MAVANGIRA
JA:
INTRODUCTION
1,
This
is an appeal against the whole judgment of the High Court dismissing
the appellant's application, filed on 10 November 2017, for a
permanent interdiction of the respondents from producing and
broadcasting the television show known as Simba Savannah, which the
appellant claimed to be “infringing or exploiting (its) right to
the copyright, trademarks and all other intellectual rights in and
to the television show Format known as Dragon's Den.”
2.
The
order that the appellant sought in the court a
quo
was couched in the following terms:
“1.
The application be and is hereby granted.
2.
The 1st
and 2nd
Respondents, their officers, directors, agents, servants, employees,
representatives,
attorneys, related companies, successors, assigns, and all others in
active concert or participation with them, are each and both
immediately and permanently interdicted from producing and
broadcasting the television show known as Simba Savannah or any such
derivative work adapted or based on the Dragon's Den format.
3.
The
1st
and 2nd
Respondents be and are hereby each ordered to account to Applicant,
together with the supporting documents including, but not limited
to, contracts for all gains, profits, and advantages derived by 1st
and 2nd
Respondents by their development, production, promotion,
broadcasting and/or any other exploitation of the television show
known as Simba Savannah;
4. The
1st
and 2nd
Respondents be and are hereby ordered to deliver to the Applicant for
destruction all digital and/or physical copies of episodes of Simba
Savannah, including without limitation, any development materials
and/or advertising and other promotional material in the possession
of each Respondent, within forty-eight (48) hours of the granting of
this Order failing which the Sheriff of Zimbabwe and/or his lawful
deputies be and are hereby directed to enter into 1st
and 2nd
Respondents'
respective premises from wherever such goods are located and seize
for destruction all such digital and/or physical copies of episodes
of Simba Savannah, including without limitation any development
materials and/or advertising and other promotional material in the
possession of each of the Respondents;
5.
The Applicant be and is hereby authorised to take possession of
the digital and
physical
copies of all episodes of Simba Savannah, including without
limitation,any
development materials and/or advertising and other promotional
material in the possession of each of the Respondents.
6.
The 1st
and 2nd
Respondents shall, jointly and severally the one paying the other to
be
absolved, pay the Applicant's Costs of this suit on the legal
practitioner and client scale.” (the emphasis is added)
3.
In this appeal the appellant contends that the court a
quo
erred and misdirected itself in dismissing its application and seeks
the setting aside of the court a
quo's
judgment
and the substitution thereof with an order granting the relief that
it sought as reproduced above.
FACTUAL
BACKGROUND
A.
THE
APPELLANT'S CASE
1.
It
will be necessary for the purposes of this judgment to set out in
some detail the case
that
was presented to the court a
quo
by the appellant.
5.
The Appellant was identified by the deponent to the founding
affidavit filed in the court a
quo
as “a television production and distribution studio with company
registration number 02719242.” It was said to hold “the exclusive
right to license, adapt, produce and exploit a copyright protected
audio-visual work being a reality television format program known as
'Dragons'
Den (hereinafter 'Dragons' Den' or
'the Format)'”.
The deponent to the founding affidavit further stated that “(T)he
Format is an original work by Nippon Television Network Corporation,
a company duly incorporated in accordance with the laws of Japan”
and that it features entrepreneurs pitching their business ideas in
order to secure investment finance from a panel of venture
capitalists in exchange for equity in their businesses. She also
stated that “The Format originated in Japan as “Money
Tigers or Tigers of Money.”
6.
It was also the appellant's averment that since 2002, “local
versions of the Format” have been produced and transmitted in over
30 countries by authorized licensees, the appellant included. In some
countries more than one version has aired and the most popular name
for the show is “Dragons' Den”, a name that originated in the
United Kingdom. There have been variations to the name, with some
being titled “Shark Tank”, a name that originated in the United
States of America. “Lions' Den” was said to be another
variation of the name. In versions where the name of the show
contains a predator's name, the investors are referred to as that
predator. It was averred that the “Dragons' Den Format” has
attained “strong recognition” in North America, South America,
Australia, Asia, Europe and Africa.
7.
The deponent to the founding affidavit proceeded to enumerate
what she described as the distinct elements of the
“Dragons'
Den Format.” Seven elements are listed as follows:
(a)
the
participants are generally product designers or service operators
who have what they consider to be a viable and potentially very
profitable business idea, but who lack funding and direction.
(b)
the
participants pitch their business idea to established local business
investors for funding, in exchange for equity in their businesses.
(c)
globally
the licensees of Dragons' Den have referred to their local
investors as 'Dragons' 'Tigers' 'Sharks' or 'Lions',
with 'Lions' being used in Kenya, Denmark, Germany and Finland.
(d)
the
“Format's titles” as localised around the world, have a
particular and distinctive form and content, namely, (1) the animal
predator that is top of the local food chain and (2) the place or
location in which that animal presides, hence “Dragons Den”,
“Lions' Den” “Shark Tank.”
(e)The
investors are positioned in one row, seated side by side. The
entrepreneur then enters the studio and stops, next to his or her
product which is pre-placed, facing the investors.
(f)
after
the entrepreneur's pitch, the investors engage in a “lively
debate like style” and at the end each investor declares “I'm
in” or “I'm out” as an expression of his or her decision on
whether or not to invest in the entrepreneur's product and/or
service.
(g)
lastly,
Dragons' Den features a post-pitch interview with each
entrepreneur. The interview takes place backstage, behind the scenes
“along with voiceover to narrate the story.”
8.
It was averred that it came to the appellant's attention that a
television reality show under the title “SIMBA SAVANNAH”, was
being broadcast in Zimbabwe by the second respondent every Sunday
evening during the 7:00pm prime time slot and that the show was
produced by the first respondent. Thirteen episodes of the show
(collectively referred to as “Season 1”) had already been
broadcast as at the date of the institution of the proceedings a
quo
and a call for applications or pitches for Season 2 of the show was
being advertised on the first respondent's website. In addition,
Season 1 of the show was also readily accessible and downloadable
from YouTube, a popular video sharing website which is accessible
worldwide. The site was said to have “800 million unique users and
visitors each month.”
9. It
was contended on behalf of the appellant that “Simba Savannah”
was “an unauthorised adaptation of, and is based on and/or
incorporates elements of, the 'Dragons' Den Format'.” It was
also contended that the first respondent “blatantly reproduced
and/or incorporated several elements from the “Dragons' Den
Format” including without limitation, its title, studio set,
episode sequence, stage design, staging sequence, manner in which the
pitches and responses are presented and filmed, music, voiceover and
post-pitch interviews thereby creating an entirely similar look and
feel as the instantly recognisable Dragons' Den Format.” It was
further contended that “Simba Savannah” replicates Dragons'
Den's “expression” and that it is neither original nor uniquely
Zimbabwean. Furthermore, that the first respondent deliberately chose
to mimic the Format and cause confusion in the minds of consumers.
The first respondent, it was contended, did not choose a unique title
based on business in Zimbabwe but chose “Simba Savannah” “in
order to pass off its program under “the Format” in aid of taking
advantage of the goodwill behind the Sony brand.”
10.
It was also contended that Simba Savannah is confusingly similar to
Dragons' Den and “suggests an association between the appellant
and the respondents “in respect of the Dragons' Den Format.”
Furthermore, that the respondents had derived direct benefit from the
international reputation and established goodwill “inherent in the
Dragons'
Den Format.”
11. It
was averred that the respondents did not seek permission or licence
from the appellant “in respect of the use of the Dragons' Den
Format” and that the appellant does not consent to such use,
reproduction or exploitation. It was stated that it, in fact,
sometime in June 2016, “licensed the Format to Invision Studios
(Pvt) Ltd in Zimbabwe” and that to its knowledge, the second
respondent was aware of this licence but proceeded with the broadcast
of Simba Savannah, regardless. The Appellant disapproved this
reproduction or exploitation.
12.
It was also stated that on 12 August 2016 the appellant served the
respondents with “a cease and desist” letter requesting them to
respect its copyright and intellectual property rights. In its
response the first respondent declined to comply with the request and
indicated its intention to continue with its conduct. The second
respondent also declined to comply with the request and advised that
it would only do so when so enjoined by the court. The appellant
served the respondents with a further “cease and desist” letter
dated 21 December 2016. However, no indication is made as to whether
the second letter was responded to.
13. It
was further stated that the appellant had thus had to resort to
filing the application through which it sought “to immediately stop
1st
and 2nd
Respondents from continuing their injurious actions from which it has
suffered irreparable and incalculable harm, and which will continue
unless the respondents are enjoined from further abuse of its
copyrighted material and unauthorised adaptation and use of the
Dragons' Den Format.”
14. Regarding
the requirement of establishing a clear right to a permanent
interdict, it was averred in the founding affidavit that the
“Dragons' Den Format” is a legally protected copyright work and
that Simba Savannah is an unauthorised derivative work violating
sections 13 and 19 of the Zimbabwe Copyright and Neighbouring Rights
Act [Chapter
26:05]
(the Act). It was further averred that the appellant being the holder
of an exclusive licence “to the copyright, trademark and all
intellectual property rights in and to the Dragons' Den Format was,
therefore, entitled in terms of sections 51 to 53 of the aforesaid
Act, to the relief sought as its rights are concurrent with the
rights and remedies of the owner of the copyright under which its
licence was granted.”
15.
The averment was also made that Simba Savannah, as an unauthorised
derivative work, violates Article 2 of the Berne Convention for The
Protection of Literary and Artistic Works, to which Zimbabwe is a
signatory. Furthermore, that the appellant's rights to the
copyright “in and to the Dragon's Den Format are protected in
Zimbabwe by virtue of Regulation 17 of the Copyright and Neighbouring
Rights Regulations, 2006 [Chapter
26:05]”
(sic) which recognises for protection, works originating from any
member of the Agreement on Trade Related Aspects of Intellectual
Property (TRIPS) Agreement with Japan, United States of America,
United Kingdom and Zimbabwe, all being signatories to the treaty.
16.
The contention was also made that, in the alternative, the facts set
out above support a claim of passing off by the first respondent, of
the appellant's “licensed and copyrighted work.” It was
contended that the passing off of Simba Savannah has caused confusion
amongst or in the minds of viewers in Zimbabwe as demonstrated by
local news articles in Zimbabwe where members of the Zimbabwean
public have drawn comparisons to the “instantly recognisable
Dragons' Den Format, this being due to the glaringly obvious
similarities between Simba Savannah and Dragons' Den.” This, it
was contended, had misled the public to believe that Simba Savannah
is based on Dragons' Den and that it was produced under licence
from the appellant. This presumed association, it is contended, is in
fact a benefit derived by the respondents from the appellant's
international reputation and established goodwill, resulting in
damage to the appellant's intellectual property and recognised
brand.
17.
The appellant claimed that the respondents' continued production
and broadcasting of Simba Savannah will continue to cause confusion
and was likely to deceive viewers regarding the “origin,
affiliation, association, connections and/or endorsement of the
respondents' actions.” Consequently, it was entitled to an
injunction or interdict prohibiting further violations of its rights
by the respondents. If the relief sought was denied, it was averred,
the appellant's rights to “the Dragons' Den Format would have
been irreversibly and irreparably disregarded or defied. No amount of
monetary damages would adequately compensate the appellant or its
licensees for the damage to their “rights, business, positive
reputation and goodwill.” The appellant thus had no other remedy
but to institute the proceedings, it was contended.
18.
The above sets out the material facts on the basis of which the
appellant felt that it was entitled to the relief that it sought in
the court a
quo
as reflected in para 2 of this judgment.
B.
THE
RESPONDENTS' CASES
(i)
THE
FIRST RESPONDENT
19.
The first respondent, in opposing the application, stated inter
alia:
“While
Applicant may be the exclusive licensee of the audio visual work
known as Dragons' Den, 1st
Respondent denies that the 'format' is an audio visual work as
defined in the Copyright and Neighbouring Rights Act
[Chapter
26:05].
(a)
1st
Respondent has no knowledge of the alleged productions and
transmission of
the
'format' and contends that what was produced was the program, not
the format.
(b)In
any case, 1st
Respondent maintains that the format of a television show is not an
audio
visual work. Consequently, a format cannot be protected as a
copyright work and use of a format which has some similarity with
such format does not constitute copyright infringement.
(c)
Further,
the name of the show is not a copyrightable work, and the fact that
where
the
name contains a creature's name, the investors are referred to as
such creature only demonstrates that the idea of an animal name to
designate its show by 1st Respondent
is what aggrieved the applicant. Applicant is complaining about the
use of an idea, yet ideas are not protected under the law of
copyright.
(d)
I
am advised… that ideas, methods of operation, concept(s) are not
eligible for
copyright
even if they are explained, illustrated or embodied in a work. I
therefore submit that the features allegedly infringed are mere ideas
or concepts which cannot be protected under copyright law. Applicant
therefore has no exclusive rights in any of the alleged
elements
of the format.”
20.
It was also the first respondent's stance that Simba Savannah was
not an adaptation of Dragons' Den. It also argued that going by the
definition of “adaptation” in the Act, “it is not possible for
an audio visual work to be adapted into another audio visual work.”
Furthermore, that even if it was to be assumed, for argument's
sake, that Simba Savannah was based on Dragons' Den, this would not
constitute infringement of copyright. The first respondent denied
that Simba Savannah incorporated or reproduced any elements of the
“Dragons' Den Format.”
The
deponent to the opposing affidavit further stated “(T)he title
Studio set, episode sequence, stage design, staging sequence and all
other elements stated in this paragraph are not copyright works.”
Furthermore, that “the basis of Dragon's Den as set out…
clearly shows that it is not a copyright work but an idea or
concept.” It was also argued that the Appellant did not prove
goodwill or any damages suffered by it.
21.
It was contended in the first respondent's opposing affidavit
that the appellant itself was not clear as to how its intellectual
property rights were allegedly violated as it was not clear whether
it claimed copyright infringement or trademark infringement. It is
not clear whether the claim is for infringement of copyright or it is
for passing off. It denied ever using the appellant's Dragons'
Den Format
“as
alleged or at all.”
It also denied having derived any benefit from the alleged
international reputation and the claimed goodwill of the Dragons'
Den Format.
22.
The first respondent further contended that the appellant had not
demonstrated that it had copyright “in the alleged format of
Dragons' Den” as it had placed nothing on the record to establish
the existence of such copyright. As the appellant claimed to enjoy
copyright in its “format” in the United States of America, it
ought to have attached proof of deposit of its copyright work with
the United States Patents and Trade Marks Office (USPTO) where there
is a depository system.
23.
The first respondent thus denied infringing any of the appellant's
intellectual property rights as alleged or at all. It denied that it
obtained a direct financial benefit from airing Season 1 of Simba
Savannah and denied that it was unjustly enriched as alleged or at
all. It commented on the appellant's contention that it is entitled
to an interdict because, inter
alia,
the first respondent “has already shown its intention to continue
with the copied and/or created derivative works from the Dragons'
Den Format
by
calling for pitches for Season 2.” The first respondent's comment
was that the appellant's statement that “the copied and/or
created works are unauthorised” showed lack of understanding on the
part of the appellant or its advisors as the first respondent did not
need the appellant's authorisation to create its own work, “no
matter how similar that work may appear”, as long as it had not
copied the appellant's work.
24.
The first respondent also contended that sections 51 to 59 of the
Act availed other effective remedies to the appellant but the
appellant had chosen to disregard them and opted to seek a permanent
interdict because it had no evidence to sustain its actions and to
attain such remedies. The appellant was thus abusing court process to
intimidate and harass legitimate competitors.
25.
It was also the first respondent's stance that the appellant
ought to have demonstrated that the “Format”
is
a 'work' as defined in the Act but had failed to do so. The
'format' of a television program, it argued, “does not fit in
the definition of 'work' set out in the Act.” Simba Savannah is
not an adaptation of any protected audio-visual work which can be
infringed. At most, it is a concept and concepts are excluded from
copyright protection by section 10(4) of the Act.
26.
The first respondent further contended that besides failing to
establish one of the essential requirements for the granting of a
permanent interdict, some of the relief sought in the other
paragraphs of the Draft Order had not been claimed or founded
anywhere in the founding affidavit. This, it claimed to be an
indication that the appellant was on a fishing expedition and that it
was not sure what it was that it was seeking from the court.
(ii)
THE
SECOND RESPONDENT
27. The
second respondent did not oppose the application.
THE
DECISION OF THE COURT A
QUO
28.
The court a
quo
dismissed the Appellant's application. It found that the
appellant's claim related to more of a concept or an idea and not
to an audio visual work. It found that there had therefore not been
any infringement of copyright. With regard to passing off it found
that the first respondent had not misrepresented that Simba Savannah
was Dragons' Den. It also found that there was no proof that the
appellant enjoyed a reputation in the format, form and presentation
of its television program. Neither had the appellant proven goodwill
in its program known as Dragons' Den. It reasoned that the
protection which copyright gave created a monopoly and there had to
be certainty in the subject matter of the copyright, which subject
matter the appellant had failed to establish.
29.
The court also held that the appellant did not have a clear right
in the circumstances. It further held that having established that
Dragons' Den was not an audio visual work, the appellant could thus
not suffer any prejudice through the infringement of a non-existing
copyright. It held that the appellant could institute criminal
proceedings against the respondents in accordance with section 59 of
the Act, and that there was therefore, another remedy which the
appellant could pursue. The court a
quo
took the view that the relief sought by the appellant, of a permanent
interdict, could not be granted as its requirements had not been
satisfied. It found that the appellant had failed to prove that it
had goodwill in its programme or that it enjoys a reputation. It
dismissed the application.
30.
Aggrieved by this decision, the appellant noted an appeal to this
Court on the following grounds:
GROUNDS
OF APPEAL
1.
The
learned judge in court a
quo
erred
in finding that Appellant's programme (Dragons Den) was not an
audio visual work within the meaning of that expression as utilized
in the Copyright and Neighbouring Rights Act [Chapter
26:05].
2.
In
any event, the learned judge erred in finding that Appellant had not
established a clear right.
3.
The
learned judge in (the) court a
quo
misdirected
himself on the facts and
erred in finding that Appellant had not established goodwill in
respect of its programme.
4.
The
learned judge in court a
quo
misdirected
himself on the facts and erred in finding that there were no
sufficient similarities between the two programs so as to establish
passing off.
5.
The
learned judge in court a
quo
erred
in failing to have regard to the provisions of the Berne Convention
for the Protection of Copyright Works in determining Appellant's
rights.
RELIEF
SOUGHT
Appellant
seeks the following relief:
1.
The
appeal be and is hereby allowed with costs.
2.
The
judgment of the court a
quo
be
and is set aside and the following is substituted:
“The
application succeeds and an order is made terms of the Draft Order
attached to the application.”
THE
APPELLANT'S SUBMISSIONS BEFORE THIS COURT
31.
Before this Court Mr Girach,
for
the appellant, made the following submissions. The court a
quo
erred in finding that the television program Dragons' Den was not
an audio visual work. It in fact is an audio visual work in respect
of which copyright is held by the appellant and which the first
respondent has wrongfully and unlawfully adapted in contravention of
the Act. The court a
quo
failed to have regard to the provisions of the Act which in section 2
defines “audio-visual work.” A television program is an
audio-visual work. The court a
quo
ought to have examined whether Simba Savannah constituted an
adaptation but it failed to do so. It ought to have had regard to the
similarities between Dragons' Den and Simba Savannah that were
highlighted by the appellant in its founding affidavit and that is
where the inquiry ought to have ended, with a finding that Simba
Savannah is a clear and straightforward breach of copyright.
32.
It was counsel's further submission that the court a
quo
ought not have had regard to the New Zealand case of Green
Broadcasting Corporation of New Zealand
[1989] ALL ER 1056 (Green's
case) as the case is inapplicable to the matter that was before it
for two reasons. Firstly, the appellant in that case claimed damages
for passing off and infringement of copyright in television scripts
and dramatic format of his program. Secondly, the expression
“audio-visual work” is not defined in the New Zealand Copyright
Act, unlike the Zimbabwean Act which has defined it. If the court a
quo
had had regard to the Zimbabwean Act which provides that copyright
(which is defined) exists in an audio-visual work and which also in
section 19 prohibits an adaptation thereof, it would have come to a
different conclusion. Furthermore, Green's
case was a trial action and was not argued on the papers as happened
in
casu.
In any event, Green's case involved a dramatic work.
33.
Counsel submitted that on a proper interpretation of the case of
Banner
Universal Motion Pictures Ltd v Endemol Shine Group Ltd & Anor
[2017] EWHC 2600 (Ch), it is clear that the appellant has a copyright
and that there has been an adaptation by the respondents. For that
reason, the appellant was entitled to an interdict by virtue of the
provisions of the Act.
34.
The further submission was made that the first respondent, besides
saying that Simba Savannah was uniquely Zimbabwean, had not said that
it was its original idea and had not explained where they got the
idea from. On the other hand, the appellant had set out in detail the
aspects which it alleged had been copied from Dragons' Den and this
found credence from press articles and reviews in which members of
the public likened Simba Savannah to Dragons' Den. The first
respondent had therefore caused irreparable harm to the appellant
which had no other remedy than the relief that it sought a
quo.
35.
It was also counsel's submission that the definition of
“adaptation” in the Act does not relate to audio-visual works and
that in
casu,
resort must therefore be had to the ordinary grammatical meaning of
the word. It was submitted that in any event, section 19 of the Act
vested in the owner of a copyright, the exclusive right to, inter
alia,
make or authorise the making of an adaptation of the work.
36.
With regard to passing off, counsel submitted that the court a
quo
applied the wrong test when it referred to the making of a
misrepresentation whereas the two requirements that must be
satisfied are reputation or goodwill (of the plaintiff) and the
likelihood of confusion (to members of the public).
THE
FIRST RESPONDENT'S SUBMISSIONS BEFORE THIS COURT
37.
Mr Nkomo,
for the first respondent submitted as follows.
The
critical question is what it was that the appellant complained of in
the court a
quo.
According to the founding affidavit, Dragons' Den is a television
program but the appellant complained of infringement of a television
format. What the appellant sought to protect was thus a television
format. The concept of a television format is alien to the Act.
“Format” does not appear in the definition section or any section
in terms of which different kinds of works are protected in the Act.
The appellant attempted to classify “format” as an original work
or an audio-visual work. A format cannot, however, fit into the
definition in section 2 of the Act, of an audio-visual work which, in
terms of the said definition, must be recorded or fixated, as would
be the case with a DVD, which contains moving images and sounds that
are embodied and fixated in that medium or an MP3 or MP4 that has
pictures and sounds together. That which the appellant alleged to
have been infringed has not been fixated and there was no allegation
in the founding affidavit that there was a medium which contains or
includes moving pictures and sounds that the first respondent
accessed and reproduced.
38.
Mr Nkomo
submitted that in para 24 of the appellant's heads of argument
there was a vacillation amongst three poles, these being (i) a
television program, (ii) a format and (iii) an audio-visual work and
that the appellant seemed to suggest that the three are synonymous,
when they are not. The primary question was whether or not copyright
can ever subsist in a television format in terms of the Act. In terms
of section 128 of the Act, the appellant's claim must find
residence in an identified section of the Act or any other statutory
provision and the appellant had failed in this regard. The idea or
concept of entrepreneurs pitching to potential investors cannot be
protected by the Act as section 10 which enumerates works that are
eligible for copyright, excludes such from protection by means of
copyright. The appellant's claim could not succeed as it was hinged
on an alleged adaptation of a format, which alleged adaptation is
alien to the Act.
39.
With regard to the case authorities in Green's
case (supra)
and the Banner
case (supra),
counsel submitted that what emerged therefrom was that in principle a
format may be protected as a dramatic work, but never as an
audio-visual work. The closest that a format comes to get copyright
protection is if it is in the form of a dramatic work. The appellant
failed to satisfy the criteria for such protection to be availed. In
casu,
there was no reproduction of any known copyrighted work.
40.
With regard to passing off, counsel submitted that where a litigant
fails to establish a misrepresentation, they cannot succeed in
establishing passing off. He also submitted that the reference by the
appellant to the Berne Convention for the Protection of Literary and
Artistic Works was misguided. The reason for this, he submitted, was
that it does not have direct application except as domesticated in
the Act.
THE
SECOND RESPONDENT
41.
The second respondent not having filed any opposing papers in the
court a
quo,
was not present or represented at the hearing of this appeal.
ISSUE
FOR DETERMINATION
42.
The issues for determination are aptly set out in the first
respondent's heads of argument as follows:
1.
Whether or not the appellant's programme, Dragon's den is
protected as an audio visual work in terms of the Copyright and
Neighbouring Rights Act, [Chapter26:05].
2.
Whether or not the appellant satisfied the requirements for a
permanent interdict.
3.
Whether or not the appellant satisfied the requirements for passing
off.
4.
Whether or not the provisions of the Berne Convention have direct
application in copyright disputes in Zimbabwe.
In
my view, the listed issues crystallise the questions that arise.
The
overarching issue of whether or not the court a
quo
erred
in dismissing the Appellant's application will be answered by the
determination made thereon.
THE
LAW AND ITS APPLICATION TO THE FACTS
43.
Despite the attempt at the beginning of the founding affidavit to
describe or classify Dragon's Den as an audio visual work, it is
clear from a perusal of the whole document that the appellant's
complaint pertained to the format of Dragon's Den. This is
demonstrated by the persistent and consistent use, inter
alia,
of the phrase “Dragon's Den Format” and the word “Format”
as reflected in the appellant's case as set out a
quo.
More pertinently, in para 14, in describing the nature of the
application that was before the court a
quo
the following is stated:
“NATURE
OF APPLICATION
14.
This is a Court Application in terms of Order 32 Rule 230 wherein the
Applicant seeks an Order to permanently interdict the 1st
and 2nd
Respondents from infringing or exploiting Applicant's right to the
copyright,
trademarks and all other intellectual property rights
in and to the
television show Format known as Dragon's Den.”
(the italics and the underlining are added)
44.
Para 14 thus identifies the nature of the application as one for
the protection of the format of a television show; such format being
known as Dragon's Den. In addition to this the founding affidavit
kept referring, in the main, to the format as the aspect that had
been adapted without authorisation and which it was claimed ought to
be accorded copyright protection by the court. Significantly, this
having been the nub of the appellant's case as pleaded, is the case
that the first respondent responded to in its opposing papers.
45.
The statutory framework which governs copyright issues is the
Copyright
and Neighbouring Rights Act
[Chapter
26:05].
Section 2 of the Act defines “audio-visual work” to mean “a
recording or fixation on any medium from which a moving image,
together with any sounds associated with the image, may be produced
by any means, but does not include a computer program or a
broadcast.”
46.
From this definition, for anything, excluding a computer program or
a broadcast, to qualify as an audio-visual work, it must be:
-
a
recording or fixation
-
on
any medium
-
from
which a moving image
-
together
with any sounds associated with the image
-
may
be produced (by any means).
47.
The Act defines “record” to mean “any disc, tape, perforated
roll or other device in or on which information is or can be embodied
so as to be capable, with or without the aid of some other
instrument, of being automatically reproduced.” I take it that 'a
recording' is to be construed accordingly and in conformity to the
said definition. The definition given to “sound recording” is
“means any fixation of sound on a record, but does not include a
sound-track associated with an audio-visual work” I do not think
that this definition is of any relevance in casu,
considering the facts of this matter. The Act also states, in the
interpretation section, that “fixation” “in relation to sounds,
means the embodiment of the sounds or representations of the sounds
in such a way that they can be heard, reproduced or communicated
through a machine or device.”
48.
The appellant's complaint, per
its pleadings, being about the format of the television show known as
Dragon's Den, there has been no demonstration or establishment that
the format is a recording or a fixation as contemplated by the Act.
49.
What the appellant alleges to have been infringed has neither been
shown to be a recording or a fixation on any medium from which a
moving image with sounds associated therewith may be produced and
which the first respondent accessed and reproduced. The appellant's
founding affidavit mostly refers to Dragon's Den as “the format”
while occasionally vacillating between calling it a format or an
audio visual work or a program. Before us Mr Girach
submitted that “the program Dragon's Den is an audio-visual
program in respect of which the copyright is held by the appellant
and in respect of which the first respondent has wrongfully and
unlawfully adapted in contravention … This television program is an
audio-visual work.” The vacillation, and sometimes conflation, is
also evident in para 24 of the appellant's heads of argument where
it is submitted as follows:
“To
hold as a matter of principle that a
television programme or unique format in the form of an original
audio visual work
is not
capable of being protected by copyright makes bad law.” (the
underlining is added)
50. However,
as noted earlier, the appellant's own characterisation of its
application a
quo
was that it was for the protection of the format of its television
show. There was a noticeable effort by the appellant's counsel in
addressing us, to steer the appellant's case away from the pleaded
claim of protection of a format, towards it being regarded instead,
as a claim for protection of an audio visual work, hence the
interchanging descriptions. The impression is created that in
formulating the claim no attention may have been given to the Act in
order to ascertain the copyrights that are protected. The possible
subsequent realisation that a format is not recognised and
accordingly protected as an audio visual work might be the
explanation for counsel's great effort to effectively plead the
claim afresh during his oral submissions before us.
51.
The lack of clarity by the appellant itself in its founding
affidavit detracts from the cogency of its claim. It appears probable
that the placing of additional reliance on the Berne Convention is an
indication of the realisation on the part of the appellant that on
the presented facts coupled with the articulation or formulation of
its claim, there would be no copyright protection afforded to it in
terms of the Act.
52.
Unfortunately, the purported reliance on the Berne Convention is
not without its own shortcomings. These will shortly be related to in
paras 64 to 71 (infra)
53.
Section 9 of the act provides as follows:
“9
Nature and vesting of copyright
(1) Copyright
is a real right which subsists in a work by virtue of this Act and
which
entitles
its owner exclusively to do in Zimbabwe the things which this Act
designates in relation to that work.
-
Copyright
subsists in a work if it is eligible for copyright in terms of
section ten
and
if any or all of the following requirements are met –
(a)
the author of the work is a qualified person by virtue of section
eleven;
(b)
the work qualifies for copyright protection in terms of section
twelve
by virtue
of
the country in which it was published or made;
(c)
the work was made under the direction or control of the State or a
designated
international
organisation as provided in section thirteen.
54.
Section 10 of the Act lists the following in paras (a) to (h), as
works that are eligible for copyright: literary works, musical works,
artistic works, audio-visual works, sound recordings, broadcasts,
programme-carrying signals and published editions. A format does not
make the list.
55.
Section 12 of the Act is significant. It provides:
“12
Copyright
by virtue of country of first publication
-
A
work that is eligible
in terms of section ten
shall qualify for copyright protection if it is published in
Zimbabwe or in a designated country.
-
Without
derogation from subsection (1) –
-
a
computer program, audio-visual work or broadcast that is eligible in
terms of section ten
shall qualify for copyright protection if it is made in Zimbabwe or
a designated country;
-
a
programme-carrying signal that is eligible in terms of section ten
shall qualify for copyright protection if it is emitted to a
satellite from a place in Zimbabwe or a designated country.
-
….”
(the underlining is added)
56.
From my reading of section 12, to qualify for copyright protection,
a work, whether first published in Zimbabwe or in a designated
country, must first be eligible in terms of section 10. In my view,
this means that the citation of the Berne Convention is not of any
benefit to the appellant's case. It is rendered irrelevant by the
provisions of section 12.
57.
The works that are eligible in terms of section 10 have been listed
in para 51 above. The answer to the question whether the format of
the television show Dragon's Den qualifies as an audio-visual work
in terms of the Act determines whether it is necessary to interrogate
whether or not the requirements for the granting of the interdict
sought were met. Clearly, the first respondent's main basis for
opposing the application in the court a
quo
was that the appellant sought to protect a format which, in its
submission, was not protected by any copyright in terms of the Act.
It contended that the appellant was not protecting an audio-visual
work.
58.
A 'format' has been defined to be “the way in which something
is arranged or set out” (per google search - Definitions from
Oxford Languages). The Concise Oxford Dictionary defines it as “style
or manner of arrangement or procedure.”
59.
The pertinent question is whether or not copyright can subsist in
terms of the Act in a television show format. Section
128
of the Act provides as follows:
“128
No copyright under common law
Subject
to this Act, no copyright or right in the nature of copyright shall
subsist otherwise than by virtue of this Act or any other enactment.”
Clearly,
therefore, the appellant's right or claim must find its residence
in an identified section of the Act or another statutory provision.
The protection sought under cover of an audio visual work cannot be
substantiated under the Act because the “format” of Dragon's
Den does not fit into the Act's definition of an audio visual work.
No other provision has been cited or invoked under which copyright
protection should be accorded to the format. A format does not fit
into the Act's definition of an audio-visual work. Neither is a
format listed as a work eligible for copyright protection.
60.
In the circumstances, the court a
quo
cannot be faulted in dismissing the appellant's main claim based on
copyright protection of a format. It stated as follows at p127:
“I
am inclined to agree with the interpretation given by the first
respondent. More specifically I am not convinced that any recording
or fixation, where there are moving images with sounds associated
with the images which must be produced by any means gives rise to
rights under copyright.”
Understandably,
Mr
Girach
sought to argue that the statement in the second sentence by the
learned Judge a
quo
was in contradiction to sections 2 and 19 of the Act. Literally read,
Mr Girach's
submission would appear to be correct. But, read in context, the
impression created is that there seem to be some missing or omitted
words in the statement. This is particularly so when regard is had to
the fact that the court a
quo
found against the appellant. Furthermore, the interpretation given by
the first respondent, which interpretation the court indicated that
it was inclined to agree with, is captured in the court's judgment
at p126 in the following terms:
“While
applicant avers that Dragon's Den falls under an audio visual work
as defined in section 2 of the Act first respondent is of a contrary
view. First
respondent avers that not only is Dragon's Den not an audio visual
work but it is not a fixation or an adaptation of an audio visual art
work.”
(the underlining is added)
61.
The court a
quo
cannot be faulted considering that the dispute that was presented and
ventilated and argued before it was that of copyright protection of a
format. However, the tenor of the appellant's heads of argument in
this Court shifted from emphasising on the infringement of a format.
The submission is made therein that “(T)he distinct elements of
Dragon's Den which the appellant avers qualify the television
programme as a whole as an original audio-visual work are
specifically set out in paragraph 8 of the founding papers at pages
4–5 of the record, and are, …”
62.
The definition of “fixation” in section 2 of the Act is of
significance. It is stated as follows:
“'fixation'
in relation to sounds, means the embodiment of the sounds or
representations of the sounds in such a way that they can be heard,
reproduced or communicated through a machine or device.”
It
is, in my view, an inescapable fact that on the claim as presented a
quo,
there was no establishment of any fixation pertaining to Dragon's
Den. The claim a
quo
related to the format of the television show Dragon's Den. The
court a
quo
cannot be faulted for stating as follows:
“In
the instant case we are talking more of a concept or idea as opposed
to a work with a script and details of the text.”
A
reading of the Act will show that concepts or ideas are not included
for protection by means of copyright. Neither are formats included.
Section 10(5) of the Act provides that the following things, inter
alia,
“shall not be eligible for copyright”: “ideas, procedures,
systems, methods of operation, concepts, principles, discoveries,
facts or figures, even if they are explained, illustrated or embodied
in a work.”
63.
On the case presented a
quo,
because a format is not an audio-visual work in terms of the Act,
there was no infringement of, as contended, an audio-visual work in
the form of a format.
64.
As correctly submitted by the first respondent in its heads of
argument, the Berne Convention has no direct application in the
determination of this matter. Section 128 of the Act categorically
states that: “(S)ubject to this Act, no copyright or right in the
nature of copyright shall subsist otherwise than by virtue of this
Act or any other enactment.” Furthermore, the Berne Convention only
finds application in Zimbabwe to the extent that its provisions have
been domesticated in the Act or any other domestic or local enactment
in terms of section 327 of the Constitution of Zimbabwe.
65.
The appellant was not clear as to which specific provision of the
Berne Convention it was placing reliance on and to what effect. In
the pleadings a
quo
it averred that Simba Savannah is an unauthorised derivative work
that violates Article 2 of the Convention. The article has eight
sub-articles. It refers, inter
alia,
to literary and artistic works, translations, adaptations,
arrangements of music and other alterations of a literary or artistic
work. Reference was also made to section 17 of the Copyright and
Neighbouring Rights regulations, 2006 which provides as follows:
“The
following shall be designated countries -
-
any
member of the Berne Convention for the Protection of Copyright
Works;
-
any
member of the Agreement on Trade related Aspect of Intellectual
Property (Trips Agreement).”
The
error of the court a
quo
was not articulated with sufficient clarity to enable this Court to
appreciate the alleged error or misdirection.
66.
In Chikura
v Al Shams
SC17/17
ZIYAMBI JA stated:
“It
is not for the court to sift through numerous grounds of appeal in
search of a possible valid ground; or to page through several pages
of 'grounds of appeal' in order to determine the real issues for
determination by the court. The real issues for determination should
be immediately ascertainable on perusal of the grounds of appeal.
That is not so in the instant matter. The grounds of appeal are
multiple, attack every line of reasoning of the learned judge and do
not clearly and concisely define the issues which are to be
determined by this Court.”
I
appreciate that I am not dealing with grounds of appeal in
casu.
However, it is my considered view that the essence of the principle
enunciated by ZIYAMBI JA is applicable in the present circumstances
where the appellant did not clearly and concisely plead the specific
provision(s) of the article(s) and/or sub-articles of the Convention
that it was placing reliance on. The appellant should have identified
which of the eight categories listed in article 2 that its claim
falls under. It is not for the court to speculate and make
assumptions as to what might have been in the appellant's mind. It
is not for the court to plough through the Convention in search of
the applicable provisions and make a case for the appellant.
67.
I also entirely agree with the submission made by Mr Nkomo
that “(W)hile it is appreciated that section 327(6) (of the
Constitution) allows the court, when interpreting legislation to
adopt any reasonable interpretation that is consistent with any
international convention which is binding on Zimbabwe,… there is no
inconsistency between the provisions of the Copyright and
Neighbouring Rights Act and the Berne Convention that would have
persuaded the court a
quo
to find in favour of the appellant.”
68.
In any event, Article 5 of the Berne Convention for the Protection
of Literary and Artistic Works provides as follows:
“(1)
Authors shall enjoy, in respect of works for which they are protected
under this Convention, in countries of the Union other than the
country of origin, the rights which their respective laws do now or
may hereafter grant to their nationals, as well as the rights
specially granted by this Convention.
-
The
enjoyment and the exercise of these rights shall not be subject to
any formality; such enjoyment and such exercise shall be independent
of the existence of protection in the country of origin of the work.
Consequently, apart from the provisions of this Convention, the
extent of protection, as well as the means of redress afforded to
the author to protect his rights, shall be governed exclusively by
the laws of the country where protection is claimed.
-
Protection
in the country of origin is governed by domestic law. However, when
the author is not a national of the country of origin of the work
for which he is protected under this Convention, he shall enjoy in
that country the same rights as national authors.”
69.
The following submissions are made in paras 5 and 6 of the
appellant's heads of argument:
“5.
One of the principles of the Berne Convention is that of national
treatment, which is found in Article 5(4), and provides that
Appellant is afforded the same protection in Zimbabwe as a Zimbabwean
national. It is on this basis that Appellant brought its Application
in the court a
quo.
-
The
Berne Convention further acknowledges broadcasts (Article 11) and
adaptations (Article 12) as rights that must be recognized as
exclusive rights of authorization.”
70.
The reference to sub-article (4) must have been in error because
the sub-article does not state what is alleged. It may have been
meant to be a reference to sub-article (3) (supra).
71.
The issue in contention a
quo
having been the format (of Dragon's Den); a format having been
found not to be an audio-visual work and a format having been found
to be excluded from works that are eligible for copyright protection
under the Act, the invocation of the Berne Convention does not appear
to me to import into our (the Zimbabwean) Act the protection, under
copyright, of a format. Sub-article (3) affords the enjoyment of the
same rights as are enjoyed by nationals. There is no copyright
protection of a format in terms of the Act. The decision of the court
a
quo
cannot be faulted.
72.
The claim based on passing off needs to be interrogated next. In
dismissing the claim based on passing off, the court a
quo
stated as follows:
“In
the instant case besides alleging that Dragon's Den is viewed in
many countries there is no proof produced that it enjoys a reputation
in the format, form and presentation of its television program.
A
scrutiny of the facts and legal principles leads me to the conclusion
that applicant has not proven goodwill in its program Dragon's den.
Neither has it proven that there is any reasonable likelihood of
confusion between Dragon's Den and Simba Savannah on the material
before me.”
73.
On the general principles applicable in passing off cases, GUBBAY
CJ stated as follows in Woolworth
& Co (Zimbabwe) Ltd v The W Store & Anor
1998 (2) ZLR 402 (S) at 404D– G:
“These
principles were lucidly identified, with reference to leading
authorities, in Caterham
Car Sales & Coachworks Ltd v Birkin Cars (Pty) Ltd
1998 (3) SA 938 (SCA) where at 947E–948B, HARMS JA said:
'The
essence of an action for passing off is to protect a business against
a misrepresentation of a particular kind, namely that the business,
goods or services of the representor is that of the plaintiff or is
associated therewith (Capital
Estate & General Agencies (Pty) Ltd and Others v Holiday Inns Inc
and Others 1977 (2) SA 916 (A) at 929 C–D).
In
other words, it protects against deception as to a trade source or to
a business connection (Reckitt
& Colman SA (Pty) Ltd v SC Johnson & Son (Pty) Ltd
1993 (2) SA 307 (A) at 315B). Misrepresentations of this kind can be
committed only in relation to a business that has goodwill or a
drawing power (Afrikaans: werfkrag). Goodwill is the totality of
attributes that lure or entice clients or potential clients to
support a particular business (cf
A Becker & Co (Pty) Ltd v Becker and Others
1981 (3) SA 406 (A) at 417A).The components of goodwill are many and
diverse (O'Kennedy
v Smit
1948
(2) SA 63 (C) at 66; Jacobs
v Minister of Agriculture
1972 (4) SA 608 (W) at 624A-625F). Well recognised are the locality
and the personality of the driving force behind the business (ibid),
business licences (Receiver
of Revenue, Cape v Cavanagh
1912 Ad 459), agreements such as restraints of trade (Botha
and Anor v Carapax Shadeports (Pty) Ltd
1992 (1) SA 202 (A) at 211H–I) and reputation. These components are
not necessarily all present in the goodwill of any particular
business.
The
only component of goodwill of a business that can be damaged by means
of a passing-off is its reputation and it is for this reason that the
first requirement for a successful passing-off action is proof of the
relevant reputation. (Hoechst
Pharmaceuticals (Pty) Ltd v The Beauty Box (Pty) Ltd (in liquidation)
and Another 1987 (2) SA 600 (A) at 613F–G; Brian Boswell Circus
(Pty) Ltd and Another v Boswell-Wilkie Circus (Pty) Ltd 1985 (4) SA
466 (A) at 479D; Williams t/a Jennifer Williams & Associates and
Another v Life Line Southern Transvaal 1996 (3) SA 408 (A) at 419A–B,
420B).'”
74.
The appellant's claim, in effect, is to the effect that the first
respondent passed off Simba Savannah as Dragon's Den. The nub of
the appellant's contention, as already discussed earlier, relates
to the format of the television program Dragon's Den. In Cairns
Foods Ltd v Netrade Marketing (Pvt) Ltd
SC106/21 MATHONSI JA after considering the Woolworth
authority (supra),
aptly
stated as follows at p11 of the judgment:
“It
is apparent that passing off seeks to protect a product from the
deceptive tendencies of a competitor who represents its product as
that of the other. As a result of such deception or misrepresentation
there should be injury or damage to reputation. Therefore, proof of
reputation is a pre-requisite for passing off to be established. See
also Zimbabwe
Gelatine (Pvt) Ltd v Cairns Foods (Pvt) Ltd
2003 (1) ZLR 352 (S) at 55G.”
75.
In
casu,
there has been no proof that the appellant had goodwill in the
Dragon's Den format. The appellant has neither proved
misrepresentation of its format. The appellant has also not
established or placed any cogent evidence of any damage suffered by
it as a result of Simba Savannah.
The
claim for passing off was therefore bound to fail and was thus
rightly dismissed by the court a
quo.
76.
It seems to me therefore, that on the facts and contentions
presented to the court a
quo,
no protection is accorded by the Act to the appellant's format and
that the decision of the court a
quo
cannot be upset in respect of the claim for copyright protection.
Similarly, the dismissal by the court a
quo
of the claim for passing off was justified and there is no basis for
its reversal. It also seems to me that it therefore becomes
unnecessary, in the circumstances, to consider whether the
requirements for the granting of an interdict were satisfied.
77.
The court a
quo
was criticised for having regard to Green
v Broadcasting Corporation of New Zealand
[1989] All ER 1056; [1989] 3 NZLR 18 (New Zealand: Judicial Committee
of the Privy Council). The Court of Appeal stated at p20:
“The
alternative formulation of the appellant's claim relies upon the
'dramatic format' of 'Opportunity Knocks' by which their
Lordships understand is meant those characteristic features of the
show which were repeated in each performance. These features were, in
addition to the title, the use of the catchphrases 'For [name of
competitor], Opportunity Knocks' 'This is your show folks, and I
do mean you' and 'Make your mind up time' the use of a device
called a 'clapometer' to measure audience reaction to
competitors' performances and the use of sponsors to introduce
competitors. It was this formulation which found favour with Gallen
J.
It
is stretching the original use of the word 'format' a long way to
use it metaphorically to describe the features of a television series
such as a talent, quiz or game show which is presented in a
particular way, with repeated but unconnected use of set phrases and
with the aid of particular accessories. Alternative terms suggested
in the course of argument were 'structure' or 'package'. This
difficulty in finding an appropriate term to describe the nature of
the 'work' in which the copyright subsists reflects the
difficulty of the concept that a number of allegedly distinctive
features of a television series can be isolated from the changing
material presented in each separate performance (the acts of the
performers in the talent show, the questions and answers in the quiz
show etc) and identified as an 'original dramatic work'.
No
case was cited to their Lordships in which copyright of the kind
claimed had been established.
The
protection which copyright gives creates a monopoly and 'there must
be certainty in the subject matter of such monopoly in order to avoid
injustice to the rest of the world': Tate
v Fullbrook
[1908]
1 KB 821, per Farwell J at 832.
The
subject-matter of the copyright claimed for the 'dramatic format'
of 'Opportunity Knocks' is conspicuously lacking in certainty.
Moreover, it seems to their Lordships that a dramatic work must have
sufficient unity to be capable of performance and that the features
claimed as constituting the 'format' of a television show, being
unrelated to each other except as accessories to be used in the
presentation of some other dramatic or musical performance, lack that
essential characteristic.” (the underlining is added)
78.
It cannot be denied that there are remarkable similarities between
the claim in the Green
case and the instant matter. The appellant's claim emanates from
what it says are unique characteristics of its program or television
show called Dragon's Den. Its complaint relates to the alleged
copying of style and layout of the show, Dragon's Den. As rightly
observed by the first respondent's counsel, the only difference is
that Green claimed that his format constituted a dramatic work,
whereas in casu
the appellant claims that its format constitutes an audio-visual
work. In terms of section 2 of the Act, 'dramatic work' “does
not include an audio-visual work”.
79.
In my view, even if no consideration were to be given to the Green
case, it has, in any event, already been otherwise demonstrated
earlier herein that the appellant's format of Dragon's Den is not
afforded copyright protection.
80.
For the above reasons, the appeal has no merit. Costs will follow
the cause. However, no basis has been established for the awarding of
costs on the higher scale. It is accordingly ordered as follows:
The
appeal be and is hereby dismissed with costs.
MAKONI
JA: I
agree
KUDYA
AJA: I
agree
Manokore
Attorneys,
appellant's legal practitioners
Donsa-Nkomo
& Mutangi,
1st
respondent's legal practitioners
