"I cannot think of any other field or branch of law in which a comparable remedy exists" – Judge Myburgh
Facts
Mark Phillips, mathematics textbooks author, entered into an agreement with Allcopy Publishers (Pty) Ltd, along with co-authors Jurgens Basson and Jaco Odendaal, to create and distribute a series of educational works, including textbooks and teacher aids for grades 8–12. Phillips, the lead author, had primary ownership of the copyright. In June 2016, Phillips entered a distribution agreement with Allcopy for the sale and distribution of these works, lasting until June 2021, later extended until February 2024. Tensions arose when Phillips attempted to publish his own versions of these books, in competition with Allcopy, leading to the current legal dispute over the rights to continue distribution after February 2024.
Findings
The court found that while Phillips was the primary copyright owner, the co-authors also had a shared interest in the works, and there were concerns about the effects on educational authorities and students if the distribution of the works was abruptly halted. The respondents (Allcopy and the co-authors) sought to continue publishing the works, even after Phillips indicated he would not renew the agreement and made a tactical decision to apply to the Copyright Tribunal for a compulsory license (an extraordinary license provided for under the copyright act). Phillips sought an interdict to prevent the distribution of the works, but the court found that Phillips had not adequately proven that he had no alternative remedy (such as seeking damages or royalties), and that the respondents had reasonable prospects for success in their application to the Copyright Tribunal for the compulsory license.
Decision
The court decided to stay the main proceedings pending the determination of the respondents' application for a compulsory license by the Copyright Tribunal. It emphasized that the Copyright Act allows for the possibility of overriding the copyright holder's wishes in certain circumstances, provided the refusal to grant a license is unreasonable. The court ruled that the respondents had a reasonable chance of success and the potential impact on educational institutions and students should be taken into account before granting an interdict.
Key lessons
You don't know what you don't know. When creating IP or commercialising it, it is important to obtain specialist legal advice from qualified IP attorneys. This is especially true if one is collaborating with third parties to co-create IP. It is clear that Mr Phillips never contemplated a compulsory license being granted for the use of his work, which he believed was at all times under his direction and control. Read the full judgment here.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
