the exclusive right to exploit

the patent. Section 72 of the Patents Act states that a patent gives the patentee the following

exclusive rights, during the term of the patent:

(a) The right to exploit the patented invention and authorise the exploitation of the patented invention

by others.

(b) where the patented invention is a product, to prevent any person, without the patentee’s consent,

from making, using, offering for sale, selling or importing the patented product;

(c) where the patented invention is a process, to prevent any person, without the patentee’s consent,

from using, offering for sale, selling or importing the product obtained directly from the patented

process; and

(d) to assign, transmit or licence the patent

Prohibited acts 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.

Section 75 of the Patents Act provides for exceptions to the exclusive rights that are granted in

Section 72 of the Patents Act

B.) 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.

C.) Prohibited act must be in relation to a product or process falling within the scope of a

claim of the patent- The third element in establishing infringement is one which is often the decisive

point in any patent litigation. 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. Section 33 (2) of the Patents Act states that a claim contained in an application for a grant

of a patent shall— (a) define the subject matter of the invention for which the protection is sought; (b)

be clear and concise; (c) be supported by the description of the invention or based on the matter

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 described in the specification; and (d) relate to one invention only or to a group of inventions which

are so linked as to form a single inventive concept. The extent of the protection conferred by a patent

shall be determined by the claims. The meaning of the claims is ultimately interpreted by the courts.

Catnic Components Limited v Hill and Smith Limited [1982] RPC 183 - 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. It was held

that 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 no material effect upon the way

the invention worked.

Improver Corporation v. Remington Consumer Products Limited [1990] FSR 181- 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 device with the same end goal 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.

Legal principle- The court should ask itself the following three questions:

1. Does the variant have a material effect on the way the invention works? If yes, the variant is

outside the claim (and does not infringe). If no?

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 2. Would this (i.e. 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. 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.

Note: The court followed Catnic and the reformulation of the Catnic questions set out by Hoffmann J

in Improver Corp. v Remington Consumer Products Ltd, involving the same devices.

18. A trademark is any sign that is capable of distinguishing the goods or services produced by one
enterprise from those of another. Deriving from the above definition discuss the four main functions
that a trademark generally performs.

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. Section 2 of 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, whether with or without any indication of

the identity of that person.

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 Section 337 of the Penal Code Act defines a trade mark as 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 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

enterprise 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. Thus trademarks provide an indication of source. 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.

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

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 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.

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’.

19. Discuss the two grounds upon which a trademark may be refused registration by the Registrar of
Trademarks.
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:

(a) Signs or marks which are not trademarks- Signs which do not satisfy the requirements of

Section 2 of the Trademarks Act, may not be registered.

(b) Lack of distinctiveness- The primary requirement of a trademark is that it must be able to

distinguish the products of one enterprise from another. 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. A trademark will be deemed to lack distinctiveness and hence registrable if it is devoid

of distinctive character. In Unilever Limited’s Trademark, a red stripe in toothpaste was not

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 registrable as the device was held to be too simple to be distinctive. Also in AD 2000 Trademark,

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.

(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. A descriptive mark describes the goods or services in question, and so

cannot distinguish the goods or services of one undertaking from those of other undertakings, for

it is applicable to all such goods. In Unilever Plc’s Trademark 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.

(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.

(e) Deceptive Marks- Deceptive marks are marks that mislead the consumer as to the origin of

goods and services. 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. Section 16 of 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. Pound Puppies Trademark- Aldous J did not

take the view that the public would be confused by the mark “Pound Puppies” as to the cost of the

goods (soft toy dogs), nor would they suffer any detriment as the toys could only be purchased at

the true price. The word pound in the mark was a dog pound and not the fact that the toys cost

one pound or the fact that the vendors pledged, for each sale, to donate a pound to the Guide

Dogs for the blind association.

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 (f) Trademarks offending public morality- Section 16 of the Trade Marks Act prohibits the

registration of a trademark, which would be contrary to law or morality. In Re Hallelujah

Trademark- 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. However, in Re La Marquise Footwear Incorporation’s Application- 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- 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. Imperial Group Limited v. Phillip Morris and Company Limited- The plaintiff

endeavored to register the trade mark "MERIT" for cigarette products, but was unable to do so on

the grounds that the trade mark was too descriptive. Instead, it registered the mark "NERIT",

without any intention of using the mark, but in order to prevent other traders from using the mark

"MERIT" because it would be considered too similar to the registered mark "NERIT". The

intention was to obtain a de facto monopoly over the unregisterable mark "MERIT". The

defendant began using the mark "MERIT" for cigarettes and was sued by the plaintiff for infringing

its mark "NERIT". The court struck down the registration for "NERIT" on the basis that the plaintiff

had no genuine intention to use the mark (despite some "trivial and insubstantial" efforts at

launching a NERIT-branded product).

(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

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 such as the Red Cross Sign. Similarly, words such as ‘the President’, ‘Republic’ or ‘Zambia’, are

not allowed to be registered. 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. 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.

RELATIVE GROUNDS FOR REFUSAL

Section 17 of the Trademarks Act prohibits the registration of a trademark that is identical and

resembles the earlier trademark. Therefore, Section 17 (1) of the Trade Mark Act states that 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.

Trade Kings Limited v. The Attorney General- 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 trademarks. In determining

whether YEBO as a trademark would if registered conflict with registered trade mark EBU,

Silomba, J. stated: The test to be used 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

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 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 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.

Trade Kings Limited v Unilever Plc, Cheesebrough Ponds (Zambia) Limited, Lever

Brothers (Private) Limited and Lever Brothers (Zambia) Limited- In Trade Mark cases, it

must always be kept in mind that the actual issue is not whether or not the Judge would or would

not have personally been deceived, but whether or not after hearing the evidence, comparing the

articles, and having had all the similarities pointed out, the true conclusion is that the ordinary

average customer or retail dealer is likely to be deceived.

20. Discuss the basic requirements for a passing off action and the remedies for a passing off action.
Nobody has any right to present their goods as the goods of somebody else. How can this be

prevented? Through passing off, what then is passing off? Passing off is an attempt by trader B to

take advantage of the goodwill established by trader A, to the detriment of trader A. Passing off is a

common law tort which can be used to enforce unregistered trademark rights. Section 7 of 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.

Basic Requirements for a Passing Off Action

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 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 (1842) 49 ER 749 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.’

The basic requirements for a passing off action were laid down in the case Erven Warnik Besloten

Vennootschap v. J Townend and Sons (Hull) Limited [1979] AC 731 (Advocaat Case) 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 [1990] 1 RPC 341 (the Jif Lemon case) -

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.

What is goodwill? Goodwill is a key element in an action for passing off. Therefore, where goodwill

is missing, it is very difficult to prove passing off.

Scandecor Development AB v Scandecor Marketing AB [1999] FSR 26 at 41 Lord Macnaghten

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 business 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.

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 What is a 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.

There must have been a false representation, intentional or unintentional, coming from the defendant,

either verbally or by use of a name, get-up or logo which causes confusion in the mind of the

customer or potential customer.

What is 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. Being unable to register your name as a company or domain name, diversion of business,

damage to reputation, exposure to litigation or erosion of the mark can all amount to damage.

What are the remedies to passing off? 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.

21. Discuss the three elements required to establish the action for breach of confidence as laid down in
the case of Coco v AN Clark (Engineers) Limited.

22. Discuss the four conditions that a design must satisfy in order to qualify for registration as designs.
23. Not every design qualifies for registration even when it satisfies the requirements for registration.
Discuss why the “eye appeal” is important in the registration and protection of a design.

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24. Not every design qualifies for registration even when it satisfies the requirements for registration.
Discuss the designs that may be disqualified for registration as designs under the Registered Designs
Act.

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