UNIVERSITY OF LUSAKASCHOOL OF LAW

COMPUTER NUMBER: LLB 0121029COURSE CODE: L340COURSE: Intellectual Property LawDUE DATE: 10/11/2014LECTURER: Mr Kanja

INTRODUCTIONCopyright is a form of intellectual property (as patents, trademarks and trade secrets are), applicable to any expressible form of an idea or information.[footnoteRef:1] Copyright is defined as a right granted for the protection of literary, dramatic, musical and artistic works and other works resulting from the authors own intellectual creation. Copyright is a legal right that is created by the law of a country. It entitles the owner of a creation the exclusive right to use the work as he/she wishes. It is usually given for a limited time, with the intention of enabling the creator (e.g. the photographer of a photograph or the author of a book) to receive compensation for their intellectual effort. [1: World Intellectual Property Organization. "Understanding Copyright and Related Rights" (PDF). WIPO. P. 67]

Copyright like any other legal right can be infringed, and thus his paper seeks to discuss how copyright infringement is addressed or dealt with in Zambia and around the world.

COPYRIGHT INFRINGEMENTThe 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 prevent others from using the work without his authorization.[footnoteRef:2] Copyrightinfringement occurs when an individual other than the copyright holder violates one or more of the copyright holders exclusive rights to a work. Those rights are the right to reproduce the copyrighted work, to make derivative works of the copyrighted work, to distribute the copyrighted work, to perform the copyrighted work, and to display the copyrighted work. Again, if one or more of those exclusive rights is violated, the violator will have infringed upon the copyright of the copyright holder.[footnoteRef:3] The act of piracy is a common copyright infringement act, where the exclusive rights of the holder are infringed for commercial gain.[footnoteRef:4] However a person will not infringe copyright in a work if the person performs an act that is not restricted or controlled by the copyright owner. Furthermore, infringement is said not to have occurred if an act is not prohibited by the statute e.g. recording a movie on your Personal Video Recorder (PVR) decoder to watch later. [2: Kanja, G. M. (2006) Intellectual Property Law, 1st Ed. P. 133] [3: www.intellectual-property.legalhelp.org/copyrights/copyright-infringement/ (accessed on 6/10/14)] [4: Kanja, G. M. (2006) Intellectual Property Law, 1st Ed. P. 134]

TYPESThere are two types of copyright infringement. These are discussed below:1. Primary InfringementFor primary infringement to occur, there must have been a direct infringement by a person of an exclusive right. This is an infringement of copyright done by any person without the consent of the owner of the copyright, anything that by copyright law only the owner of the copyright has the right to do.[footnoteRef:5] It arises where one performs any of the acts restricted or controlled by copyright such as copying or reproducing the work.[footnoteRef:6] [5: Hugues G. Richard, PRIMARY AND SECONDARY COPYRIGHT INFRINGEMENT, LEGER ROBIC RICHARD, L.L.P, www.robic.ca] [6: Kanja, G. M. (2006) Intellectual Property Law, 1st Ed. P. 136]

2. Secondary InfringementSecondary infringement will arise where one deals commercially in infringed copies of copyright works such as selling pirated musical cassettes, compact discs (CDs) or videos or DVD, without the consent of the copyright owner. Copyright can also be infringed vicariously.[footnoteRef:7] This means a person can be held liable for the infringing acts committed by another if he/she had the ability to control the infringing activities and had a direct interest in such activities.[footnoteRef:8] [7: A&M Records v. Napster Inc. 239 F.3d 1004 (US Court of Appeal 9th Circuit, 2001)] [8: www.law.cornell.edu (accessed 7/11/2014)]

ADDRESSING COPYWRIGHT INFRINGMENT 1) ZAMBIASection 17 of the Copyright and Performance Rights Act provides that the owner of a work where copyright subsist shall have exclusive right to do or to authorise others to do the following acts or controlled acts: (i) to copy or reproduce the work; (ii) to publish or issue copies to the public; (iii) to perform, show or play the work in public, (iv) to broadcast the work or include it in a cable programme; (v) to make an adaptation of the work or do any of the above in relation to an adaptation.[footnoteRef:9] In Zambia this is the legal framework that has been put in place in order for society to address the issue of copyright infringement. This legal framework has prescribed the manner through which copyright infringement maybe dealt with. [9: Kanja, G. M. (2006) Intellectual Property Law, 1st Ed. P. 187]

Therefore, if anyone does or allows another to do any of the listed restricted by copyright law without the permission, contractual or otherwise, by the copyright owner will infringe copyright subsisting in a work. Part 3 of the Copyright and Performance Rights Act enforces copyright. In order to enforce copyright the Copyright and Performance Rights Act categorises the means though which enforcement maybe undertaken namely: (i) Conservatory or provisional measures (ii) civil remedies (iii) criminal sanction and Measures to be taken at the border.[footnoteRef:10] [10: Kanja, G. M. (2006) Intellectual Property Law, 1st Ed. P. 187]

i. Conservatory or provisional measuresSection 27[footnoteRef:11] Copyright and Performance Rights act states: [11: Section 27 Copyright and Performance Rights Act.]

The owner of the copyright in a literary or musical work, compilation, audio-visual work or sound recording, may, if the work has been published, give notice in writing to the Controller of Customs that he is the owner of the copyright in the work; and that he requests the Controller to treat as prohibited goods, during the period specified in the notice, copies of the work which are infringing copies.The courts are given the discretion to order that provisional measures be carried out without advance notice of the infringer. Obtaining and preserving evidence is very crucial if a copyright owner is to prove infringement of their work. In most cases the person who infringes another work upon the realisation that they might be sued for infringement, the infringer resorts to destroying the copyright work so that they may not be incriminated. It is therefore the copyright owners right to apply for a search order from the court if a copyright owner believes his works are being infringed.The case of Anton Piller AG v. Manufacturing Process Limited[footnoteRef:12] further illustrates this measure where the appellants were about to launch a new product and feared that details of it might get into the hands of competitors if the respondents were forewarned that the appellants were aware of the respondents breaches of confidence. Anton Piller commenced ex parte proceedings seeking an injunction to restrain copyright infringement as well as a court order to permit entry to the respondent's premises to search and remove all confidential information owned by the appellants. The injunction was granted but the order for inspection and removal was refused. The appellants appealed the denial of the latter order. In the Court of Appeal the order was granted. From this initial order has grown the jurisprudence on Anton Piller orders, commonly known as civil search warrants. [12: [1976] 1 Ch. 55]

ii. Civil remediesSection 25 of the Copyright and Performances Rights Act provides that copyright infringement is actionable in the court at the suit of the owner of the copyright. The section goes further and lists the remedies as being damages, injunctions, accounts of profits and right to delivery up. It is worth stating that in an action for copyright infringement, proof of actual damage shall not be required. Besides, the plaintiff shall not be entitled to damages if the defendant shows that he reasonably believed that no copyright subsisted in the work.[footnoteRef:13] In addition, no injunction shall be issued which requires a completed or partly built building to be demolished or which prevents the completion of a partly built building.[footnoteRef:14] In cases of copyright infringement the plaintiff is entitled to cumulative remedies as was established in the case of Sutherland Publishing Company Limited v. Caxton Publishing Company Limited[footnoteRef:15]. [13: Section 25 (4) Copyright and Performance Rights Act.] [14: Section 25 (5) Copyright and Performance Rights Act.] [15: [1936] 1 All ER 186]

a) DamagesDamages are similar to those given in the law of tort. Normally a Claimant in a copyright infringement case will seek damages (compensation) from the Defendant. In Claydon Architectural Metalwork Limited v. DJ Higgins and Sons[footnoteRef:16], secondary damages associated with cash flow problems caused to the claimant by the defendants acts were held to be too remote. The damages allocated for copyright infringement should be allocated on the basis of the profits that the copyright owner would have derived from the sales lost as a result of the infringement. Courts may at times grant ordinary damages plus further damages to punish the infringer. Punitive or exemplary damages for copyright infringement aim to punish for flagrant, scandalous or deceitful conduct and to deter future infringement. [16: [1997] FRS 475]

b) Injunction An injunction is a Court order requiring a person to do an act or prohibiting them from doing an act. Normally in a copyright infringement claim the copyright owner will seek an injunction restraining any further copyright infringement.[footnoteRef:17] In addition to an injunction, the court would grant damages. [17: www.inbrief.co.uk/intellectual-property/copyright-infringement-remedies.htm (Accessed on 8/11/14)]

In cases of urgency or where there is a likelihood that the Defendant will hide or destroy evidence of the copyright infringement the Court may grant an interim injunction without the Defendant having notice of the application.[footnoteRef:18] [18: www.inbrief.co.uk/intellectual-property/copyright-infringement-remedies.htm (Accessed on 8/11/14)]

An injunction against infringing items may be granted, even where the plaintiff would suffer no loss from a continuing infringement. This was established in the case of The Queen v. James Lorimer and Company Limited[footnoteRef:19] where the learned trial judge granted an injunction and stated that in exercising his discretion to refuse the injunctive relief, the learned trial judge found persuasive the facts that the infringement had not adversely affected the revenue deriving from its sales as well as the unusual character of the appellant as a plaintiff. It should further be noted that an injunction is a discretionary remedy. [19: (1984) 77 CPR 2d 262]

c) Acts of ProfitSection 26[footnoteRef:20] of the Copyright and Performance Rights Act allows the court to allow successive claimants, usually as an alternative to damages, to recover the net profits or account of profits that the infringer made from the copyright infringement. The purpose of the accounts of profit is to prevent the infringers from enriching themselves at the expense of the copyright owner. This was illustrated in the case of Sheldon v. Metro-Goldwyn Pictures Corporation[footnoteRef:21]. [20: Section 26 Copyright and Performance Rights Act.] [21: 106 F. 2d 45 (US Court of Appeals, 2nd Circuit, 1939)]

d) SeizureWhere infringing material is being sold or hired out the copyright owner has the right to seize the infringing material or authorise another person to seize it on his behalf.The right to seize infringing material includes right to enter premises to which the public has access but anything in the possession, custody or control of a person at a permanent or regular place of business of his cannot be seized and there is no right to use any force. Section 33 (1)[footnoteRef:22] of the Copyright and Performance Rights Act provides for issuance of search warrants and Seize of Infringed Copies or Articles. Warrants are issues by the Magistrate court to authorise police officers to enter and search any house or premises and seize any suspected infringing copies or articles. The Act requires any police officer who conducts a search and seizes anything to produce the same before the Magistrate within forty-eight hours after the seizure.[footnoteRef:23] [22: Section 33(1) Copyright and Performance Rights Act.] [23: Section 33 (2), Copyright and Performance Rights Act.]

e) Border MeasuresThe Copyright and Performance Rights Act entitles a copyright owner to request the controller of customs to prohibit the importation of copies that infringe his copyright in the work. Section 27[footnoteRef:24] of the Act provides that the owner of the copyright in a literary or musical work, compilation, audio-visual work or sound recording, may, if the work has been published, give notice in writing to the Controller of Customs that he is the owner of the copyright in the work, and that he requests the Controller of Customs to treat as prohibited goods, copies of the work which are infringing copies, during a period of five years or the remainder of the duration of the copyright, whichever is less. The Controller of Customs in most instances might require the copyright owner to produce evidence to support such a notice as prescribed by section 27 (3) of the act. Section 27 (4) of the Act states that where the Controller of Customs is satisfied that there is a reasonable probability that attempts may be made to import infringing copies of the work, and that it is in the public interest that the copies be made prohibited imports, he shall issue a notice in the gazette to the effect that, during the period specified in the application infringing copies of the work concerned shall be prohibited imports. During the specified period a person shall not import infringing copies of the work concerned, otherwise than for domestic and private use, and any infringing copies so imported shall be subject to forfeiture. [24: Section 27, Copyright and Performance Rights Act.]

f) Criminal OffencesSection 28 (1)[footnoteRef:25] of the Copyright and Performances Rights Act lists down acts that are to constitute criminal offences in relation copyright infringement. These acts include: [25: Section 28(1) Copyright and Performance Rights Act.]

making for sale or hire infringing copies distributing infringing copies by way of trade, exhibiting in public any infringing copy making or having in possession any article used or intended to be used for the purpose of making infringing copies importing into Zambia, otherwise than for private and domestic useAny person shall, unless he satisfies the court that he acted in good faith and had no reasonable grounds for supposing that the copyright would or might thereby be infringed, be guilty of an offence and shall be liable on the first conviction.Section 28 (2)[footnoteRef:26] of the Copyright and Performances Rights Act criminalises acts relating to articles specifically designed or adapted to make copies. The section provides that a person who makes or imports for sale or hire any article specifically designed or adapted to circumvent the operation of a device or system designed or adapted to prevent or control the reproduction of a recording of a work shall be guilty. The receiving of illegal programme included in a broadcast or programme service is illegalised by Section 28(3)[footnoteRef:27] of the Act. [26: Section 28(2) Copyright and Performance Rights Act.] [27: Section 28(3) Copyright and Performance Rights Act.]

2) INTERNATIONALLYThe Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) is an international agreement under the World Trade Organization that handles matters of intellectual property. Part 3 of the Agreement of this agreement effectively prescribes means on how member states ought to address the issue of copyright infringement. Article 41 (1) of TRIPS provides that Members shall ensure that enforcement procedures as specified in this Part are available under their law so as to permit effective action against any act of infringement of intellectual property rights covered by this Agreement, including expeditious remedies to prevent infringements and remedies which constitute a deterrent to further infringements. These procedures shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse. Part 3 Section 2 of TRIPS prescribes civil and administrative procedures and remedies while Part 3 Section 3 of TRIPS relates to use of provisional measures.Other international instruments that address the issue of infringement include the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention), the Universal Copyright Convention (UCC), the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (Rome Convention), the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT).

CONCLUSIONThis paper has shown that copyright infringement is best addressed by enforcement undertaken through Conservatory or provisional measures, civil remedies, seizures, criminal sanction and Measures taken at the border. It has also discussed how copyright infringement is addressed internationally. This paper has clearly demonstrated that copyright infringement in any jurisdiction like Zambia is best addressed in a countries domestic legislation where international instruments such as the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) set a minimal threshold for enforcement procedures to laid down I domestic legislation.Enforcement of copyright infringement is very similar in most jurisdictions.

BIBLIOGRAPHYBooksKanja, G. M. (2006) Intellectual Property Law, 1st Ed: University of Zambia PressWorld Intellectual Property Organisation (2004) WIPO: Intellectual Property Handbook Policy Law and Use, 1st Ed: WIPO PublishersCasesA&M Records v. Napster Inc. 239 F.3d 1004 (US Court of Appeal 9th Circuit, 2001)Anton Piller AG v. Manufacturing Process Limited [1976] 1 Ch. 55.Claydon Architectural Metalwork Limited v. DJ Higgins and Sons [1997] FRS 475Sheldon v. Metro-Goldwyn Pictures Corporation 106 F. 2d 45 (US Court of Appeals, 2nd Circuit, 1939).Sutherland Publishing Company Limited v. Caxton Publishing Company Limited 1936] 1 All ER 186The Queen v. James Lorimer and Company Limited (1984) 77 CPR 2d 262StatutesCopyright and Performance Rights Act Cap 406 of The Laws of The Republic of ZambiaWebsiteswww.inbrief.co.uk/intellectual-property/copyright-infringement-remedies.htm (Accessed on 8/11/14)www.intellectual-property.legalhelp.org/copyrights/copyright-infringement/ (accessed on 6/10/14)www.law.cornell.edu (accessed 7/11/2014)

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