Roux de Villiers
BEng MEng (Electronics) LLB
Jan S de Villiers & Son Attorneys, Cape Town
Introduction | Works protected | Ownership of copyright | Ownership of web site | Duration of copyright | Moral rights | Scope of copyright | Copyright infringement on the Internet | Internet copyright problem areas | Remedies for infringement | Author biography
1. Introduction

The development of the Internet was seen by many as the beginning of the end for intellectual property rights.1 Original users of the Internet were mostly from the government sector and universities: lecturers and students. They were not using the Internet as a source of income, but to disseminate and acquire information. The Internet was an amazing free-for-all communication medium allowing people to express their views and opinions to the whole world and allowing perfect, low-cost reproduction of any information or work on an unprecedented scale. Inevitably the economic potential of the Internet was realised by big business and regulation of the Internet had to follow. Predictably technology is too fast for the law in this area.2 The main problem is the international character of the Internet. Intellectual property regulation is based nationally. Each country has its own laws regulating copyright, trademarks, patents, designs and trade names, but anyone who publishes on the Internet could be infringing intellectual property rights (or other rights and laws) anywhere in the world. The very nature of the Internet will therefore force world governments to standardise law, not only in the intellectual property field, but also elsewhere. But that still lies in the future. At present international relationships in the intellectual property area in South Africa are governed by several international conventions and agreements, most notably the Berne Convention on Copyright,3 the Paris Convention4 and the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) in respect of copyright, trademarks and patents. These conventions and especially the TRIPS agreement make some enforcement of intellectual property rights across borders possible by forcing signatories to grant protection to foreign works through the amendment of their domestic legislation. However, all these conventions and agreements were concluded before the Internet became the force it is today and they therefore do not address the unique problems arising from it.

Get the Berne Convention at
http://www.law.cornell.edu/treaties/berne/overwiev.html

Get the Paris Convention at http://www.cpo.cn.net/p37eb.htm

Get the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) at http://metalab.unc.edu/pub/academic/political-science/gatt/27.txt

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Recent attempts to make intellectual property law more uniform include the European Commission Green Paper Copyright and Related Rights in the Information Society, published in July 1995, and the Report on Intellectual Property Rights published in September 1995 in the USA by the US Administration’s Information Infrastructure Task Force. The initiatives taken by the USA and Europe finally culminated in two treaties being concluded under the auspices of the World Intellectual Property Organization (WIPO) on 20 December 1996. These treaties will however only come into force after the member countries – South Africa being one – ratify them by depositing instruments of ratification.5

Get the EU Green Paper Copyright and Related Rights in the Information Society at http://europa.eu.int/en/record/other/istocen.htm

One of the two WIPO treaties finalised is the WIPO Copyright Treaty, which is based on the Berne Convention and concerns the protection of literary and artistic works. Its scope is therefore similar to article 2 of the Berne Convention and extends to “expressions and not ideas, procedures, methods of operation or mathematical concepts as such”.6 The Copyright Treaty introduces an exclusive general right of distribution of copies of a work by its copyright owner.7 The Agreed Statements concluded simultaneously with the WIPO Treaties elaborate by stating that this right applies only to “fixed copies that can be put into circulation as tangible objects”. This apparently does not include distribution via the Internet.

Get the WIPO Copyright Treaty at
http://cdcc.kcaf.or.kr/wipo_copye.htm

The Copyright Treaty also introduces a general right of communication of a work by the copyright owner. This explicitly excludes distribution of works and explicitly includes interactive on-demand acts, which would cover the downloading of files and the viewing of content on a web site. The Agreed Statements provide that the mere provision of physical facilities for enabling or making a communication does not amount to communication. This means that bulletin board operators and network operators will not be liable for copyright infringement in respect of the works they store.8

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Until ratification of the WIPO treaties South Africans will however have to make do with existing South African legislation to deal with Internet-related problems. This includes the Copyright Act 98 of 1978, the Trade Marks Act 194 of 1993, the Patents Act 57 of 1978 and the Designs Act 195 of 1993. Although the Internet can simply be seen as another medium of communication, it does present unique problems, and most of the above-mentioned legislation was not drafted for the digital age.

Copyright is probably the intellectual property right most threatened by the Internet.9 The digitisation of works, including written text, graphics, photographs, drawings, music and video clips, has made the copying and distribution of such works virtually effortless, instantaneous and perfect, and it can be done at minimal cost. The fact that technology makes it easy to copy does not mean that a copyright holder forfeits his/her copyright by placing work on a web site or by someone else placing such work on a web site.10 By making his work available on a web site, the copyright holder must however be implicitly granting a non-exclusive licence to all web users who have access to the material, to make transient copies of such work on their computers. This follows of necessity, because the computer of a web user accessing the pages of the web site, where such work is made available, must download a copy of such work onto its random access memory (RAM) in order to display a copy of its contents on the computer screen.11 Where a user gains access to material without proper authorisation, it could be argued that such unauthorised access results in copyright infringement, because the RAM copy falls outside the scope of the implicit licence. This might be applicable to material on a web site to which only subscribers have access, but not to material available to the general public.12

Burk Proprietary Rights in Hypertext Linkages (1998) at http://itc.law.warwick.ac.uk/jilt/intrap/98_zburk/

Technology itself would be the best way to protect copyright on the Internet. Technological developments are underway to control copying and downloading, but until such developments are complete the law is the copyright holder’s only recourse. In South Africa copyright protection is afforded solely under the Copyright Act.13 No protection of copyright exists in terms of the common law, as can be seen from the Copyright Act, which expressly states that no copyright or right in the nature of copyright shall subsist other than by virtue of the Act or some other enactment.14

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Dean defines copyright as:

“the exclusive right relating to work embodying intellectual content (i.e. the product of the intellect) to do or to authorize others to do certain acts in relation to that work, which acts represent in the case of each type of work, the manner in which that work can be exploited for personal gain or profit”.15
This means that copyright gives its owner exclusive rights to control, use and exploit the copyrighted work or parts of it for personal gain, profit or otherwise. Copyright consists of various aspects, each of which may be owned by a different person, or may be licensed by way of an exclusive or non-exclusive licence to people other than the copyright owner. A licensee does not obtain copyright in the work, but only the right to use and exploit it in a specific manner as described in the licence and only for the duration of the licence. As soon as the licence terminates such exploitation rights revert to the copyright owner.
2. Works protected

Works protected in terms of the Copyright Act16 are specifically listed17 and defined18 in it. Broadly speaking the Copyright Act recognises that the following types of works are eligible for protection:

  • literary, musical and artistic works
  • sound recordings, cinematographic films, sound and television broadcasts and programme-carrying signals
  • published editions
Computer databases, including tables and compilations of data, are protected as literary works in terms of paragraph (g) of the definition of a literary work in the Copyright Act.
 
Internet web sites are generally multimedia products containing written texts, graphics, photographs, drawings, sounds, cartoons, computer programs and possibly even video clips, all of which may be subject to copyright. The most important categories of works for the purposes of the Internet are therefore
literary works, artistic works, musical works and computer programs.

It should further be noted that a web site could be seen as a computer program. A computer program is defined as a set of instructions, fixed or stored in any manner and which, when used directly or indirectly in a computer, directs its operation to bring about a result.19 This very wide definition would include even the simplest web page in its HTML form because each HTML page on a web site consists of text containing instructions for users’ computers. A user’s
computer will act according to such instructions by formatting the page on its screen and fetching components from other computers. The final product would be obtained by reassembling the components of the page on the user’s computer.20 The HTML text is commonly called source code, which is well known to computer programmers as the term for a computer program’s code. Other computer languages are sometimes used (e.g. Java Script, Active X, DHTML, TIF and PNG) in order to provide instructions and these are not distinguishable from computer programs. This means that all the exclusive acts applicable to the owner of copyright in a computer program should also apply to the proprietor of a web site, especially as regards the design, layout and construction of the web site and the program language code itself. However, it is probably not applicable to the actual content displayed on the web site.

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In order for a work to qualify for copyright it must be original,21 meaning that the work should not be copied from other sources, but should be the product of the author’s own endeavours.22 Facts in themselves are therefore not subject to copyright.
 
Copyright only comes into existence when a work has been written down, recorded, represented in digital data or signals or otherwise reduced to a material form,23 except in the case of a broadcast or a programme-carrying signal, which must have been broadcast or transmitted by way of satellite.24 From this definition it is clear that the content of a web site as represented on a computer screen will be copyrightable, provided that it meets the other criteria for copyright, because such content is represented by way of digital data or signals.
 

Copyright protects the expression of ideas but not the ideas themselves.25 Copyright furthermore does not subsist in a work unless the author is a qualified person in terms of the Copyright Act, where a qualified person is defined as:

“(a) in the case of an individual, a person who is a South African
resident who is domiciled or registered in the Republic; or
 (b) in the case of a juristic person a body incorporated under the
laws of the Republic.”26

Should the author not be a qualified person, copyright may also be conferred in terms of section 4(1), provided that the work was first published in the Republic, or in the case of a broadcast was first made in the Republic, or in the case of a programme-carrying signal was first emitted to a satellite from a place in the Republic.

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The operation of the Copyright Act has been extended by proclamation27 in terms of section 37 to all countries that are members of the Berne Convention, which are listed in a schedule to the proclamation.28 References in the Copyright Act to the Republic should therefore be interpreted in this light. Although the Berne Convention applies only to literary and artistic works, the proclamation applies to all classes of works defined in the Copyright Act.
 
Therefore copyright, unlike trademarks, does merit a degree of international protection in member countries of the Berne Convention. The fact remains however that such protection differs from country to country and is dependent on the copyright legislation of each separate country. The listed countries comprise most of the European Union, including the United Kingdom, and the United States, which became a member of the Berne Convention in 1989.
3. Ownership of copyright
Section 21 of the Copyright Act determines the ownership of copyright in a work. Normally ownership is conferred on the author of the work.29 There are however a number of exceptions to this general rule:
  • Subject to sections 21(1)(b) and (c) of the Copyright Act, an employer shall be the owner of all copyright in a work made by an employee in the course of employment with that employer.30
  • In terms of section 21(1)(b) copyright in a literary or artistic work made by an employee in the course of employment with the proprietor of a newspaper, magazine or similar periodical, for the purpose of publication in it, vests partly in the proprietor and partly in the author. The proprietor shall be the owner of copyright in such work in so far as it relates to its publication in such newspaper, magazine or periodical and the reproduction of the work for such purposes. In all other respects the author shall remain owner of the copyright.
  • Section 21(1)(c) provides that a person who commissions a photograph, drawing, portrait, gravure, cinematographic film or sound recording, and pays or agrees to pay for it, shall be the owner of any copyright subsisting in such work, subject to the provisions of section 21(1)(b) discussed above.

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In our opinion a web site will not be seen as a newspaper, magazine or similar periodical unless it is operated and managed as such, in which case its being in an electronic rather than a printed medium should not prevent its inclusion. We believe that functionality should prevail, rather than the medium used. Clearly users accessing a web site are able to make printed copies of the contents of the site should they wish to do so. This means that section 21(1)(b) could apply to the contents of certain web sites, especially so-called “news sites”.
 
The Copyright Act31 provides that an agreement can alter the operation
of section 21. Proprietors of web sites should make use of this opportunity to ensure that they own as much as possible of the copyright in the works placed on their web sites. Content on a web site may come from a number of sources, including external developers, programmers and consultants as well as internal employees. The web site proprietor should therefore secure assignment of copyright from third parties and from its employees. The same applies to the design of the web site, which is often outsourced to a third party service provider.
4. Ownership of a web site
A web site consists of various elements, the most important being its design and contents.32 Ownership of a web site is largely dependent on who owns the intellectual property rights. Copyright in the design and contents obviously forms a large part of such intellectual property, together with ownership of the domain name and trademarks connected to the site. Problems in respect of ownership occur when the proprietor, the persons who provide content for the web site, the web site programmer who translates such content into HTML language, the host of the site and the web site designer are all separate from each other.33 In the absence of an agreement to the contrary, section 21 of the Copyright Act regulates where copyright would vest in such a situation.

The designer, as author of the graphic outlay (or “look and feel”) of a web site, is the owner in terms of section 21(1)(a), unless the designer is in the employ of the proprietor, in which case section 21(1)(d) or (b) will apply. If section 21(1)(b) applies the proprietor is the owner of that part of the copyright in the design, which will allow it to use the design for publication in a newspaper, magazine or similar periodical. The nature of the web site as well as the purpose for which the work was created will be crucial to the applicability and result of the application of section 21(1)(b). Should this section not apply where an author is in the employ of the proprietor, it follows that section 21(1)(d) must be applicable, in which event the proprietor will be the owner of the design.

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A similar argument can be made in respect of the web site programmer, who is often, but not always, the same person as the web site designer. He/she is the author of the HTML or JavaScript program, which provides the instructions for the viewer’s computer to reassemble the web site on its screen and will therefore be the owner of the copyright in such program, unless section 21(1)(b) or (d) applies.

Copyright is similarly determined in respect of the original content of a web site, although the ownership of commissioned content may in some cases also be determined by section 21(1)(c). Content may also be obtained for the site from third party contributors, either by way of licence or assignment. If the web site host is the entitled party in the agreement with such third party contributors, the host will be entitled to use such third party content, unless he/she cedes such rights to the proprietor. The proprietor should therefore ensure that he/she is the entitled party in terms of such licence agreements or obtain the necessary cession from the host, preferably in anticipando.

Hoffman Who owns the copyright in your web site? (1998) at http://home.earthlink.net/~jvanlove/website.html

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5. Duration of copyright
The Copyright Act fixes the term of copyright conferred on works by the Act.34 Generally speaking the period of copyright is 50 years from the end of the year in which a work is first published. However in the cases of literary, musical and artistic works other than photographs, copyright exists during the entire lifetime of the author and for a further 50 years thereafter. If there are joint authors, the duration of copyright is linked to the last death of any identifiable author. However, if none of the following occurred in respect of such a work or an adaptation of it during the lifetime of the author(s), copyright in the work shall continue to exist for 50 years from the end of the year in which any of the following occurred for the first time:
  • publication
  • public performance
  • offer for sale to the public
  • broadcasting35
In respect of cinematographic films, photographs and computer programs, copyright lasts for 50 years from the end of the year in which the work is first made available to the public with the consent of the owner of the copyright, or is first published, whichever is the later. However, should the work not be so published or made available within 50 years, copyright comes to an end 50 years from the end of the year in which the work was made.36
 
Copyright in a broadcast and programme-carrying signal subsists for a period of 50 years from the end of the year in which it was first broadcast or emitted to a satellite.37
6. Moral rights
The Copyright Act provides that, notwithstanding the transfer of the copyright in a literary, musical or artistic work, a cinematographic film or a computer program, the author shall have a right to claim authorship of the work and to object to any distortion, mutilation or other modification of it, where such action is or would be prejudicial to the honour or reputation of the author. The author of a computer program or a work associated with the computer program may however not prevent or object to modifications which are absolutely necessary on technical grounds or for the purposes of commercial exploitation of the work.38
 
The most important elements of moral rights appearing from the Copyright Act is the paternity right, which is the right to be identified as author of the work, and the integrity right, which is the right to object to derogatory treatment of the work.39 Moral rights cannot be assigned, but may be waived by the author of a work. Any infringements of the provisions of this section 20 of the Copyright Act shall be treated as an infringement of copyright for the purposes of the Act and the author shall be deemed to be the owner of the copyright in question.40

Moral rights are especially important when an adaptation of a work is made for publication on a web site. It follows from the provisions of the Copyright Act that the moral rights of an author will be infringed when the work is used without his/her approval and the author is not acknowledged as author or the work is distorted, mutilated or modified in such a way as to be prejudicial to the author’s honour or reputation. It is therefore advisable to acknowledge authors of work and to get the author’s prior approval before using an adaptation of a work.

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7. Scope of copyright
The Copyright Act defines the scope of copyright in respect of the different categories of works provided for in section 2(1).41 In essence copyright is the right to prevent others from doing the acts designated in respect of each category of work as being the copyright owner’s exclusive prerogative. The copyright owner has the monopoly to do or authorise these so-called “restricted acts”. Restricted acts differ between different categories of works. The essence of the rights set aside for the copyright owner is the prevention and monopolisation of the copying of such works and their commercial exploitation.42
 
Copyright is also infringed by doing any of the restricted acts in relation to the whole or a substantial part of the work.43 The test for substantiality relates primarily to quality and not to quantity.44 Unauthorised copying of small but essential parts of a work therefore constitutes copyright infringement.45 The degree of similarity between the original work and the alleged infringing copy will however normally be decisive.46

A number of statutory limitations on the scope of the exclusive rights, which provide a defence to the charge of copyright infringement, are listed in the Copyright Act.47 Fair dealing with literary or musical works for research, private study or criticism or review, or for the purposes of reporting current events, does not constitute infringement.48 A literary or musical work shall also not be infringed by using it for the purpose of judicial proceedings49 or by quotation from it,50 provided that the quotation shall be compatible with fair practice and that the other requirements listed in section 12(3) of the Copyright Act are fulfilled. A literary or musical work may in certain circumstances also be used for illustration purposes.51

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Several detailed exceptions in respect of literary and musical works are listed in section 12 of the Copyright Act, and most of them are also applicable to artistic works52 and computer programs.53 The copyright in an artistic work is also not infringed by its transmission in a diffusion service, if such work is incidental to the principal matters represented in such transmission or the work is permanently situated in a street, square or similar public place.54
 
The Copyright Act also provides that the copyright in a computer program shall not be infringed by a person who is in lawful possession of that computer program or an authorised copy of it, if he/she makes copies for back-up purposes, as long as such copies are exclusively for his/her personal or private use.55
 
Detailed provisions dealing with the different types of works and the different types of exemptions existing for each are set out in the Copyright Act.56 The basis for these exemptions is, generally speaking, the public interest.57
8. Copyright infringement on the Internet
Infringement of copyright is dealt with in section 23 of the Copyright Act, which provides that copyright is infringed when any person, not being the owner of the copyright, does or causes any other person to do any act that the owner has the exclusive right to do or to authorise.58 Sections 6 to 11B of the Act grant the owner of copyright such exclusive rights in respect of the different types of works protected in terms of the Act. Several activities on the Internet will potentially infringe the copyright owner’s rights. The possible infringement of each of the exclusive rights granted to a copyright owner in terms of the Act will be discussed below with reference to the exact nature of the Internet.
8.1 Infringement by reproduction
The Copyright Act grants the owner of copyright exclusive rights to reproduce or authorise the reproduction in any manner or form of nearly all the different types of works protected in terms of the Act.59 This includes literary and musical works, artistic works, computer programs and even cinematographic films.

The definition of reproduction gives an indication that copies on electronic
storage devices are included under the copyright holder’s exclusive rights by providing that reproduction in relation to a literary or musical work or a broadcast includes a reproduction in the form of a record or a cinematographic film.60 According to the definition a reproduction also includes reproductions made of reproductions. A record is defined as any disc, tape, perforated roll or other device in or on which sounds, or data or signals representing sounds, are embodied or represented so as to be capable of being automatically reproduced or performed.61

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Unfortunately the definition of a record seems to be limited in its application to sound reproduction, and although computer storage devices will clearly fall within such definition it is therefore not in itself sufficient to cover other types of works.
 
The exclusive reproduction rights granted to the holder of copyright are however very wide in that they provide for reproduction in “any manner or form”.62 We submit that this definition is wide enough to also include transient and more permanent copies of all the types of works so protected, including copies in the random access memory (RAM) of a computer or copies kept on any other computer storage device, including a cache.63
 
A web site may also be regarded as a computer program as discussed above,64 in which case a web site will be protected in terms of section 11B(a) of the Copyright Act, which prohibits unauthorised reproduction of a computer program. This should be applicable to the design, layout and construction of a web site, but is less likely to be applicable to reproduction of the actual content of the web site.

A user may make use of a variety of specific defences set out in the Copyright Act when infringement is alleged.65 The use of these defences will depend on the circumstances of each case and the type of work involved. The most important defences are contained in sections 12, 15 and 19B in relation to literary and musical works, artistic works and computer programs respectively. Generally speaking these defences are based on fair dealing or use that is compatible with fair practice as discussed previously.66

Another very important defence against alleged infringement would be one based upon an implicit licence granted by a proprietor of a web site. The very nature of the technology that makes the Internet possible demands that such a licence is implicitly given by each and every web site proprietor to all users allowed to gain access to the specific work available on the web site. This implicit licence will cover the making of transient copies of such work on the computers of persons accessing the web site, and will be non-exclusive in nature. It should however not be understood as giving a user any other rights in relation to works contained on web sites. Such further rights may be granted in terms of an explicit licence on a web site. The non-exclusive implicit licence would be applicable to all the types of works available on a web site.

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A classic case of copyright infringement through unauthorised reproduction can be found in the USA matter Playboy Enterprises Inc. v WebbWorld Inc.67 where a web site operator was found directly liable for copyright infringement for the impermissible reproduction, distribution and display of images substantially similar to images appearing in Playboy magazine.68 A similar decision was made in the USA in respect of video clips in the matter Bret Michaels v Internet Entertainment Group Inc.69

Get more detail on the Playboy judgment at
http://www.phillipsnizer.com/int-art66.htm
 
Get more detail on the Bret Michaels judgment at
http://www.phillipsnizer.com/int-art64.htm

Problems may also arise when copies are stored on a device that does not belong to the person making the copies. The infringing copies may even be stored on a device belonging to a relatively innocent party, such as an intermediary or end-user. This may happen in the event of caching, through the use of a bulletin board or when the user uses a computer forming part of a network, in which case data may be stored on the storage devices of the network, which belong to an innocent third party. These issues are discussed below.70

However, copyright is infringed not only by a person who reproduces a work without permission, but also by a person who causes or authorises such reproduction. This type of infringement can be applicable in cases where the infringing copies are not found on the system of the person making such copies, but on the system of an innocent intermediary or end-user.
 
Reproduction of a work (or a substantial part of it) is assessed by our courts in a two-stage process. The first step is to compare the works in order to see if they are substantially similar. Second the courts decide whether or not a causal connection exists between the alleged infringing copy and the work of the plaintiff. In order to succeed with a claim a plaintiff must prove both of these aspects.71 Copying must therefore actually take place before infringement can occur.
8.2 Infringement by publication

In terms of the Copyright Act literary, musical and artistic works and computer programs are protected in that the owner of copyright has the exclusive right to first publish or authorise the publication of these works.72 In respect of cinematographic films the copyright owner has the exclusive right to cause the film to be seen and heard in public.73

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Publication does not include performance of a musical or dramatic work, cinematographic film or a sound recording, and neither does publication include the transmission in a diffusion service or a broadcast of a work, or the public delivery of a literary work.74
 
The Copyright Act states that, subject to section 1(5)(e), publication is deemed to have occurred when copies of a work have been issued to the public, with the consent of the owner of the copyright, in sufficient quantities to reasonably meet the needs of the public, having regard to the nature of the work.75 Section 1(5)(e) of the Copyright Act explicitly provides that for the purposes of sections 6, 7 and 11B a work shall be deemed to be published if copies of it have been issued to the public. This means that the issuing of copies of a literary, musical or artistic work or computer program by making available such a work on a web site could amount to its publication. The obvious application of this section is to tangible media such as books or computer disks. However there is no apparent reason why this prohibition will not also apply to the Internet and more specifically to the placement of a work on a web site for users to make transient copies of it by viewing it or more permanent copies by downloading it.
 
A counter argument in this regard would be that the transmission of a work in a diffusion service does not constitute publication.76 The mere act of making available a work on a web site does not entail actual transmission, but when a user accesses the site transmission does occur and the web site proprietor is responsible for such transmission. It could therefore be argued that the placement of a work on a web site does not amount to publication, but rather the transmission in a diffusion service.
 
Another counter argument is to the effect that the stream of bytes from the web site to the users’ computers does not constitute a copy at any one time, and consequently no copy of the work is made until the data stream is reassembled at the users’ computers.77 However this argument appears formalistic. Clearly the end result of the process is the making available of copies irrespective of the manner in which it is achieved and therefore a court seeking to ensure that the Copyright Act retains its effectiveness will in our opinion not give credence to such an argument.
8.3 Infringement by public performance

The Copyright Act reserves for the copyright owner the exclusive right to perform or authorise the performance of a literary or musical work or a computer program.78 In terms of the Act copyright in a literary or musical work shall be infringed by any person who permits a place of public entertainment to be used for a performance in public of a work where the performance constitutes an infringement of the copyright in such a work.79 No infringement occurs if such a person was not aware and had no reasonable grounds for suspecting that the performance would constitute infringement.

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The performance of a work includes any mode of visual or acoustic presentation, including by way of a diffusion receiver or through the use of a record or any other means, but specifically excludes the broadcasting or the transmission of a work via a diffusion service.80 This means that performance of the work can only occur at the receiving apparatus in a diffusion service and not at the transmitter.
 
Should the Internet therefore be seen as a diffusion service, performance of the work can only take place at the computer of a user of the Internet who obtains content from a web site and not at the computer of the web site proprietor who makes available such content. Performance shall however only occur if the user uses the receiving apparatus for a public presentation of the work and would therefore not prevent private viewing of the work by the user on his computer screen. A user making such a public presentation will be liable for direct infringement of copyright,81 while the person who knowingly allows the use of a place of public entertainment for this purpose will be liable for secondary infringement.82
8.4 Infringement by unauthorised dealing

Indirect or secondary infringement of a work is committed when a person, without the licence of the owner of the copyright and at a time when copyright subsists in a work, imports such a work for a purpose other than for his private use, or sells, lets or by way of trade offers or exposes for sale or hire such work, or distributes such work for the purposes of trade or for any other purpose to such an extent that the owner of the copyright is prejudicially affected, or acquires an article relating to a computer program, if to his knowledge the making of that article constituted an infringement of copyright or would have constituted such an infringement if the article had been made in the Republic.83 This prevents trade in infringing articles and will also be applicable to such articles imported via the Internet. Similarly to infringement by public performance, knowledge of the fact that the action complained of constituted infringement is also a very important guilt factor here.

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As discussed previously a web site may also be seen as a computer program.84 Consequently section 11B(h) which protects letting, offering or exposing for hire by way of trade, directly or indirectly a copy of a computer program, should also be applicable to the design, layout and construction of a web site. It is less likely to be applicable to dealing in the actual content of the web site.

An example of unauthorised dealing in the USA was heard in the Illinois matter Storm Impact Inc. v Software of the Month Club,85 where the plaintiff provided computer software (“shareware”) on its web site for its subscribers to download. The plaintiff’s web site expressly prohibited further commercial distribution of the shareware. The defendant proceeded to distribute the shareware for financial gain, thereby prejudicing the plaintiff in that its web site became less attractive to subscribers. The court consequently rejected the defence of fair use and found that the plaintiff’s copyright in the shareware was infringed by unauthorised dealing.

Get more detail on the Storm Impact judgment at
http://www.phillipsnizer.com/int-art107.htm
8.5 Infringement by broadcasting or transmission in a diffusion service
The Copyright Act prohibits unauthorised broadcasting of literary and musical works, cinematographic films and computer programs by granting exclusivity to the owner of the copyright in them.86 Artistic works are only protected for the purposes of television broadcasts,87 which the Internet is clearly not. A broadcast is defined as a telecommunications service of transmissions consisting of sounds, images, signs and signals, which takes place by means of electromagnetic waves of frequencies lower than 3 000 GHz, transmitted in space without an artificial conductor, and intended for reception by the public or sections of the public. It includes the emitting of programme-carrying signals to a satellite.88
 
A programme-carrying signal is defined as a signal embodying a programme, which is transmitted and passes through a satellite, where a programme is a body of live or recorded material consisting of images or sounds or both.89 A broadcast therefore consists of transmissions; it does not make use of tangible conductors, but is rather transmitted in space through the use of satellites. This includes radio and television broadcasts.

The Copyright Act also prohibits unauthorised transmission of literary, musical and artistic works, cinematographic films, broadcasts and computer programs as part of a diffusion service.90 A diffusion service is defined as being a telecommunication service of transmissions consisting of sounds, images, signs or signals, which takes place over wires or other paths provided by material substance and is intended for reception by specific members of the public.91 Its clear distinction from a broadcasting service is that transmission takes place by way of wires, cables or other paths provided by tangible substance.

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Both the actions of broadcasting and transmission via a diffusion service are directed at the transmission end of a telecommunication service rather than the receiving end. In fact the display on the receiving apparatus is expressly excluded from the definition of a diffusion service.
 
At present the Internet consists primarily of wires, cables and other tangible means of transmission, but satellites already form part of the Internet telecommunications network and as technology develops will probably play a progressively larger role. The distinction between a broadcast and a diffusion service based on the means of transmission is therefore already inadequate, and will soon become entirely so. The technological construction of the Internet also makes it impossible for a web site proprietor to know by which route or means the content will be conveyed to a user.

The Scottish case of Shetland Times Ltd v Dr Jonathan Wills and Zetnews Ltd92 decided that a newspaper web site was prima facie a cable programme service as defined in British copyright legislation. A cable programme service is defined in the 1988 British Copyright Designs and Patents Act as being a service which “consists wholly or mainly in sending visual images, sounds, or other information by means of a telecommunication system, other than wireless telegraphy, for reception at two or more places... or for presentation to the public”. This means that a cable programme service is more or less equivalent to a diffusion service as defined in terms of the Copyright Act. We are therefore of the opinion that the Internet should at present be seen as a diffusion service rather than a broadcasting service.

Get the Shetland Times judgment at
http://www.kona.com.au/ian/law/haminlto.htm

As discussed above,93 the proprietor of a web site may argue that it does not actually transmit any information by merely making content available on its web site. However infringement can also occur when a person causes or authorises an infringing act.94 The proprietor clearly facilitates the transmission of the works available on the web site by placing them there. In fact the sole purpose of placing content on a web site is its eventual transmission, although this only occurs once users access the web site. A proprietor can therefore infringe a third party’s copyright by making a work available on its web site without permission, because this action will eventually cause the work to be transmitted as part of a diffusion service. If the hosting of the web site is outsourced to a third party, such third party as host would be the primary infringer, although the proprietor should also be liable for causing or authorising the infringement.95

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Technology dictates that users of the Internet eventually assist in causing the transmission of web site content when accessing a web site. The implicit licence granted by all web site proprietors to users96 must of necessity therefore also include a non-exclusive licence to cause such content to be transmitted as part of a diffusion service. For this reason users cannot be liable for this type of infringement when accessing a web site.
8.6 Infringement by making an adaption of the work
The making of an adaptation of a literary, musical or artistic work or a computer program is also within the exclusive entitlement of its owner.97 An adaptation in relation to a literary work includes translation and the making of a picture version of it and in relation to a musical work includes any arrangement or transcription. In relation to an artistic work it includes a transformation of the work in such a manner that the original or substantial features of it remain recognisable, and in relation to a computer program it includes a version of the program in a different programming language code, or a notation or fixation of the program in a different medium from the original.98
 
The code of a web site in HTML, JavaScript or otherwise should be seen as a computer program as discussed.99 The design, layout and construction of the web site could therefore also be protected as such in regard to adaptations.
9. Internet copyright problem areas
The Internet poses unique examples of copyright infringement, which cause problems throughout the world. We now investigate the different areas causing uncertainty.
9.1 Linking

The very foundation of the Internet is its system of HTML or hypertext links, allowing a user on the Internet to move effortlessly from one web site to another (so-called “surfing”). This unique characteristic makes the World Wide Web the powerful mechanism that it is.100

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Two types of hypertext links are commonly used. The first is the so-called “out-link”, which is the one most often encountered on a web site. By activating an “out-link” a user is transferred from the document being viewed to another document found somewhere else on the Internet. The second document can be on another part of the same web page, or somewhere else on the same web site, or on a completely different web site. An “out-link” can be seen as a signpost, which assists the user in navigating on the Internet. The use of an “out-link” will not cause a copy of a document to which it points to be made on the web site containing such an “out-link”.

The second type of hypertext link is commonly used on web sites known as metasites. It is sometimes called an “in-link” and its purpose is to obtain content from the site to which it points, which is then displayed as part of the site on which the link is located. In effect an “in-link” will therefore appear to cause a copy of such content to be made on the site containing the “in-link”.101

In the case of an “out-link” the user will move from the linking site to the target site when activating the link and the Universal Resource Locator (URL) of the target site will be displayed. In the case of an “in-link” the user does not actually leave the linking site, but instead certain content contained in the target site is displayed as part of the linking site and the URL of the linking site is also still displayed to the user.

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However, when an “in-link” is activated the web page or document from the target site, which includes the image to which such “in-link” points, does not actually come into existence on the computer of the host of the linking site. It only appears on the user’s screen and on his/her computer. The “in-link” is merely an instruction from the linking site to the target site to transmit the specific document to the user’s computer. The user however has no way of knowing this. The effect for a user is the same as if the host of the linking site did indeed make a copy of the document onto its own site, even though the host avoids doing so. In this way it is possible for a web site host to use only content obtained from target sites to seemingly create a new web site under its own name – the so-called “metasite”.102

Weiss Metasites linked to IP Violations (1997) at
http://www.ljx.com/internet/0721metasites.html

In both instances therefore the host of the linking site avoids making any copies of works contained on the target site onto its own system, although in the case of an “in-link” the host of the linking site directly causes a copy of a work from another site to be made on the computer of the user. The question that arises is whether or not the provision of an unauthorised link could constitute a form of copyright infringement. Other possible issues include unfair competition and trademark infringement.

As indicated above the hypertext link system is the defining feature of the Internet. The defences of fair dealing and use compatible with fair practice may therefore be used against allegations of copyright infringement, as well as the argument that an implicit licence is granted by every web site proprietor to other web site proprietors on the Internet allowing them to create hypertext links to its web site.103 The reason for this latter argument lies within the commercial realities of the Internet. All web site proprietors have a common goal, namely to ensure that the maximum number of users access their sites. Creating a hypertext link to a web site, although without the knowledge or authority of the target site’s proprietor, does therefore not harm such target site, but in fact increases user traffic to it. The very existence of the Internet largely depends upon web site hosts being allowed to link their sites by way of “out-links” to other sites on the web without the necessity of authorisation.104

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These arguments make a strong case for allowing hypertext linking in general without the need to obtain authorisation.105 There are however certain ways of using hypertext links which may be prejudicial to the target sites and in this regard case law is beginning to come into existence.

The first court decision to address the issue was given in the Scottish case Shetland Times Ltd v Dr Jonathan Wills and Zetnews Ltd106 by Lord Justice Hamilton on 24 October 1996. The facts were that the defendant used headlines of the newspaper produced by the plaintiff as hypertext links on its web site to direct users to specific articles contained in the plaintiff’s web site. Such hypertext links linked the defendant’s site directly to such articles and bypassed the homepage of the plaintiff’s web site. The court issued an interim interdict preventing the defendants from using such hypertext links without the permission of the plaintiff. Unfortunately the judgment was given at a preliminary stage and thus before full trial. The matter was subsequently settled.

Get the Shetland Times judgment at
http://www.kona.com.au/ian/law/haminlto.htm

The court found that the plaintiff had a prima facie case for infringement, which occurred by copying (substantially similar to reproduction in terms of the Copyright Act) and by inclusion in a cable programme service (substantially similar to transmission in a diffusion service in terms of the Copyright Act). It is unfortunately not clear whether the court found that the copyright infringement occurred as a result of the copying and transmission of the headlines, or as a result of the use of the hypertext links.107

The mere provision of an “out-link” does not in our opinion involve the transmission or copying of any work, and should therefore not fall within the definition of reproduction or transmission as part of a diffusion service. It is the action of the user itself in activating the link that causes such copying and transmission. It could be argued that the provision of an “out-link” causes or amounts to authorisation of reproduction and transmission by the user, but these actions by the user are probably not infringement. Reproduction and transmission of content from the target site does not take place via the linking site, but directly from the target site to the user, and the user is aware of this.108 Consequently no infringement occurs, because the user’s actions should fall within the scope of the implicit licence granted to him/her by the web site proprietor as discussed above.109 We therefore believe that the application of the court’s decision in Shetland Times v Wills should be limited to the copying and transmission of the actual newspaper headlines. Highlighted phrases that constitute hyperlinks will normally not be good candidates for copyright infringement, because of their lack of originality or because they are “merged” with the ideas they express.110 The link may also be in the form of a button or other graphic design, in which case the application of Shetland Times v Wills would be even more difficult.

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Support for the limited application of the decision in Shetland Times v Wills may be found in the Californian decision Gary Bernstein v J.C. Penny Inc.111 The defendants linked their web site via an “out-link” to another web site, which contained another “out-link” to a web site containing unauthorised photographs of which the plaintiff was the copyright holder. The plaintiff alleged copyright infringement by the defendant. The defendant argued that, because the linking site does not copy or process the content of the target site in any way, linking cannot constitute copyright infringement. The court dismissed the plaintiff’s claim, but unfortunately did not give reasons for doing so.
 
An important American case in respect of “out-links” is the matter Ticket Master Corporation v Microsoft Corporation,112 where Microsoft operated a web site as a city guide to Seattle.113 The users of the site who were interested in purchasing tickets for any activities in Seattle could do so via “out-links” to Ticket Master’s web site. These links were provided without Ticket Master’s approval. However the “out-links” contained in the Microsoft site bypassed Ticket Master’s homepage and went directly to the pages where users could buy the applicable tickets.
 
Ticket Master sued Microsoft and claimed that Microsoft was engaging in “electronic piracy, illegally using the Ticket Master name and trademark” and that by “prominently offering Ticket Master’s services to their users, Microsoft is feathering its own nest at Ticket Master’s expense”. The basis of Ticket Master’s case was therefore alleged trademark infringement and dilution and to a much lesser extent the infringement of copyright. This tends to support the argument that the provision of “out-links” does not in itself amount to copyright infringement.

A very important aspect of this case is that the hypertext links used by Microsoft did not link its site to the homepage of the target site. As a result users of the “out-link” did not see the advertisements placed on Ticket Master’s homepage. Such a so-called “deep link” which bypasses the homepage will normally be detrimental to the owner of the target site, because the homepage of a web site carries most of its advertisements. Remuneration payable in respect of advertisements is based on the user traffic to the web page on which they are placed. The homepage of a web site always sees the highest traffic volume and consequently advertisers pay high prices to advertise there in expectation of such high volume. This intention is thwarted by a “deep link”, making the homepage less attractive to advertisers and this prejudices the proprietor of the target site. An explicit licence should be obtained from the proprietor of the target site for such a link.114

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No activation of a link on the part of the user is however required for work to be transmitted to him/her when an “in-link” is used. The “in-link” in itself causes the reproduction and transmission of work as part of a diffusion service to the computer of the user and therefore could in our opinion constitute copyright infringement in the appropriate circumstances. The extent of the implicit licence granted by the plaintiff is crucial in the evaluation of infringement. Transmission still occurs directly from the target site to the user’s computer, but the user is not aware of it. In fact it appears to the user as if the work obtained from the target site is part and parcel of the linking site.115 Although no actual copy is made on the linking site, the effect of an “in-link” is therefore to create the impression that the content from the target site is transmitted as part of the linking site. We believe that this should fall outside the scope of any implicit licence and amount to infringement, especially when framing technology is used as in Washington Post Co. v Total News Inc.116 discussed below.117
9.2 Framing
HTML technology allows the host of a web site to split the web site screen into a number of separate areas or windows that can each be operated independently. It also allows for framing, where one web site or a part of it can be incorporated into another. A user is thereby enabled to look through one site to another.118 An “in-link” is used to connect the linking site to the target site and consequently the user’s connection to the linking site remains unbroken. This system is used to assemble so-called “metasites” by obtaining nearly all the content of such sites from target sites. The host of such a metasite will typically select portions of target sites and surround them with its own advertising and logos.119 A user accessing the metasite will be under the impression that the content contained in the frames is part of the metasite itself.

In Washington Post Co. v Total News Inc.120 which was settled on 5 June 1997, the defendant used framing technology to present content from external news sites, including Cable News Network (CNN), Times Mirror, Dow Jones, Reuters and the publishers of several other sites. Advertisements from a target site were either reduced in size or obscured by the frames. The plaintiffs based their case on copyright infringement and stated as follows:

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“Simply put, Defendants are engaged in the Internet equivalent of pirating copyright material from a variety of famous newspapers, magazines or television news programs; packaging those stories to advertisers as part of a competitive publication or program produced by the Defendants and pocketing the advertising revenue generated by the unauthorized use of that material. As explained below just as that conduct would not be tolerated in the world of print and broadcasting it is equally unlawful in the world of cyberspace.”121

The matter was subsequently settled on terms which provided that Total News could continue linking to the plaintiff’s web site but may not continue to frame such content within the Total News frame. Commercial sense prevailed, because the plaintiffs obviously appreciated the increased user traffic to their sites, but were not prepared to compromise the advertising they contained. The allegations made by the plaintiff do however set out the way in which copyright infringement may form a ground for an action where “in-links” and framing are used.

Get the Washington Post settlement at
http://zeus.bna.com/e-law/cases/totalset.html

In USA Futuredontics Inc. v Applied Anagramatics Inc.122 a frame was used in respect of dental referral pages. This frame was just one of many appearing on the defendant’s web site, where other frames contained information on its business operations. The plaintiff based its claim on infringement of copyright and unfair competition. The court did not dismiss the claim at a preliminary hearing, but did not grant an interim interdict either, because the plaintiff could not prove any harm being caused by the defendant’s conduct.123 This decision was affirmed on appeal.124

Get the Futuredontics Inc. judgment at
http://www.law.gwu.edu/facweb/futured.html
9.3 Caching

The purpose of caching is to make the Internet faster and more efficient. A cache is the temporary storage on a local memory unit of electronic copies of works obtained from remote web sites, or more simply put, the local storage of information obtained from a remote location.125 A cache can be made on the hard drive of the computer of the user accessing a remote web site or in the memory or storage facilities of Internet service providers, or in the case of a network in the memory of such network computers.

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The process of caching is always a potentially infringing act, because it always involves the making of copies. It is generally accepted that caching is essential for the efficient use of the Internet. It could therefore be argued that the implicit licence granted by a web site proprietor, discussed previously, also includes the making of copies for cache purposes.126
 
Another argument against infringement could be based on fair dealing or fair use of the work.127 The Copyright Act provides that copyright shall not be infringed by fair dealing with a literary, musical or artistic work for the purposes of the personal or private use of the person using the work.128 In our opinion the making of copies for cache purposes would qualify as this type of fair dealing in such a work. This argument would however not be applicable if the cache is used for commercial purposes and such use is detrimental to the web site proprietor.
 
Another possible defence could be based on the Copyright Act, which allows for the making of back-up copies of computer programs.129 As explained previously, a web site consists of HTML instructions and can be seen as a computer program.130 This defence may therefore be applicable, especially in respect of a cache, which is automatically made by the browser program of the user. There are two problems with this argument. First, the browser does not always cache the entire contents of a web site but only distinct elements of it, especially elements that take up a lot of memory (e.g. graphics), and therefore the cache does not contain a complete computer program. Second, it is possible for a user to use a browser without such caching being activated. By doing so his use of the Internet is obviously slowed dramatically, but in terms of the Copyright Act back-up copies must be reasonably necessary for back-up purposes.131 Necessity might therefore be a problem.132
 
In our opinion neither of these two arguments presents an unassailable obstacle to the use of section 19B(2). We see no reason why the making of a back-up copy of only a part of a web site should not be allowed if the intention is clearly to use it as part of the whole of the web site. This type of back-up is in our view not that dissimilar to a back-up for a normal computer program, and is reasonably necessary for the Internet to function efficiently.
9.4 Mirror sites

Mirror sites differ from caches in that each mirror site constitutes a separate web site, although they can all be reached via the same Universal Resource Locator. Mirror sites are normally created by the same proprietor at different places around the world in order to facilitate more efficient access to its web site. It would be very difficult for the creator of an unauthorised mirror site to argue that such a site falls within the implicit licence applicable to caches or constitutes fair dealing or fair use. In our opinion unauthorised mirror sites would normally constitute copyright infringement.133

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9.5 Third party liability

In terms of the Copyright Act a person who causes or authorises another person to use his/her Internet service to distribute infringing copies of copyrighted works is also liable for infringement.134 This is obviously applicable to Internet service providers (ISPs) or hosts who do so knowingly, but can also be applicable to them when they are completely ignorant.

It is sometimes very difficult to trace the person who commits the actual infringement directly, especially in the use of bulletin boards on the Internet. A number of cases have been decided in the United States of America in respect of such bulletin boards, which contained unauthorised copies of copyrighted material.

In the matter Playboy Enterprises Inc. v Frena135 the plaintiff’s action against the defendant was based on the distribution of unauthorised copies on its bulletin board of photographs from the plaintiff’s publications. The defendant claimed that he was unaware that some of his subscribers were placing infringing material on his bulletin board. The court held that his actions in making available such copies constituted copyright infringement, and that the fact that subscribers were able to view such photographs on their computer screens, was an infringement of the public display right of the copyright holder. The latter infringement would be similar to infringement of the publication right of a copyright holder by issuing an artistic work to the public as stated in section 1(5)(e) of the Copyright Act.

In Religious Technology Center v NetCom Online Communication Services Inc.136 the issue was whether or not the operator of a bulletin board and the service provider that provided access to such bulletin board may be held directly or contributorily liable for copyright infringement committed by a subscriber to the bulletin board. A Federal District Court in California ruled on a summary judgment application in this matter in November 1995 and declined to find the service provider liable for direct infringement.

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The material posted on the bulletin board was automatically copied from one computer to the next across the Internet as part of a Usenet newsgroup. Furthermore NetCom’s computers housed the infringing material for up to 11 days after posting took place on its bulletin board. The plaintiff therefore argued that NetCom directly infringed copyright, notwithstanding the fact that it was completely ignorant of the posting.
 
The court found that the service provider “did not take any affirmative action that directly resulted in copying Plaintiff’s works other than by installing and maintaining a system whereby software automatically forwards messages received from subscribers onto the Usenet, and temporarily stores copies on its system”. Subsequently the court also found that the ISP’s actions were necessary to maintain a functioning information transmission system. The court finally concluded by saying that “where the infringing subscriber is clearly directly liable for the same act, it does not make sense to adopt a rule that could lead to the liability of countless parties if the only infringement is nothing more than setting up and operating a system that is necessary for the functioning of the Internet”. A similar finding was made by the court in respect of the plaintiff’s publication rights.

From these dicta it is apparent that the mere creation of a system to copy
posted works should not amount to the authorisation or causation which
is necessary to constitute infringement.

In the more recent decision of Marobie-FL Inc. v National Association of Fire Equipment Distributors and North West Nexus Inc.137 a Federal District Court in Illinois was faced with a similar situation. The plaintiff alleged that the National Association of Fire Equipment Distributors (NAFED) infringed copyright by placing clipart onto the NAFED web site. North West Nexus Inc. (North West) was the service provider hosting the NAFED web site. The court ruled that North West could not be held directly or vicariously liable for copyright infringement. It did however find that North West may be liable for contributory infringement.

NAFED copied the infringing files onto a hard drive on its computer and uploaded them to a North West server via the Internet in order to make the
clipart available on the NAFED web site. The court found that NAFED’s action amounted to infringement of the plaintiff’s reproduction rights as well as its publication rights and granted summary judgment against them.

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North West argued that its server did not actually copy the works they issued. The court found however that “the fact that a copy is transmitted after it is created, or even as it is created, does not change the fact that once an Internet user receives a copy, it is capable of being perceived and thus ‘fixed’”. Accordingly the court rejected North West’s argument that its computer did not copy the plaintiff’s works when such works were requested by Internet users.

In following the reasoning of Religious Technology Center v NetCom supra the court found that the mere provision of a means to copy and distribute amounts to being the owner of a public copying machine, which is used by a third party to copy protected material. North West, like the owner of such a copying machine, did not actually engage in any of the copying activities itself and could therefore not be held directly liable.

Get more detail on the Marobie-FL Inc. judgment at
http://www.phillipsnizer.com/int-art65.htm

In both the NetCom case as well as the Marobie case the possibility existed that the service provider could be found liable for contributory infringement. The test initiated in the NetCom case addressed two issues, namely whether the service provider knew of the defendant’s infringing activity and whether the service provider participated substantially in the unlawful activity.138 Guilty knowledge is therefore a crucial aspect of contributory negligence under American law.

Sections 23(2) and (3) of the Copyright Act deal with contributory negligence under South African law, but neither of these sections finds application in this instance. Under South African law contributory negligence will therefore not be an option in cases like these. It is also unlikely that a service provider can be said to cause or authorise the infringing acts complained of in these cases, because of lack of knowledge. The mere provision of technology that facilitates copying is not in our opinion sufficient to cause infringement.

In the Northern District Court of California in the matter Sega Enterprises v Maphia139 the court also followed the NetCom decision and declined to hold a bulletin board operator liable for direct copyright infringement. The court did however find the defendant liable for contributory infringement.

Another case that might find application in South Africa is the matter Playboy Enterprises Inc. v Russ Hardenburgh Inc.140 where an Ohio Federal Court ruled that a bulletin board operator, who encouraged his subscribers to upload files onto the bulletin board and implemented procedures to screen such files, may be held liable for direct infringement. The court found that a process of encouraging subscribers to upload files through an incentive programme and by screening such files before making them available to subscribers transformed the defendants “from passive providers of a space in which infringing activities happened to occur, to active participants in the process of copyright infringement”.

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Consequently the court found it “inconsistent to argue that one may actively encourage and control the uploading and dissemination of adult files, but cannot be held liable for copyright violations, because it is too difficult to determine which files will infringe upon someone else’s copyright”. From this case it is clear that the amount of control exercised by the ISP or bulletin board operator is crucial in determining whether or not it can be held liable for copyright infringement.

Get more detail on the Russ Hardenburgh Inc. judgment at
http://www.phillipsnizer.com/int-art47.htm

The President of the District Court of The Hague held in the Dutch case of Scientology v XS 4ALL141 that an ISP can only be liable for copyright infringement if it is evident to everyone including such ISP that the information contained on its server is infringing in nature.

In the United Kingdom the copyright legislation makes specific provision for dealing with electronic copying, which would make it much easier to hold an ISP directly liable for copyright infringement.
 
In terms of the Copyright Act a reproduction in relation to a literary or musical work or broadcast includes a reproduction in the form of a record, where a record is defined as any disc, tape, perforated roll or other device in or on which sounds or data or signals representing sounds are embodied or represented so as to be capable of being automatically reproduced to perform from it.142 The definition of a record focuses primarily on sound recordings, and may be wide enough to include copying by way of the Internet using a bulletin board.

In respect of literary, musical and artistic works as well as cinematographic films, broadcasts, published editions and computer programs, the Copyright Act does however grant the exclusive right to the holder of copyright to reproduce such work in any manner or form.143 This provides very wide protection. Notwithstanding the lack of any further reference to electronic copying in the Copyright Act and the absence of the possibility to hold an ISP or bulletin board operator contributorily liable, their actions may therefore be found to be infringing in terms of the Copyright Act as it clearly amounts to a form of reproduction as stated in the Marobie case supra.

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The lack of knowledge on the part of the ISP and bulletin board operator should however persuade the South African courts not to hold them directly liable, but to restrict liability to the subscriber responsible for posting the material. It is important to note that the WIPO Copyright Treaty read together with the Agreed Statements explicitly excludes the liability of bulletin board operators, but has not yet been ratified by South Africa.144 It remains to be seen what approach the South African courts will take.
10. Remedies for infringement
Section 24 of the Copyright Act provides remedies to an owner of copyright or an exclusive licensee alleging infringement. In terms of section 24 relief by way of damages, interdict, delivery of the infringing copies or plates used or intended to be used for infringing copies or otherwise, shall be available to the plaintiff as it is available in any corresponding proceedings in respect of infringements of other proprietary rights.145
 
Although a plaintiff is entitled to the normal delictual damages, a plaintiff may also be awarded an amount calculated on the basis of the reasonable royalty, which would have been payable to a licensee in respect of the work, in lieu of such delictual damages.146 The Copyright Act also provides that a defendant who was not aware and had no reasonable grounds for suspecting that copyright had existed in the work to which the action relates shall not be liable for damages.147 This section could be applicable in cases of third party liability.
 
A plaintiff may also use an interdict to prevent or stop copyright infringement and in most cases this is the principal relief sought, but only the holder of
copyright (i.e. the owner of copyright or an exclusive licensee) may apply for an interdict.148

The plaintiff may also require the delivery-up of all infringing copies of the work in question held by the defendant. Where electronic copies are involved it is obviously more practical to require of the defendant to destroy all its infringing copies, rather than have the defendant deliver-up the storage media containing such copies. We believe that our courts should apply their discretion in respect of this form of relief.

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Finally a plaintiff may also be able to seize infringing goods as evidence, pending the hearing of an infringement application, in terms of an Anton Pillar Order, provided that it fulfils all the normal prerequisites for such an order.149
Author biography
 Roux de Villiers grew up in Stellenbosch and matriculated from Paul Roos Gymnasium in 1986. From 1987 to 1990 he completed a bachelor’s degree at the University of Stellenbosch in electronic engineering (cum laude). In 1991 while doing military service he lectured in electronic engineering. He returned to the University of Stellenbosch to become one of the original members of the Sunsat satellite team. He completed his master’s degree in electronic engineering in 1994 and his LLB degree in 1996 (both cum laude). Roux proceeded to complete his articles at Jan S de Villiers & Son in Cape Town, where he was legal adviser on the development of the well-known web site 24.com. He has been admitted to the University of London in 1999 for a master’s degree in information technology and Internet law.

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  1. Hartnick Copyright & Trademarks on the Internet 1998 The New York Law Journal, www.ljx.com/internet/02cptmint.html 1; Moloney The Internet: Demise of Intellectual Property Law? 1997 TSAR 566 566 (Back)
  2. Bencivenga Protecting Copyrights 1997 The New York Law Journal, www.ljx.com/internet/1016cpdig.html
  3. www.law.cornell.edu/treaties/berne/ overview.html
  4. Convention of Paris for the protection of industrial property
  5. Pistorius Copyright infringement in cyberspace Vol 6 Part 4 JBL134 136 (Back)
  6. Baker & McKenzie Guide to Intellectual Property in the IT Industry (1998) 21
  7. section 6
  8. Baker & McKenzie Guide to Intellectual Property in the IT Industry (1998) 22
  9. Hartnick Copyright & Trademarks on the Internet 1998 The New York Law Journal, www.ljx.com/internet/02cptmint.html
  10. Moloney The Internet: Demise of Intellectual Property Law? 1997 TSAR 566 567 (Back)
  11. Smith Internet Law and Regulation 2 ed (1995) 14; Baker & McKenzie Guide to Intellectual Property in the IT Industry (1998) 22
  12. Burk DL Proprietary Rights in Hypertext Linkages 1998 (2) The Journal of Information, Law and Technology (JILT), http://elj.warwick.ac.uk/jilt/intprop/98_2burk
  13. 98 of 1978
  14. section 41(4)
  15. Dean Handbook of South African Copyright Law (1998) 1­1 (Back)
  16. 98 of 1978
  17. section 2(1)
  18. section 1
  19. section 1
  20. Smith Internet Law and Regulation 2 ed (1995) 22 v
  21. section 2(1)
  22. Dean Handbook of South African Copyright Law (1998) 1­15
  23. section 2(2)
  24. section 2(2A)
  25. Dean Handbook of South African Copyright Law (1998) 1­18; Galago Publishers (Pty) Ltd v Erasmus 1989 (1) SA 276 (A) 293G (Back)
  26. section 3(1)
  27. GN R136 in GG 11718 of 1989-03-03
  28. Schedule to GN 136/1989 supra, which has been superseded by GN 1558 in GG 17517 of 1996-11-01
  29. section 21(1)(a)
  30. section 21(1)(d) (Back)
  31. section 21(1)(e)
  32. Hoffman Who owns the copyright in your web site? home.earthlink.net/~ivanlove/website.html
  33. Del Gallo Who owns the web site?: The ultimate question when a hiring party has a falling-out with the web site designer (1998) The John Marshall Journal of Computer & Information Law 857 www.jmls.edu/jcil/16/delgallo.html
  34. section 3(2)
  35. section 3(2)(a) (Back)
  36. section 3(2)(b)
  37. section 3(2)(d) & (e)
  38. section 20(1)
  39. Dean Handbook of South African Copyright Law (1998) 1­61
  40. section 20(2) (Back)
  41. subsection 6­11B
  42. Dean Handbook of South African Copyright Law (1998) 1­33
  43. section 1(2A)
  44. Dean Handbook of South African Copyright Law (1998) 1­37; Payen Components SA Ltd v Bovic CC 1995 (4) SA 441 (A); Kopinger & Skone James Copyright 13 ed paragraph 8­27
  45. Galago Publishers (Pty) Ltd v Erasmus 1989 (1) SA 276 (A); Ehrenberg Engineering(Pty) Ltd v Topka t/a Topring Manufacturing and Engineering 40 JOC (T) 55; Fax Directories (Pty) Ltd v SA Fax Listings CC 1990 (2) SA 164 (D); Juta & Co. Ltd v De Koker 1994 (3) SA 499 (T)
  46. Dean Handbook of South African Copyright Law (1998) 1­37 (Back)
  47. subsection 12­19B
  48. section 12(1)
  49. section 12(2)
  50. section 12(3) (Back)
  51. section 12(4)
  52. section 15(4)
  53. section 19B(1)
  54. section 15(1) & (3)
  55. section 19B(2) (Back)
  56. subsection 12­19B
  57. Dean Handbook of South African Copyright Law (1998) 1­51
  58. section 23(1)
  59. subsection 6­11B
  60. section 1 v
  61. section 1
  62. subsection 6(a), 7(a), 8(a), 10(a), 11A, 11B(a)
  63. see Pistorius Copyright infringement in cyberspace Vol 6 Part 4 JBL 134 136
  64. see 2
  65. subsection 12­19B (Back)
  66. see 7
  67. 1997 WL 817312 (N.D. Tex., Dec. 11, 1997)
  68. see also Christopher Scanlon v Gil Kessler et al. 97 Civ 1140, 1998 US Dist. Lexis 10201 www.phillipsnizer.com/int_synopses.htm
  69. CV 98-0583, 1998 WL 211257 (C.D. Cal. April 27, 1998), www.phillipsnizer.com/int_synopses.htm
  70. see 9.3 and 9.5 (Back)
  71. Dean Handbook of South African Copyright Law (1998) 1­41; Laubscher v Vos 3 JOC (W); Klep Valves (Pty) Ltd v Saunders Valve Co. Ltd 1987 (2) SA 1 (A); Galago Publishers (Pty) Ltd v Erasmus 1989 (1) SA 276 (A); Ehrenberg Engineering(Pty) Ltd v Topka t/a Topring Manufacturing and Engineering 40 JOC (T)
  72. subsection 6(b), 7(b) & 11B(b)
  73. section 8(b)
  74. section 1(5)(d)
  75. section 1(5)(a) (Back)
  76. section 15(d)(iii)
  77. Smith Internet Law and Regulation 2 ed (1995) 22
  78. subsection 6(c) & 11B(c)
  79. section 23(3)
  80. section 1 of Act 98 of 1978 (Back)
  81. subsection 6(c) or 11B(c)
  82. section 23(3)
  83. section 23(2)
  84. see 2
  85. 95 C2154 US Dist. Lexis 11789 (N.D. Ill, July 29, 1998), www.phillipsnizer.com/int_synopses.htm (Back)
  86. subsection 6(d), 8(c), and 11B(d)
  87. section 7(c)
  88. section 1
  89. section 1
  90. subsection 6(e), 7(d), 8(d), 10(c), 11B(e) (Back)
  91. section 1
  92. [1997] FSR 604; www.shetland-news.co.uk/opinion.html
  93. see 8.2
  94. section 23(1)
  95. Smith Internet Law and Regulation 2 ed (1995) 24 (Back)
  96. see 8.1
  97. subsection 6(f), 7(e), 8(e) and 11B(f)
  98. section 1
  99. see 2
  100. Smith Internet Law and Regulation 2 ed (1995) 25 (Back)
  101. Roditti Computer Contracts Negotiating Drafting (1998) 11A­14, 15
  102. Weiss Metasites linked to IP Violations 1997
    The National Law Journal B09
    www.ljx.com/internet/0721metasites.html
  103. Smith Internet Law and Regulation 2 ed (1995) 26
  104. Sampson Hyperlink at your own risk 1997
    The New York Law Journal
    www.ljx.com/internet/0624hyper.html
  105. Burk DL Proprietary Rights in Hypertext Linkages 1998 (2) The Journal of Information, Law and Technology (JILT), http://elj.warwick.ac.uk/jilt/intprop/98_2burk (Back)
  106. [1997] FSR 604;
    www.shetland-news.co.uk/opinion.html
  107. Smith Internet Law and Regulation 2 ed (1995) 26
  108. Smith Internet Law and Regulation 2 ed (1995) 26
  109. see 8.1 and 8.5
  110. see Burk DL Proprietary Rights in Hypertext Linkages 1998 (2) The Journal of Information, Law and Technology (JILT), http://elj.warwick.ac.uk/jilt/intprop/98_2burk; Morrissey v Proctor & Gamble Co. [1967] 39 F.2d 675 (Back)
  111. 1998 US Dist. Lexis 19048 (C.D. Cal. Sept. 29 1998), www.phillipsnizer.com/int_synopses.htm
  112. 97 Civ 3055 (C.D.Ca. April 28, 1997)
  113. www.seattle.sidewalk.com
  114. Sampson Hyperlink at your own risk 1997
    The New York Law Journal
    www.ljx.com/internet/0624hyper.html
  115. Roditti Computer Contracts Negotiating Drafting (1998) 11A­15 (Back)
  116. 97 Civ 1190 (S.D.N.Y., February 20, 1997)
  117. see 9.2
  118. Roditti Computer Contracts Negotiating Drafting (1998) 11A­16
  119. Weiss Metasites linked to IP Violations 1997
    The National Law Journal B09 www.ljx.com/internet/0721metasites.html
  120. 97 Civ 1190 (S.D.N.Y., February 20, 1997) (Back)
  121. Roditti Computer Contracts Negotiating Drafting (1998) 11A­17
  122. CV 97-6991 ABC (Manx), 1998 US Dist. Lexis 2265 (C.D.Cal, Jan 30, 1998)
  123. Chissick & Kelman Electronic Commerce: Law and Practice (1999) 192
  124. Futuredontics Inc. v Applied Anagramatics Inc. 97-56711, 1998 US App Lexis 17012 (Ninth Cir., July 23, 1998)
  125. Smith Internet Law and Regulation 2 ed (1995) 31 (Back)
  126. Roditti Computer Contracts Negotiating Drafting (1998) 11A­13, Smith Internet Law and Regulation 2 ed (1995) 32
  127. Roditti Computer Contracts Negotiating Drafting (1998) 11A­13
  128. section 12(1)(a) & 15(4)
  129. section 19B(2)
  130. see 2 (Back)
  131. section 19B(2)(a)
  132. Smith Internet Law and Regulation 2 ed (1995) 32
  133. Smith Internet Law and Regulation 2 ed (1995) 33
  134. section 23(1)
  135. 839 F Supp 1552 (M.D.Fla. 1993) (Back)
  136. 907 F Supp 1361 (N.D.Cal. 1995); Rosenoer Internet infringement www.cyberlaw.com/cylw0495.html
  137. 1997 WL 709747 (N.D. Ill. November 13, 1997)
  138. Raysman & Brown Internet Copyright Developments 1998 The New York Law Journal www.ljx.com/internet/0210ircpdev.html
  139. EIPLR 10 January 1997 63
  140. 1997 US Dist Lexis 19310 (N.D. Ohio, November 25, 1997) (Back)
  141. 12 March 1996 [Mediaforum 1996/4]
  142. section 1
  143. subsection 6­11B
  144. see 1.1
  145. section 24(1) (Back)
  146. section 24(1A)
  147. section 24(2)
  148. The Prime Software v Commercial and Industrial Computer Systems 632 JOC (W) at 638
  149. Smith Internet Law and Regulation 2 ed (1995) 33, Dean Handbook of South African Copyright Law (1998) 1­76 (Back)