In the recent case of Philanthropic Collection (Pty) Ltd v Girls & Boys South Africa, the Johannesburg High Court had to decide, among other things, whether the transacting parties shared joint ownership of the copyright subsisting in the database of donors for Philanthropic Collection (Pty) Ltd's 2015 SleepOut charity event.
Philanthropic learned that Girls & Boys South Africa (G&B) – the sole beneficiary of the 2015 SleepOut charity event owned, organised and promoted by Philanthropic – was using the SleepOut database to solicit donations for an unrelated fundraising campaign of its own, as it was not a beneficiary for the 2016 and 2017 SleepOut events.
Philanthropic claimed that it was the sole owner of the copyright subsisting in the database, which had been created specifically for its SleepOut event. As such, Philanthropic approached the Johannesburg High Court on an urgent basis for, among other things, an interdict restraining G&B from reproducing, adapting, accessing or using the database without its authorisation. Conversely, G&B contended that the parties owned the database jointly and that it was therefore entitled to use it.
Creation of database
Donors of the SleepOut event had been required to register on Philanthropic's website, after which their personal information was automatically transferred to an electronic database. Philanthropic's website had a credit card payment function for donors to donate money, but some preferred to donate via electronic fund transfer (EFT). As the EFT function was not built into Philanthropic's website, G&B's employee (Veldman) drafted a form for donors who wanted to pay via EFT to provide their personal information, which Veldman subsequently manually input into Philanthropic's electronic database.
G&B held that it had joint ownership of the copyright subsisting in the database by virtue of the fact that, through its employee, it had:
- drafted a form for donor entities to pay by EFT; and
- manually input the donors' personal information into Philanthropic's electronic database.
After an extensive examination of the issue of copyright ownership, the court found that electronic databases are categorised as 'literary works' under the Copyright Act. Thereafter, the court had to determine whether the literary work at issue was original and thus eligible for copyright protection.
The court held that a work is original when it is "not copied from an existing source and if its production required a substantial degree of skill, judgement or labour". The court examined the requirement of originality and the question of ownership and found that Veldman's donor form failed to meet the test for originality under South African law as he had not applied a "substantial amount of skill, judgment, labour" to the database.
The court warned against overextending the definition of an 'author' in the law and held that "the definition of an author has to be considered in the context of the whole event, the role of the parties during the event, the innovation and its purpose". In this case, the court held that although G&B's employee had manually captured the particulars of donors wanting to donate via EFT on Philanthropic's electronic database, the purpose behind G&B's conduct was not to create a database for G&B to solicit donors; rather, it was merely an act to add to Philanthropic's existing database for purposes of the SleepOut event.
The court further found that:
- the database would not have existed without the SleepOut event; and
- G&B had relied on the concurrence of Philanthropic to capture the data that it claimed to own.
In view of the circumstances, the court ruled in Philanthropic's favour and held, among other things, that G&B did not have joint ownership of the copyright subsisting in the database.
This case should have IP owners questioning where the ownership in the copyright subsisting in any original and protectable work that has arisen in the course of a partnership or joint venture truly lies. Copyright owners enjoy monopolistic rights which preclude others from, among other things, reproducing, adapting or using a work without their authorisation. As such, parties to a partnership or joint venture can fall short if they do not ensure that they have secured the ownership rights that they ought to have.
The lesson to be learnt from this case is that it is advisable to have a written agreement in place with any third party that contributes towards creating or developing a work that is eligible for copyright protection. This will enable IP owners to confirm where the ownership of their copyright vests and ensure that they do not get caught out.
For further information please contact Zama Buthelezi or Koketso Molope at KISCH IP by telephone (+27 11 324 3000) or email (firstname.lastname@example.org or email@example.com). The KISCH IP website can be accessed at www.kisch-ip.com.
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