Intellectual Property Law Module

INTELLECTUAL PROPERTY LAW MODULE
CAVENDISH UNIVERSITY ZAMBIA
Prepared by Mr. Ndlovu.
LLB,LLM.
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INTRODUCTION
This module will examine the main forms or types of intellectual property (IP) rights:
copyright, patents and trademarks (as well as the related topics of passing off and
breach of confidence) that embody the notion of privatizing the intangible fruits of the
mind. About each of these IP forms, we will ask: what are the procedural requirements
required for its creation as IP? Who is the owner of the IP and why is he/she the owner?
What are the various rights given to the rights-holder? What constitutes IP
infringement? What are the remedies available for IP infringement? But this is not an
exclusively doctrinal module and we will continually look at pressing policy questions
such as: why should we protect IP? How important is continuing access to the public
domain? Should plants be the subject of a patent? Do employees get short-changed by
the presumptions of IP law? Particular topics will vary from year to year, but may include
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copyright issues on the Internet, the impact of patents and copyright on socio-economic
development in the global South, and questions such as: should musical parodies be
permitted? Who benefits from IP? Should human genes be patentable? Should greater
protection be given to whistleblowers? The focus will be on UK IP law, but we will
regularly examine relevant EU directives and global IP treaties. The aim is not to
provide a crash course in all aspects of intellectual property doctrine, but rather to
examine a range of important practical and theoretical questions about a form of
property that some commentators have called "the new wealth" of the 21st century.
Aims of the module
The aim of this course is to give students an overview of Intellectual Property Law in
Zambia and the various statutes that govern it.
Objectives of the module
By the end of this course , students must be able to identify the Intellectual Property
rights that subsists in various products. Students must also understand the rationale
behind Intellectual Property Protection.
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Learning outcomes
By the end of the module, students should be able to: -demonstrate understanding of
the concepts, principles, policies, issues, debates and legal doctrine associated with
various areas of intellectual property law. -identify the ideological and policy
underpinnings of the legal rules; and to evaluate how well the policies and law work in
practice. -think critically about intellectual property law: to take nothing at face value, to
go beneath the surface of the law to critically analyse and evaluate it, both in oral
discussion and in written assignments. In short students should be able to;
Demonstrate sound knowledge and understanding of those aspects of
intellectual property law identified in the indicative syllabus above

Demonstrate sound knowledge and understanding of the policy considerations
which shape intellectual property law

Demonstrate sound knowledge and understanding of proposed areas of law
reform in the relevant areas

Analyse problems in the areas of intellectual property studied, apply the legal
principles studied to these problems and present well supported conclusions,
both orally and in writing.
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Read and study primary and secondary sources of intellectual property law, with
limited staff guidance

Identify sources for research and establish a strategy for research using standard
and electronic research tools
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RECOMMENDED READINGS
Catherine Colston, (1999). Principles of Intellectual Property Law. London: Cavendish

Publishing Limited.
David I Bainbridge, (2007). Intellectual Property Law, (6 th Ed).
United Kingdom:
Pearson Education Limited.
Helen Norman, (2005). Intellectual Property Law. London: University of London Press
Paul Marett, (1996). Intellectual Property Law. London: Sweet & Maxwell
William Coruish and David Llewelyn, (2007). Intellectual Property Law: Patents,
Copyrights, Trademarks and Allied Rights, (6th Ed). London: Sweet & Maxwell.
Kanja .G.M. (2006) Intellectual Property, University of Zambia Press, Lusaka
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Statutes
The Patents Act, Chapter 400 of the Laws of Zambia.
The Copyright and Performance Rights Act Chapter 406 of the Laws of Zambia
Trade Marks Act Chapter 401 of the laws of Zambia
The Registered Designs Act,Chapter 402 of the laws of Zambia
TRIPs Agreements
WIPO conventions
TABLE OF CONTENTS
UNIT 1
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Introduction to Intellectual Property Lawpage 5
Definition of Intellectual Propertypage 5
IP as property..page 6
IP as property .page 6
Types of Intellectual Property.page 7
Basic forms of Intellectual Propertypage 9
Activity..page 10
UNIT 2
Copyright law.page 12
Definition of Copyright.page 12
Rationale behind copyrightpage 13
Types of copyrighted works..page 16

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Assignment of Copyrightpage 17
Rights of holders.page 20
Defenses ..page 22
UNIT 3
Patentspage
32
Rationale of patents..page
33 phonograms
Subject matter patents.page 36
Procedure for patent applicationpage

38/39
Infringement
43/44
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and
defenses.page
UNIT 4
Trade Secretspage
45
Definition..page
45
Protection
of
trade
secrets.page 46
Trade
secrets
as
IP
components.page 46
Damages..pag
e 50
UNIT 5
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Trade
Marks
page 51
Types of Trade Marks

page 52
Infringements..pa
ge 54
Bars to trade mark registration

page 56
Dilution
of
Trade
Marks.page 58
Damages
page 60
UNIT 6
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Passing
off..page 62
Introduction.
page 62
Requirements
for
passing
off.page 63
Misrepresentation
page 65
Remedies.
page 65
UNIT 7
WIPO
page 66
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Introduction.
page 66
Brief
history.page
66
Conventions.
page 68
UNIT 8
Designs.
page 69
History of designs
page 70
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Rationale
of
designspage 71
Subject
matter..page
71
Disputes
page 76
Defenses
page 77
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UNIT ONE
By the end of this unit, students should be able to;
Define Intellectual property
Understand categories of Intellectual Property Law
Appreciate intellectual property law
Be able to guide legally on matters of intellectual property law
What Is Intellectual Property?
The term intellectual property (IP for short) broadly refers to property rights vested in the
intangible. The property rights associated with real property (land) and personal
property (everything else) are fairly straightforward: the owner of such property has a
right to possess it, to prevent others from possessing it, and to preserve its integrity,
hence our laws against theft, trespass, and vandalism.
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Intellectual property law, on the other hand, protects entities which have no physical
form. This includes names and logos attached to products, inventions, and original
works of authorship. Because nobody can physically possess these things, the laws of
personal property cannot, and do not, apply. Accordingly, rather than protecting
possession, intellectual property law generally protects exclusive rights to use or
reproduce the intellectual property. IP laws may also, in some circumstances, protect
secrecy.1
Therefore, Intellectual property is a term that refers to the legal rights which result from
intellectual creations in the industrial, scientific, literary and artistic fields. Intellectual
property comprises creations that result from the mind, the human intellect. 2 The
Convention Establishing the World Intellectual Property Organisation (WIPO),
concluded in Stockholm on 14 July 1967, defines intellectual property to include rights
relating to:
1 Collection of Documents on Intellectual Property compiled by WIPO Worldwide Academy, WIPO Publication
No. 782 (2003).
2 Idris, K., Intellectual Property, A Powerful Tool for Economic Growth, WIPO Publication No. 888. p. 4
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(i) literary, artistic and scientific works,

(ii) performances of performing artists, phonograms and broadcasts,
(iii) inventions in all fields of human endeavour,
(iv) scientific discoveries,
(v) industrial designs,
(vi) trademarks, service marks and commercial names and designations,
(vii) protection against unfair competition; and all other rights resulting from intellectual
activity in the industrial, scientific, literary or artistic fields.
The above non-exhaustive definition of intellectual property is important in that it allows
member States of WIPO to add to the said list those rights they may feel qualify to be
protected as intellectual property rights.
Intellectual Property as Property

In order to appreciate and gain a fuller understanding of the term intellectual property, it
is useful to approach it in terms of the notion of property in general. The most important
feature of property is that the owner of the property may use it as he wishes, and
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nobody else can lawfully use his property without his authorisation. The owner of the
property may be a human being or a legal entity, such as a corporation. Generally
speaking one can classify property into three types. The first type is property consisting
of movable things, such as a car, a book or furniture in a home. In our legal system this
is known as movable property. No one except the owner of the car, book or furniture
can use these items of property. This legal right is referred to as exclusive, because it
gives the owner the exclusive right to use his property. Naturally, the proprietor may
authorise others to use the property, but without such authorisation, use by others is
illegal.3
The second type of property is immovable property, or as it is sometimes known, real

property. Land and things permanently fixed on it, such as houses, are immovable
property, as they cannot be lifted or moved. The third type of property is intellectual
property, which protects the creations of the human mind, the human intellect. This is
why this kind of property is called intellectual property. Intellectual property establishes
3 L.W. Merville, Forms and Agreements on intellectual Property and international Licensing, 3 rd edition,
Sweet and Maxwell, London (1979), at page 5
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the property rights that give the owner to do certain things in relation to the subject
matter. For instance, if then right is copyright and the subject matter is a piece of music,
the owner of the copyright has the exclusive right to make the copies of the sheet of
music and to control the performance of the music. In addition, the owner also has the
negative right to prevent others from doing certain things in Article 2 (viii).
In relation to the music such as playing it in pubs when he intended that it should only
be played in churches and homes when he wrote it. Like any other type of property,
intellectual property rights can be assigned, mortgaged, licensed or transmitted under
operation of the law.
Types of Intellectual Property

Intellectual property is traditionally divided into two branches, namely, Copyright and
Related Rights, and Industrial Property. Literary, artistic and scientific works belong to
the copyright branch of intellectual property. Performances of performing artists,
phonograms and broadcasts are called related rights, that is, rights related to or
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neighbouring to copyright. The industrial property branch of intellectual property covers

inventions and industrial designs. Inventions are new solutions to technical problems,
and industrial designs are aesthetic creations determining the appearance of industrial
products. Furthermore, industrial property includes trademarks, service marks,
commercial names and designations, geographical indications (indications of source
and appellations of origin), and the protection against unfair competition. 4
Unlike the protection of inventions, copyright law protects only the form of expressions
of ideas, not the ideas themselves. The creativity protected by copyright law is creativity
in the choice and arrangement of words, musical notes, colours, shapes etc. Copyright
law protects the rights of the owner in literary, musical, dramatic and artistic works
against those who copy or otherwise take and use the form in which the original work is
expressed by the author. Arising out of this basic difference between inventions and
literary and artistic works, the legal protection provided for each differs. Since protection
for inventions gives a monopoly right in the exploitation of the idea, such protection is
4 K .Idris, Intellectual Property, A Powerful Tool for Economic Growth, WIPO Publication No. 888. p. 4
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short in duration, normally twenty years, though in Zambia it is sixteen years. The fact
that the invention is protected must also be made known to the public. There must be
an official notification that a specific, fully described invention is the property, for a fixed
number of years, of a specific owner. In other words, the protected invention must be
disclosed in an official register, open to the public and the owner must ensure that his
invention appears in the register.5 By contrast, legal protection of literary and artistic
works under copyright prevents only unauthorised use of expressions of ideas. Without
protection under a patent, a person who has disclosed to the public an idea cannot
prevent third parties from using the idea. Therefore, the duration of protection is often
longer than in the case of protection of ideas, without damage to public interest.
Also, the law in most countries, like Zambia, grants the author of an original work the
right to prevent other persons from copying or otherwise using his work. It is also
important to note that under copyright, a public register of works protected by copyright
is not necessary, as copyright works are automatically protected upon creation. Another
important feature of intellectual property is that it is in constant evolution. The new
5 Ibid
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advances in technology such as information technology and biotechnology and changes

in economic, social and cultural conditions, necessitate continuous appraisal of the
intellectual property system and at times adjustment, expansion or extension. For
instance, the last few decades have seen the recognition of new forms of intellectual
property, such as a sui generis form of protection for plant varieties (in the 1950s and
1960s), patent protection for biological material, plants and animals (in the 1970s and
1980s), a sui generic form of protection for layout designs (topographies) of integrated
circuits (1980), copyright protection for computer software (1980s) and protection for
databases and compilations of data (1980 and 1990s). 6
It is also imperative to note that though intellectual property is divided into two branches,
more often than not a product or work of intellectual property is protected by both
branches of intellectual property or multiple of intellectual property rights. A good
example would be a mobile phone: the innovative technical features are protected by a
patent or series of patents; the aesthetic design or the shape of the mobile phone is
6 W. Gardner and J.Rosenbaum, Database Protection and Access to Information,Science 281 (1998), pp. 786-787
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usually protected as an industrial design; the brand used to market the mobile phone is
protected by trademark; and the ring tones or games on the mobile phone are protected
by copyright. In addition, the manufacturer of the mobile phones may hold a number of
trade secrets ranging from their customer list, to some of the manufacturing processes
or to other confidential information that he would not want to disclose to its competitors.
The inventors of innovative products such as mobile phones, can obtain exclusivity to
use or prohibit others from using each of these elements through intellectual property
protection.7
The 4 Basic Forms of Intellectual Property

There are 4 broad forms of intellectual property, and they all protect different things:
they are copyright, trademark, patents, and trade secrets.
1. Copyright: A copyright is an exclusive right held for a limited time by original

works of authorship to reproduce, publicly perform, and publicly distribute copies
of their work. In order to receive copyright protection, a work must be original,
7 Ibid
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and it must be fixed in some tangible medium (written down, recorded, printed,
etc.).
2. Trademark: Trademark law protects consumers by empowering producers to

prevent the use of their names and/or logos by others in manners that are likely
to confuse consumers. This body of law only applies to words and images used
to identify goods and services, or their source. Trademark rights can last forever,
as long as the name or image is continuously used in commerce.
3. Patent:Patent law protects inventors by granting them an exclusive right to

manufacture and sell their inventions for a limited period of time, in exchange for
public disclosure of their invention. To receive patent protection, an invention
must be novel, useful, and non-obvious.
4. Trade Secrets: Trade secret law protects secret information held by businesses,
and allows them to sue when that information is stolen, or if its disclosed without
their permission. To be protected by trade secret law, the information must
actually be secret (not known to or easily ascertainable by
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5.
types of p the general public) and it must have independent economic value by
being secret (this basically means that disclosing the secret would make the
information far less valuable).
Who Should Be Concerned about IP Issues?

The short answer is "almost everybody." However, there are a few people who should
be particularly concerned:
Creative employees: workers whose job descriptions require them to make new
creative works (writers, graphic designers, etc.) need to be aware of the fact that,
generally, their employer owns the copyright on any works they produce in the
scope of their employment. This rule does not apply to independent contractors.
However, it is a good idea for independent contractors and those hiring them to
come up with an agreement about who will own the IP rights in the work the
contractor was hired to create, to avoid disputes in the future.
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Employees in high-tech industries: many lawsuits have started when an

engineer moves from one company to another and end up taking trade secrets
with them.
Employers: As mentioned above, there can be some confusion as to who owns

a creative work when its produced in the course of employment. Employers who
wish to retain the IP rights in works created by their employees in the scope of
employment should be aware of these issues.
ACTIVITY
a) What is intellectual property?

b) What are the basic forms of Intellectual property?
c) Outline the types of Intellectual Property.
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UNIT 2
COPYRIGHT LAW
By the end of this lecture, students should

a) Appreciate the law governing copyright in Zambia
b) Define copyright law
c) Appreciate defenses on the subject matter
What Is Copyright?
A copyright is a right to prevent others from using your originally authored work. Under
the Zambian copyright law, a copyright entitles the owner to many exclusive rights, such
as the right to:
Reproduce the copyrighted work
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Distribute copies of the copyrighted work to the public for sale
Perform the copyrighted work
The Copyright and Performances Rights Act 8 defines copyright as a property right which
subsists in original literary, musical, dramatic, artistic works and computer programmes;
compilations; audiovisual works; sound recordings; broadcasts; cable programme; and
typographical arrangements of published editions of literary works. The owner of the
copyright subsisting in a work has the exclusive rights to do certain acts in relation to
the work, such as making a copy, broadcasting or selling copies to the public.
Therefore, a Copyright is a right granted for the protection of original literary, dramatic,
musical and artistic works; and other works such as computer programmes,
compilations, sound recording, broadcasts and films, which result from the authors own
intellectual creation. Copyright normally vests, at least in the first instance, in the author
of the work, unless it is created by the employee in the course of employment.
8Section 7,CAP 406 of the Laws of Zambia.

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The copyright owner has the exclusive right to prevent the unauthorized reproduction,
performance, broadcasting, translation and adaptation of the work. These are known as
economic rights. Apart from the economic rights, the copyright owner is granted moral
rights, which entitle him to be identified as the author of the work and to object to any
distortion, mutilation or other modification of, or other derogatory treatment of his work
which would be prejudicial to his honour or reputation. Moral rights cannot be assigned
or licensed. The author always retains the moral rights.
For instance, if the owner sells his economic rights of a play to a theatre company, the
author still retains his right to have his name featured in the playbill, despite the fact that
he does not receive any of the proceeds of the production. As copyright protection
arises automatically upon the work being created provided it fulfills the criteria for
copyright protection such as the work being original, there is no need to apply for
copyright registration. It is also a requirement that for literary, dramatic, musical and
artistic works to be protected, they must be original and expressed in a fixed form.
Besides, copyright protection is not dependent on the literary, artistic or musical quality
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of the work. Copyright law protects the owner of the rights against those who use the
form in which his original form was expressed by the author or a substantial part of that
form. This exclusive right is however, tampered with by certain exceptions; limitations
and compulsory licenses such as fair dealing provisions. Copyright work therefore, may
be copied for the personal and private use of the person who makes the reproduction.
Another example is the making of quotations from a protected work, provided the
source of the quotation, including the name of the author, is mentioned and the extent of
the quotation is compatible with fair practice. 9
The copyright protection , lasts for the life of the author, plus fifty years, though some
countries like the United Kingdom and the United States have extended this term to
seventy years. Related rights also known as neighbouring rights are rights that are
granted to persons who present creative works to the public but who are not considered
as creators of those works in their own right. Related rights are granted to performers,
phonogram and film producers, broadcasting organisations and publishers. The
9 Isaiah Berlin, 1953. The Hedgehog and the Fox: An Essay on Tolstoys View of History, London:
Weidenfeld & Nicolson; 1986 New York: Simon and Schuster, introduction by M. Walzer
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purpose of related rights is to protect the legal interests of certain persons and legal
entities who assist authors or creators to communicate their message and to
disseminate or make available their copyright works to the public. One notable example
is the singer or musician that performs a composers work to the public. In addition
related rights are intended to protect those people or organisations that add substantial
creative, technical or organization skill in the process of bringing a copyright work to the
public.10
Another important feature of copyright law is that it does not protect ideas; it merely
protects the expression of an idea. For example, Barbara Cartland does not have a
monopoly in romantic novels. Anyone else is free to write a romantic novel since the
concept of a romantic novel is an idea and is not protected by copyright. However,
writing a romantic novel by taking parts of Barbara Cartland novel infringes copyright,
because the actual novel is the expression of the idea. 11
10 Shields, Patricia and Rangarjan, N. 2013. A Playbook for Research Methods: Integrating Conceptual
Frameworks and Project Management.Stillwater, OK: New Forums Press. p. 24.
11 Bainbridge, D. Intellectual Property (3rd ed.). London: Pitman Publishing (1996) p. 24.
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Copyright does not continue indefinitely. The law provides for copyright protection a
period of time, a duration during which the rights of the copyright owner exist. The
period or duration of copyright begins from the moment when the work has been
created or in some jurisdiction when it is expressed in a tangible form. For example, the
duration of copyright in a literary and artistic work is life of the author plus fifty years
after his death. The period of copyright continues for a period of time, some time after
the death of the author in order to enable the authors successors to benefit
economically from the exploitation of the work. Ownership of the copyright in a work will
often remain with the author of the work, the author being the person who created it or
made the arrangements necessary for its creation, depending on the nature of the work.
However, if a copyright work is created by an employee in the course of employment his
employer will own the copyright. In addition, copyright like most other forms of property
rights can be assigned, it may pass under a will or intestacy or by operation of the law
and licenses may be granted in respect of it.
Rationale of Copyright Protection

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Protection of copyright and related rights is justified for the following reasons which
include;
(a) Creative Incentive

The author or creator of work knowing that the work will be protected against
unauthorised use is thus given the incentive to write and compose. Creation of works
involves investment of time, patience, skill, creative endeavour and money. If such
investment is not protected, the author loses the incentive to undertake the project.
Production of works benefits society. Consequently, it is necessary to give authors the
incentive to carry on their work by providing, through copyright and related rights, the
means to ensure their livelihood and recoup their investment. The incentive will be
increased if the author knows that after his death, royalties will continue to be paid to
heirs or in accordance with testamentary dispositions.
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(b) Reward for Labour
Copyright and related rights provide the means for the author or creator of a work to
obtain reward for his production. The reward for labour is based on the participation
principle that allows the author or creator of a work to participate in all economic
benefits realised from the use of his work.
(c) Encouragement of Learning
Copyright and related rights encourage authors to create works and release them to the
public for the good of society as a whole, by providing them with an incentive to create.
Furthermore, it encourages others to build freely upon the ideas and information
conveyed by a work, thereby providing the environment for the advancement of
learning.
(d) Promotion of the Economy

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The law of copyright and related rights is concerned, in the main, with the use of
produced material consisting of authors works, performances, recordings and
broadcasts. The main types of use of protected material are (i) reproduction and
distribution of hard copies through printing, sound records, films and in electronic
formats, and (ii) communication in the form of radiophonic or electronic transmission.
The publishing and printing, record producing, film making and broadcasting industries
call for huge investment. Publishers, producers and broadcasters, disseminate works
because they believe that they will thereby make money.12
Copyright enables publishers, producers and broadcasters to protect their investment
by providing protection against piracy and by allowing the initial expenses to be
recouped through sales, licensing, performance and other uses. Publishers, producers
and broadcasters will not invest in the production of books, sound recordings, films, or
12 J. Philips and F.Allison , Introduction to Intellectual Property , 3rd edition,Butterworths, London (1995)
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broadcasts if the moment the product is on the market it can be freely copied or
otherwise used.13
If piracy flourishes, the public loses, for the incentive to make new material available
will disappear. Conversely, protection of investment provides a major economic
incentive and benefits to the author, industry and commerce, and society as a whole.
These benefits include, the amount of royalties and other payments by users;
employment provision in user industries (publishing and printing, record producing, film
making and broadcasting, electronic dissemination) and collecting societies; value of
sales of products and services and consequent benefits; exporting of copyright products
and works and revenues generated from such exports; licensing the use of produced
material in other countries; encouragement of further expenditure or investment in
creation of works; value added to gross domestic product; and enjoyment and
promotion of culture.14
13 Shields, Patricia and Rangarjan, N. 2013. A Playbook for Research Methods: Integrating Conceptual
Frameworks and Project Management.Stillwater, OK: New Forums Press. p. 24.
14 J. Philips and F.Allison , Introduction to Intellectual Property , 3rd edition,Butterworths, London (1995)
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(e) Cultural Importance & Protection
Clearly, laws which encourage the production of literary, musical and artistic works may
be said to contribute to the development of culture. The question then is whether
copyright and related rights laws do in fact make such a contribution. As copyright
products and works such as satellite broadcasts, telecommunications, data networks,
multimedia and internet come to rule our lives, the issue of copyright protection and its
economic importance have become even more important. Culture is defined as the
customs and civilisation of a particular people. Culture reflects the common meanings of
a society, whether presented as a common language, visual images, or traditional forms
of performance. Its music, drama, plays, ancient and modern architecture, philosophical
and political thought espoused through the mass media of television and radio, books
and magazines. All these help shape our thinking, thought processes, knowledge and
understanding. Culture also moulds each of our cultures. Every single item which has
been identified, as a constituent of a peoples culture is a subject matter protected by
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copyright and related rights. It should be noted that the composers, writers, musicians,
singers, performers and other talented individuals are among societys most valuable
assets. The fabric of our cultural lives is enriched by their creative genius. In order to
develop their talent and encourage them to create, we have to give them those
individual incentives, namely remuneration in return of permission to make use of their
works.
(f) Protection of Human Rights
The authors work is an emanation of his personality and consequently should be

protected. Article 27 of the Universal Declaration of Human Rights provides that
everyone has the right to protection of moral and material interests resulting from any
scientific, literary or artistic production of which he is the author.
(g) Prevention of Piracy and Counterfeit
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Piracy and counterfeit are a disincentive to creation of copyright work. Where

intellectual property protection is weak or not enforced, so as to allow piracy and
counterfeit to flourish foreign owners of intellectual property rights stay out of the
country and development of local industries is impeded. Furthermore, local authors and
creators of copyright products and works cannot make a living from their work nor
recoup their investment. Also local markets are flooded with inferior illegitimate products
and technology is not incorporated in the countrys base and infrastructure. Besides,
government loses revenue as no taxes are paid bwhere there is rampant piracy and
counterfeit.
Types of Copyrighted Works

Copyrights can protect endless types of creative work such as:
Recorded or sheet music
Books and novels
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Software codes, video games, and CD-ROMs, although these may not be
protected if they have already been distributed through a "copyleft" agreement
Art, such as paintings, plays, dance choreography, and sculptures
Copyright Protection
Under the Zambian law, you get a copyright to your work automatically once you have
"fixed" your original work in a "tangible medium of expression." You must have
independently created the work and not adapted it from something else. The work must
also be placed in a sufficiently permanent medium so others can reproduce, view or
communicate it.
Section 8 (1) of the Copyright and Performance Rights Act 15 lists the types of works that
can be copyrighted , these include inter-alia;
(i)
Original literary, musical ,artistic works or computer programmes.
(ii)
Compilations
15 Chapter 406, Laws of Zambia

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(iii)
Audiovisual works
(iv)
Sound recordings
(v)
Broadcasts
(vi)
Cable programmes
Registering a Copyright
There are a number of reasons you should still formally register your copyright. While
your work does have automatic copyright protection once it fits the above description,
you are limited in your remedies if you do not properly register the copyright.
For example, copyright registration will affect:
Lawsuits - If you are copyright owner, the law provides that you must register
your copyright before initiating an action for copyright infringement
Damages - You cannot get damages for infringement for any period before the
copyright is registered as provided for by Chapter 406 of the Laws of Zambia.
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Evidence - The registration of copyright, in addition to some other criteria, is

proof of the validity of a copyright
An owner and creator of original work can register a copyright pursuant to Chapter 406
of Zambia. Usually, an owner needs to fill out a form specific to the work that the owner
wishes to register, and submit a fee.
What is Assignment of Copyright?

Assignment of copyright is the transfer of the rights the copyright owner holds to another
person or legal entity in exchange for consideration as provided for by the law.
Assignment of copyright is like selling property: once the rights are transferred, the
former copyright owner has no authority over how the assignee uses the copyright.
What Is Copyright Infringement?
Copyright infringement occurs when a person encroaches on the exclusive rights held
by the owner of a copyright. Section 1716, states that anyone that does the following ;
16 Chapter 406 of the laws of Zambia

43 | P a g e
i)
Copying or reproducing the work
ii)
Publishing or issuing copies of the work to the public
iii)
Performing , showing or playing the work in public
iv)
Broadcasting the work or including it in any programme
v)
Making an adaptation of the work or doing any of the above in relation to an

adaptation.
How Can I Prove Someone Infringed on My Copyright?

To prove that someone infringed on your copyright you must show actual copying of
protected material that has led to substantial similarity between the infringing work and
your copyrighted work. The plaintiff must prove Misappropriation. You can prove
copying if there is direct or indirect evidence that someone took material from your
work.
Direct evidence is evidence showing that a person copied your work
44 | P a g e
Indirect evidence is evidence showing that a person can be assumed to have

copied your work because he had access to it and his work is similar enough to
suggest copying
Is the Material They Copied Protected?

Although someone's work may seem very similar to yours, it might not actually infringe
your copyright if the material it copies is not protected by Zambian Copyright Laws. You
may not be able to sue for copyright infringement if the copied material is:
Factual: Facts are not protected by copyright. Therefore, if you wrote a book
about a historical event and someone else wrote about the same historical event,
using different words and a different style, you could not sue for copyright
infringement.
A general idea: Ideas are also not protected by copyright. Therefore, if you
wrote a play about a hero with extraordinary strength, the creators of Superman
could not sue you for copyright infringement on that alone.
45 | P a g e
Non-original elements: Any elements that necessarily follow from general ideas
are also unprotected. For example, if you set a story in San Francisco and have
your characters drive across the Golden Gate Bridge, this element of your story
is probably not protected.
Refer to the case of Francis Day & Hunter v.Bron17
Generally, a new work is substantially similar to yours if the overall look and feel of the
new work is the same as your copyrighted work.
PROTECTION AT INTERNATIONAL LEVEL

International business has increased tremendously over the past few years. Internet use
has allowed people to access information from all over the globe. Luckily, many nations
have formed international laws that provide global protection for all intellectual property.
International laws have been adopted by international organizations, treaties, and
conferences to globally protect intellectual property. Here are some examples: 18
17 (1963) Ch.587
18 L.W. Merville, Forms and Agreements on intellectual Property and international Licensing, 3 rd edition, Sweet
and Maxwell, London (1979)
46 | P a g e
Berne Convention of 1886 - Obviously, people have been aware of this problem
for a while! This was one of the first treaties, which made sure that intellectual
property rights were recognized in every country that participated in the
convention.
TRIPS Agreement of 1994 - This agreement made sure that participating

countries included in its domestic laws, protection and remedies for intellectual
property violations.
World Intellectual Property Organization Copyright Treaty of 1996 - This treaty

attempted to update past treaties to deal with copyright infringement on the internet.
What is Licensing of Copyright?

A license is where the copyright owner keeps control over the rights in a copyright, but
also permits another person or legal entity to exercise some of those rights, again, in
exchange for consideration. Copyright owners who want to retain control over how the
work is used prefer licensing over assignment.
47 | P a g e
What Are the Limits on Assignment of Copyright?

For both assignment and licensing, the holder of the copyright generally can decide
which rights he will transfer, whether it is all the rights or only one. Examples of limits a
copyright owner can place on the transfer include:
Time limits
Territorial limits
Media limits
Nonexclusive rights19
A transfer of exclusive rights, which gives those rights to the transferee alone, must be
in writing to be valid. Transfers of nonexclusive rights, however, can be by written or oral
agreement.
Rights of a copyright holder.
19 L.W. Merville, Forms and Agreements on intellectual Property and international Licensing, 3 rd
edition, Sweet and Maxwell, London (1979)
48 | P a g e
A number of specific rights are granted by the Copyright Act. These rights can be limited
and there are exceptions that apply. These rights are conferred as soon as one has a
copyright.
The Right of Reproduction - A copyright holder has the right to reproduce or

copy the protected work. This right is exclusive, meaning only the copyright
holder has it. This right is also one of the most important rights granted by the
Copyright Act.
The Right of Distribution - A copyright holder has the right to sell the protected
work to the public or distribute it in other ways including renting, leasing, or
lending. This right is limited by the First Sale Doctrine, which says that after the
first sale or distribution of a copy of the protected work, the copyright holder no
longer has control over the distribution of that copy. For example, if you buy a
copy of a book in a store, you can sell it without the copyright holder's
permission. There are limitations on the First Sale Doctrine.
49 | P a g e
The Right to Create Adaptations - The Copyright Act entitles a copyright holder
to create "derivative works". "Derivative works" are new works that are based on
the protected one. One of the most common examples is turning a book into a
movie: the movie is a derivative work of the book and the copyright holder has
the exclusive right to making the movie.
The Performance and Display Rights - A copyright holder can control public
performances or displays of a protected work. A work is performed in public when
it is performed in a place that is open to the public or where more than just the
usual family and family friends are present. Also, these rights are limited to
certain types of works. For example, the performance right includes literary,
musical, and audio visual works while the display right also includes pictorial and
graphical works.20
20 Ibid
50 | P a g e
Other Rights of the Copyright Holder
If you have a copyright, you can transfer any or all of your rights to another
person. If you transfer all of your rights, this is usually called an assignment. If
you only transfer some of your rights, this is usually called a license.
As a copyright holder, you also have the right to register your copyright with the
Copyright Office.
You can also bring suit to ensure the protection of your copyright. What type of
suit you can bring and the damages you could possibly recover will depend on
whether or not you have registered your copyright.
What Is a License?
A license is something that gives you a legal right to do or use something in which
another person has a property interest. In the case of a copyrighted work, a license
allows you to use that material in certain ways. For example, a license may allow you to
51 | P a g e
reproduce and distribute copyrighted material. In order to use copyrighted material, you
must obtain a license from the owner of the copyright, otherwise you could be sued. 21
Determining Copyrighted Work

There are many ways to determine if something is copyrighted. You can:
Examine the work itself to see if there is a copyright notice on it
Search through the records of the Copyright Office
Have the Copyright Office perform a search for you
These are just a few of the many possible ways to determine if a work is copyrighted.
The next step in obtaining a license is to obtain the permission of the owner to use the
material. The method for obtaining permission can vary with the type of work. Often,
there are licensing organizations that either hold the copyrights or represent the
52 | P a g e
copyright holders. You must contact these organizations to obtain a license for works
they cover. If you know who the copyright owner is, you can contact him or her directly.
Licensing Agreements
Permission to use a copyrighted work is articulated through a Licensing Agreement.
This agreement will include:
The scope of the license (what you can use the copyright for)
Terms of compensation
Length of the agreement
Any other rights or limitations you have
Not all license agreements include the same provisions, and each agreement can be
easily tailored to suit your needs.
DEFENCES TO COPYRIGHT INFRINGEMENT

53 | P a g e
Even though the copyright owner has the exclusive right to use and to prevent others
from using the work without his authorisation, copyright law permits anyone to do some
acts in relation to the work that are not restricted or controlled by the copyright owner
such as making musical tape for private and domestic use. Besides, someone will not
infringe the copyright in the work if he does some acts in relation to the work after
obtaining authorisation from the copyright owner. The permitted acts or defences to
copyright infringement are intended to provide a balance between the rights of the
copyright owner and the general public to get access to the work. They restrict the
exclusive rights granted by copyright in cases where it is felt they go too far. This is
particularly important as copyright is extremely wide in scope and its term of protection
is longer than any other intellectual property rights. 22
It must be stated that the defences to copyright infringement are not restricted to the
permitted or authorised acts and there are other defences such as public interest that
54 | P a g e
may justify an act which at first sight infringes copyright. The defences that are often
raised in an action for infringement may relate to procedure; jurisdiction of the court;
denial of the existence of copyright in the work or commission of the infringing acts or
continuance of the term of protection; the act performed was authorized or that the
plaintiff is not entitled to relief on grounds such as public interest or public policy; or lack
of knowledge on the part of the infringer. It must be emphasised that the defences or
exceptions to copyright infringement provided for under section 21 of the Copyright and
Performance Rights Act are only applicable to copyright infringement and not any other
infringement of other intellectual property right.
Consent of Copyright Owner

Copyright in a work is infringed by a person who, without the consent of the owner of
the copyright does or authorises another person to do a controlled act in relation to the
work. Thus, copyright in a work is not infringed if the owner of the copyright in the work
expressly or impliedly authorised or consented to the allegedly infringing act.
55 | P a g e
In Mellor v. Australia Broadcasting Commission23, the plaintiff, a music publisher,

issued a pamphlet with a catalogue and price list of its sheet of music. The pamphlet
included the following statement: Please Note: All our music is Free for Public
Performance. See our guarantee below, show them to your patrons, so that they may
rest assured that none of our publications will bring them any trouble over performing
fees. We make One price cover both the music and the performing rights thereof
The defendant broadcaster hired a band to perform, with a view to broadcasting the live
performance. The band performed music played from sheets which the band purchased
from the plaintiff. The plaintiff sued the defendant broadcaster for authorising a public
performance without the plaintiffs consent. The defendant claimed the plaintiffs had
consented to the performance by the statements in its pamphlets. The Court agreed
with the defendant and dismissed the action.
Lord Maugham for the Court statedThe trial judge held that the language used in
the pamphlets was a consent to the public performance of the works by the
23 1940] 2 All ER 20.

56 | P a g e
respondents. Their Lordships have arrived at a similar conclusion. Taken as a whole,

the statements in the pamphlet seem to guarantee complete freedom from trouble as to
copyrights to bands who, having bought the music published by the appellants, play the
musical works in public. As the judge remarked, the appellants must have known that
band performances were frequently broadcast.
If they desired to exclude such broadcasting; included as it is in the statutory

performing right; it was for them to exclude it. The licence or consent given in the
pamphlets included the broadcasting by bands, with any necessary consequences of
such broadcasting, such as the use of receivers by persons entitled to use them. It
follows that the respondents were entitled to engage bands to do these permitted
things, and have not committed a breach of the appellants performing rights by
authorising the bands to do them.
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Similarly, in Netupsky v. Dominion Bridge Co. Ltd 24, the plaintiff engineer agreed to
design the Ottawa Civic Centre for a flat fee and produced the necessary plans. The
cost of construction was thought to be too high, but the plaintiff refused, in breach of
contract, to change his plans. The defendant contractor, Dominion Bridge Co. Ltd,
therefore, made changes to reduce costs and made additional copies of the plaintiffs
plans, which incorporated the changes. The plaintiff sued the defendant for copyright
infringement, claiming: (1) that the defendant had no licence to copy his plans at all;
alternatively (2) that even if the defendant was licensed to copy, the licence did not
extend to the changes made, and so the defendant infringed by stepping outside the
scope of any implied licence. The Court, through Judson, J. in finding for the defendant
stated as follows: The question at issue is whether Dominion Bridge was liable for an
unauthorised use of Netupskys plans when it redesigned to some extent, without
affecting the artistic character and design, the construction of the work for the purpose
of saving the costs, and made copies of the plans necessary for its part in the
construction. In my opinion, one should infer, in the circumstances of this case, that
24 [1972] SCR 368

58 | P a g e
there was a licence to make whatever changes were thought necessary and to
reproduce the plans in as many copies as were necessary to construct the work. It is
clear that the changes or modifications were in contemplation at the time when the City
of Ottawa and, through it, Dominion Bridge, its subcontractor, became the licensee of
Netupsky for the construction of its Civic Centre. Such a licence carries with it an
implied consent to make the changes which Netupsky should have made and refused to
make, and also, an implied consent to reproduce the plans in as many copies as might
be necessary for the construction of the work. 25
I adopt the statement of principle (from an Australian case):

The engagement for reward of a person to produce material of a nature which is
capable of being subject of copyright implies a permission or consent or licence in the
person making the engagement to use the material in the manner and for the purpose in
which and for which it was contemplated between the parties that it would be used at
the time of the engagement. The payment for sketch plans includes a permission or
59 | P a g e
consent to use those sketch plans for the purpose for which they were brought into
existence, namely, for the purpose of building a building in substantial accordance with
them and for the purpose of preparing any necessary drawings as part of the task of
building the building. There then remains the question whether there should be any
implied right to transfer it and here I think that it must inevitably be implied that the
owner, having commissioned the sketch plan and having obtained the right to use it for
the purpose of erecting on that site a building in substantial accordance with it, should
have the right to transfer that right to a new owner of the land. Netupsky agreed with
Hamilton to provide the plans for the structural design of the Ottawa Civic Centre.
Hamilton, the architect for the project, was acting for the owner, the City of Ottawa, in
his dealings with Netupsky. The plans became the property of the owner to use for the
purpose of erecting the intended structure in substantial accordance with those plans.
Dominion Bridge, the successful bidder for the steelwork, used the plans for this
purpose, and their authority was derived from the City of Ottawa, which held an
impartial licence to the copyright. The extent to which the copyright material may be
60 | P a g e
altered is not unfettered, however. The Court may imply terms limiting that right, or the
contract may expressly or impliedly forbid any alterations. There was no refusal by
Dominion Bridge to give credit to Netupsky for the structural design. The final plans,
though modified, described a structure which, to the layman would be identical in
appearance to a structure built in accordance with Netupskys plans. In my opinion, the
alterations made by Dominion Bridge were within the limits which should be considered
acceptable. In the result, there has been no infringement as the alterations were made
with the implied consent or licence of Netupsky.26
In order to give authorisation or consent to doing any act in relation to restricted works,
a formal contractual licence is not necessary or required. Informal or even implied
licences will suffice. In cases of joint ownership of copyright a licence from all the joint
owners is required. It must be noted however, that the grant of a licence to authorise
one person to do the acts restricted by copyright does not authorise or allow another
61 | P a g e
person to do the said acts. Thus, in Banier v. News Group Newspapers Ltd27, the
plaintiff, a photographer, licensed The Times newspaper to publish a photograph in
which he owned copyright, without charge provided the plaintiffs authorship was
acknowledged. The defendant, News Group Newspapers, owners of the Sun
newspaper, re-published the photograph after trying unsuccessfully to contact the
plaintiffs agent for permission. The Court held that the plaintiff copyright was infringed
and rejected the claim by the defendant that the plaintiffs licence to The Times led the
defendant to expect that it was similarly licensed.
Public Interest
In contrast to the statutory defences to copyright infringement, the courts have power to
refuse to give copyright protection to the work on the grounds of public interest. In
Beloff v. Pressdram Ltd28, it was held that the defence of public interest may be
divided into two groups first being the public interest defence regarding actions for
27 [1997] FSR 812

28 [1973] 1 All ER 241
62 | P a g e
copyright infringement, and second the public interest defence in breach of

confidentiality actions.
(i) Defence of public interest in copyright infringement
Courts have refused to enforce copyright in works that offend against the policy of the
law, for example, works which are illegal, immoral, scandalous or contrary to family life.
However, the courts will not allow anyone to hide under the public interest defence to
infringe copyright in the work, when there is no justification to do so. The case of Hyde
Park Residence Ltd v. Yelland29, involves an unusual breach of copyright by the
publication by The Sun of photographs of Princess Diana and Mr Dodi Fayed entering
and leaving in a house in Paris owned by Mr Al Fayed, with times recorded, taken by a
security video camera owned by Mr Al Fayed. The Sun claimed that it was in the public
interest to publish these photographs as they refuted by Mr Al Fayed that the two had
enjoyed a lengthy tryst at his house in Paris. Hyde Park sued the newspaper for
copyright infringement. The court of first instance accepted the newspapers defence
that the public interest overrode copyright, but the Court of Appeal allowed the appeal.
29 436 [2001] Ch. 143

63 | P a g e
Lord Justice stated as follows: The 1988 Act does not give a court general power to
enable an infringer to use anothers property, namely his copyright in the public interest.
Thus a defence of public interest outside those set out in Chapter III of Part I of the
1988 Act, if exists, must arise by some other route. The courts have an inherent
jurisdiction to refuse to allow their process to be used in certain circumstances. It has
long been the law that the courts will not give effect to contracts which are, for example,
illegal, immoral or prejudicial to family life because they offend against the policy of the
law. The circumstances where it is against the policy of the law to use the courts
procedure to enforce copyright are, I suspect, not capable of definition.
30
However it must be remembered that copyright is assignable and therefore the

circumstances must derive from the work in question, not ownership of the copyright. In
my view a court would be entitled to refuse to enforce copyright if the work is:
(i)
immoral, scandalous or contrary to family life;
64 | P a g e
(ii)
injurious to public life, public health and safety or the administration of
justice; incites or encourages others in a way referred to in

The submission by the Counsel for the defendant that the driveways stills needed to be
published in the public interest to expose the falsity of the statements made by Mr Al
Fayed has no basis in law or in logic. Perhaps the driveways stills were of interest to the
public but, there was no need in the public interest in having them published when the
information could have been made available by the The Sun without infringing the
copyright.
(ii) Defence of public interest in breach of confidentiality

The courts have refused to protect confidential information when the public interest to
disclose that information outweighs the need to have the information kept confidential or
not to be disclosed to the public. In Lion Laboratories Ltd v. Evans31, Lion
Laboratories manufactured breathalyser kits widely used by the police for testing the
breath of drivers suspected of being over the alcohol limit. The first and second
31 [1984] 2 All ER 417; [985] QB 526; [1984] 3 WLR 539.

65 | P a g e
defendants worked for Lion Laboratories. They removed without authority confidential
memoranda which cast doubt on the accuracy of the breathalysers, and supplied these
to a newspaper, Daily Express. Daily Express published a report alleging that the
breathalyzer was liable to serious error which could lead to wrongful conviction. Lion
Laboratories brought proceedings and obtained an injunction to prevent the defendant
from publishing the information on the basis that the information was confidential and
also because the publication would infringe copyright.
The Court of Appeal discharged the injunctions granted below and held that there was a
serious issue to be tried as to whether the defendants had a public interest defence to
each of the claims and permitted publication of specified documents.
Stephenson, L.J for the Court stated:
The problem before the judge and before this court is how best to resolve, before the
trial, a conflict of two competing interests. The first public interest is the preservation of
the right of the organisation, as of individuals, to keep confidential information. The
courts will restrain breaches of confidence, and breaches of copyright, unless there is
66 | P a g e
just cause or excuse for breaking confidence or infringing copyright. The just cause or
excuse with which this case is concerned is the public interest in admittedly confidential
information. There is confidential information which the public may have a right to
receive and others, in particular the press, now extended to the media, may have a right
and even a duty to publish, even if the information has been unlawfully obtained in
flagrant breach of confidence and irrespective of the motive of the informer.
Fair Dealing
The Copyright and Performance Rights Act 32, in certain circumstances does allow
anyone to do some acts restricted by copyright without the consent of the copyright
owner if the said acts are considered fair dealing in relation to the work. Examples of
fair dealing or fair use in case of the USA, in relation to the work include reproduction
of a work exclusively for personal and private use; making of quotations from a
protected work, provided that the source of the quotation, including the name of the
author is mentioned. Fair dealing provisions allow the copying or other use of the work
32 Chapter 406 of the Laws of Zambia

67 | P a g e
which would otherwise be an infringement. However, fair dealing in relation to the work
can only be safely enjoyed if the part taken from the work is not substantial. In
Independent Television Publications Ltd v. Time out Ltd33, the publishers of T.V.
Times and Radio Times asserted literary copyright in the schedules of television and
radio programmes which they published each week.
The Copyright and Performance Rights Act does not define fair dealing, but only
restricts the defence of fair dealing for purposes of criticism or review, reporting current
events, research and dealing a work for private study or use. In describing the scope of
fair dealing for purposes of criticism or review, Lord Denning, in Hubbard v. Vosper34,
stated: you must first consider the number of and the extent of the quotations Then
you must consider the use made of them. If they are used as a basis of comments,
criticism or review, that may be fair dealing. If they are used to convey the same
information as the author, for a rival purpose, they may be unfair. Next you must
consider the proportions. To take long extracts and attach short comments may be
33 [1984] FSR 64.

34 [1972] 2QB 84 at 94; [1972] 1 All ER 1023, per Lord Denning, MR
68 | P a g e
unfair. But short extracts and long comments may be fair. Other considerations may
come to mind also. But it must be a matter of impression.
Private Study and Research

Fair dealing in relation to a work for the purposes of study and research does not
constitute infringement of copyright. The Copyright and Performance Rights Act
provides that fair dealing with a work for private study or for purposes of research done
by an individual for his personal purposes otherwise than for profit shall not constitute
infringement Therefore, where a student makes a copy of a book on banking law for
purposes of study or research, this may be considered fair dealing. However, where a
lecturer makes multiple copies of the said book and distributes them to his students for
the purposes of study or research it will not be considered to be fair dealing. Thus, in
Sillitoe v. McGraw- Hill Book Co Ltd35 , the defendant had published study notes
intended to assist students taking O level examinations in literature, and had
reproduced a substantial part of the plaintiffs works in the study notes. The defendant
35 [1983] FSR 545.

69 | P a g e
raised, inter alia, the defence of fair dealing for purposes of research or private study, or
for purposes of criticism or review as provided for by the Copyright Act in section 6 (1).
Reporting Current Events
The third fair dealing exception permits works to be used for reporting current events in
a
newspaper,
magazine
or
similar
periodical,
provided
there
is
sufficient
acknowledgement; or by broadcasting or by inclusion in a cable programme service or

by its use in an audiovisual work.464 The term sufficient acknowledgement is defined
as an acknowledgment identifying the work in question by its title or other description
and, unless the work is anonymous or the author has previously agreed or required that
no acknowledgement of his name should be made, also identifying the author.
Incidental Inclusion
The Copyright and Performance Rights Act exempts from infringement acts which allow
some incidental inclusion of protected works without obtaining permission in advance
from the owner of the work. An example would be where a television news crew films a
demonstration and the report is broadcast or where one takes a photograph of an
70 | P a g e
artistic work. Thus incidental inclusion of a work in an artistic work, audiovisual work,
sound recording, broadcast or cable programme does not constitute infringement.
Copies can be issued to the public, the work can be shown or played, broadcast or
included in the cable programme service. The inclusion must however, be accidental.
Thus, the incidental inclusion defence will not be available if the work is included
deliberately. In Hawkes & Sons (London) Ltd v. Paramount Film Service Ltd 36, the
incidental inclusion defence failed because the twenty-eight bars of the march Colonel
Bogey were included deliberately in the newsreel as background music.
Judicial Proceedings
The copyright in a work will not be infringed if the work is reproduced for the purposes of
judicial proceedings, or of any other proceedings before a tribunal established by law,
for
the
purposes of
report
of
judicial
proceedings
or any other
such
proceedings.Therefore, a reporter who writes verbatim of the court proceedings in a trial
36 [1983] FSR 545

71 | P a g e
case or documents filed in court and publish them in a newspaper will not infringe the
copyright in the said work.
Instruction and examination

Copyright will not be infringed if a literary, dramatic, musical or artistic work is
reproduced for the purposes of the education system in Zambia. For the defence of
educational use to be available, certain conditions must be met, namely, the
reproduction or copying must be done by a teacher or pupil in the course of instruction,
and reproduction must not be made by means of an appliance capable of reproducing
multiple copies; or as part of the questions to be answered in an examination; or in
answer to such questions. The educational use exception does not cover any
subsequent dealings in the copies made for educational purposes. Copyright will
therefore be infringed when the copies are sold, let for hire, or offered or exposed for
sale or hire. However ,acts which conflict with the normal commercial exploitation of a
work, or unreasonably prejudices the legitimate commercial interests of the owner of the
copyright in a work will not qualify for exemption for education use.
72 | P a g e
Section 21 (1)(b) of the Copyright and Performance Rights Act allows fair dealing with
one work in order to criticise or review another work. For instance, it is fair dealing to
include extracts from a work by A in a work which is a critical analysis of the work of B.
However, the work must not be merely copied, but criticised or reviewed.
In Anton Piller AG v. Manufacturing Process Limited 37, a German manufacturer had

evidence that its English agent was passing the German companys confidential
manufacturing drawings and other information to a competitor. It applied to the High
Court in London, without notice to the agents, for a pre-trial injunction stopping them
from infringing copyright or passing on confidential information. The court granted the
injunction, but refused an order requiring the agents to allow up to two representatives
of the applicant and two of their lawyers to enter the agents premises and inspect and
remove into the lawyers custody any documents or articles relating to the design or
manufacture of copies of the German companys equipment. The applicant appealed
against the refusal. The court held that, in exceptional circumstances, where the
37 [1976] 1 Ch. 55.

73 | P a g e
claimant has an extremely strong prima-facie case, where the actual or potential
damage to the claimant is very serious, where it was clear that the defendant
possessed vital evidence and where there was a real possibility that he might destroy or
dispose of such material so as to defeat the ends of justice, the court had the
jurisdiction to order the defendant to permit the claimants representatives to enter the
defendants premises and inspect and remove such materials. The object of the search
order in this context is the preservation of evidence.
ACTIVITY
i)
Explain the concept of infringement under the Copyright and Performance
ii)
iii)
rights
Explain the types of works that can be copyrighted.
Critically analyse the effectiveness of the Zambian Copyright laws.
74 | P a g e
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UNIT 3
PATENTS
By the end of this lecture, students must be able to;
a) Define a patent.
b) Types of Inventions that Can Be Patented

c) Subject of Patentiblity
d)Patent Infringement
76 | P a g e
What is a Patent?
The Patent Act38, A patent is an exclusive right granted for the protection of an invention,
which is a solution to a specific problem in the field of technology.39 An invention may
relate to a process, such as a new method of brewing beer, or it may relate to a product
such as a new medicine for curing a particular illness like cancer or AIDS. For the
invention to be protected by a patent it must satisfy some conditions, namely, it must be
new or novel; it must involve an inventive step, that is, it must not be obvious to a
person skilled in that art; and it must be capable of industrial application and must fall
within the patentable subject matter. The grant of a patent gives the inventor a
monopoly to work the invention to the exclusion of the others for the duration of the
invention, which is sixteen years.
As an inventor, one must protect an invention from unauthorized use and distribution.
Under the Zambian patent law, a patent is given to an inventor in order to exclude
others from "making, using, offering for sale or selling the invention" . Thus, a patent is
38 Chapter 400 of the Laws of Zambia

39
77 | P a g e
given to an inventor to protect his invention. A patent is a right granted for the protection
of an invention, which can be either a product or process that offers a new technical
solution to a problem. To be protected by a patent, an invention must satisfy three
conditions, namely:
(a) It must be novel (new), that is, the invention must show some new characteristic
which is not known in the body of existing knowledge in its technical field. This body of
existing knowledge is called the prior art;
(b) It must show an inventive step (non-obviousness), which could not be obviously
deduced by a person with average knowledge of the relevant technical field; and
(c) It must be capable of industrial application (usefulness).
It must be noted that not all inventions are patentable. In order to be eligible for patent
protection, an invention must fall within the scope of patentable subject matter.
Examples of some of the inventions that have been held not to fall within the patentable
subject matter include discoveries of materials or substance already existing in nature,
scientific theories or mathematical methods, methods for medical treatment of human or
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animals or diagnostic methods practiced on humans or animals (but not products for
use in such methods). A patent provides the owner with the exclusive right to use the
invention and to prevent others from using the patented invention without the patent
owners consent. Thus, the invention cannot be commercially made, used, distributed,
offered for sale, imported or sold without the patent owners consent. A patent being a
monopoly right is granted for shorter duration as compared to copyright. The protection
granted for patents in Zambia is sixteen years though in most countries it is normally
twenty years. After that time, the knowledge becomes part of the public domain for
anybody to use or access. The patent owner is responsible for enforcing his rights in the
patent including detecting any infringement. 40
Patents typically exist for twenty years and can be used for any invention in any field of
technology. Patents are part of international agreements with the World Trade
Organization (WTO), so member nations of the organization are expected to recognize
and enforce legal patents.41
40 Chapman, A. R., (2Ed.), Perspectives on Gene Patenting: Science, Religion, Industry, and Law in Dialogue,
(Washington, D.C.: American Association for the Advancement of Science, 1999),
41 Chapman, A. R., (2Ed.), Perspectives on Gene Patenting: Science, Religion, Industry, and Law in Dialogue,
(Washington, D.C.: American Association for the Advancement of Science, 1999),
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Rationale of Patents
There are a variety of reasons advanced for the justification of the patent system, and
notable among them include:
(a) Incentive Theory
Developing an invention calls for significant investment in terms of capital, time, labour
and equipment. In order to recoup and get a fair return on the investment as well as the
risk taken to develop the invention, the inventor should be given a limited monopoly
right to use or exploit the invention to the exclusion of all others. This monopoly gives
the inventor the incentive to invest more in developing other inventions which are of
benefit to society. It also enables him to prevent his invention from free-riding by his
competitors. A free-rider benefits from the work of others without bearing the cost of
making a creative work or invention. By limiting free-riding, patent laws encourage
investment of finance and research efforts into long term outcomes.
(b) Reward Theory
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Linked to the incentive theory is the reward theory. The grant of patents to inventors is
intended to encourage research, innovation and development for the benefit of the
society. It is intended to help them benefit from their inventions by rewarding them for
their ingenuity and work put into developing their product or process.
(c) Contract Theory
An inventor is granted a monopoly, through a patent, for a limited duration on condition
that the inventor will disclose the details of his invention to the public. This encourages
the publication and dissemination of information, which otherwise would not have been
available to the public, save for the monopoly granted to the inventor. Details of the
patents are published and are available to the public for inspection, and when the patent
expires anyone is free to either make the product or use the process.
(d) Natural Law/Moral Right

A patent granted for an invention is like any other property right which is attached to the
inventor and also capable of being owned. Therefore, individuals who have been
granted patents for their inventions have a right of property in their inventions and this
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right should be protected from being stolen or usurped by others. In short, the law
should provide reward for the inventor and enable him to control the use or exploitation
of his invention, and to prevent others from taking unfair advantage of his efforts.
(e) Stimulate Economic Development

The rationale for patents is that they stimulate economic and technical development and
promote competition by creating a financial motivation for invention. This is evidenced in
terms of manufacturing enterprises established and respective jobs created; the
products put on the market and sales generated by the said products; amount of
royalties and other revenues from licences granted for use of inventions as well as the
huge budgets for research and development (R&D) by enterprise.
(f) Business Asset
A patented invention is a business asset. Where the patentee chooses not to exploit the
invention by himself, he has the option of either selling it or licensing it to another
enterprise to commercialise it, thereby earning some revenues in form of royalties.
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Furthermore, the patentee may, where the patent has commercial value, use it to obtain
funding from financing institutions.
In Chiron Corporation v. Organon Teknika Limited (No.10)42,589 Aldous,
J. in justifying the patent system, stated that nearly every country had chosen to adopt a
patent system because:it is generally accepted that the opportunity of acquiring
monopoly rights in an invention stimulates technical progress in at least four ways. First,
it encourages research and invention; secondly, it induces an inventor to disclose his
discoveries instead of keeping them a secret; thirdly, it offers a reward for the expense
of developing inventions to the state at which they are commercially practical and,
fourthly, it provides an inducement to invest capital in new lines of production which
might not appear profitable if many competing producers embarked on them
simultaneously.
It is inherent in any patent system that a patentee will acquire a monopoly giving him a
right to restrict competition and also enabling him to increase or at least maintain prices.
42 [1995] FRS 325 at 332

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That affects the public and is contrary to the public interest, but it is the recognised price
that has been accepted to be necessary to secure the advantages to which I have
referred. It should be stated that in considering the justification of patents stated above,
it is important to bear in mind that patents also, attract criticisms more especially when
the patent rights loudly conflict with the public interest right such as peoples access to
cheap and affordable medicines.These criticisms of patents include, the arguments that
patents:
(a) create unjustifiable monopolies to companies, which often can be abused, especially
where the patentee prevents or deters potential competitors from developing products
similar to his own or threaten them with legal action;
(b) increase or force up the price of essential goods, such as pharmaceuticals, and
making them effectively unobtainable, or alternatively prevent anyone from getting
access to or obtaining the product produced or sold cheaply in another market; and
(c) block access to new technology especially by developing countries.
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To address some of the concerns raised by the monopolistic or exclusive nature of

patent rights, the Patent Act has put some limitations on the said monopoly right of
patents. These include:
(i) grant of compulsory licences in case of abuse or insufficient use of patent rights591;
(ii) endorsement of patent licences of right;
(iii) use or exploit patents for services of the State593;
(iv) use or exploit the patents by the State during emergency;
(v) prohibition of certain restrictive conditions in contracts to sell, lease or licence to use
or work either the product or process patent.
SUBJECT MATTER AND CONDITIONS OF PATENTABILITY
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A patent is a document issued, upon application, by a patent office which describes the
invention and grants the patentee, subject to the conditions attached to the patent, full
power, sole privilege and authority by himself, his agents and licensees during the term
of the patent to make, use, exercise and vend the patent within Zambia, in such a
manner as he sees fit, so that he enjoys the whole profit and advantage accruing by
reason of the invention during the term of the patent.
An invention, which is a solution to a technical problem, may relate to either a product or

a process. Section 2 of Patent Act defines invention as any new and useful art (whether
producing a physical effect or not), process, machine, manufacture or composition of
matter which is not obvious, or any new and useful improvement which is not obvious,
capable of being used or applied in trade or industry.
It must be sated that not every new product or process qualifies as an invention. It is
also not enough to have created an invention to be eligible for a patent. It has to be an
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invention that passes certain legal tests, that is, tests for patentability. For an invention
to be eligible for patent protection, it must satisfy the following conditions:
(i) it must be novel (new);
(ii) it must involve an inventive step (be non-obvious);
(iii) it must be capable of industrial application; and
(iv) it must fall within patentable subject matter.597
Novelty
An invention which is new or novelty exists if there is a difference between the
invention and the current knowledge or the prior art. The claimed invention must not be
anticipated by the prior art at the effective date of the patent application to prevent
novelty from being destroyed. Prior art is all the knowledge that existed before the
relevant filing or effective date of a patent application, whether it existed by way of
written or oral disclosure.
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Types of Inventions that Can Be Patented

Generally, to receive a patent from the PACRA, Patent and Trademark office, the
invention must be new, unique, and generally unobvious. There are different patents
available depending on the item you wish to patent:
Utility Patent - Generally, the invention must be a process or method with a

concrete result, a machine, a chemical or biological composition of matter, or an
invention improvement. To qualify for a utility patent, the invention must also be
moderately useful.
Design Patent - Generally, the design must be novel, non-obvious and

nonfunctional.
Plant Patent - Plants that you create can be patented. The plant must be novel
and non-obvious. Naturally occurring substances, laws of nature, ideas, and
calculation methods, among other things, cannot be patented.
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How Can I Get a Patent for My Invention?

The U.S. Patent and Trademark Office receives applications for patents and makes
patent determinations. An inventor must submit an application to the Patent and
Trademark Office and attach specific drawings and a plan of the proposed invention.
The inventor must also include a fee. The plan of the invention must follow a very rigid
and specific form. After the application is reviewed, the Patent and Trademark Office will
usually question the applicant as to any objections the office may have.
Please note that as of September 2011, the inventor who first filed the patent will
receive the exclusive rights. Before September 2011, patent protection was granted to
those who first invented the technology or product.
Can I Transfer My Patent To A Family Member or Business Partner?

Yes. Although the Federal Constitution gives Congress the power to grant exclusive
rights to inventors only, the current federal code allows patents to be sold, licensed,
mortgaged, transferred or abandoned like any other property.
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Patent Infringement
When another party uses your invention, or an invention with similar elements to your
invention, they may be liable for patent infringement. In order to demonstrate patent
infringement, one must compare the patent's claims and elements with the elements of
the device or invention that is suspect. If they match, there is an infringement. An
inventor can enforce the patent in a federal court.
What Does It Mean to License a Patent?
A patent owner can sell or lease the rights granted to him through his patent by giving
another person a license to make or sell his invention. Typically, a patent owner will
grant these rights through a licensing agreement to a developer in exchange for
royalties. If all the patent rights are sold to a person, the sale is called an assignment.
Licensing the rights to make, use, or sell a product is the best way for inventors to make
money and profit from their inventions. Since the inventor is usually the patent holder,
the inventor can keep the ownership of the invention and receive royalty payments on
any future sales of the invention or product through licensing.
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What Are Some Licensing Options?

There are several marketing ways to sell and license your invention or product:
1. Direct Contact: Make direct contact with manufacturers and potential users of
your invention, and showcase your invention to them.
2. Trade Shows: Attend tradeshows that allow you to showcase your invention to
potential consumers and users.
3. Advertise: Buy an advertisement space in magazines and trade publications to

showcase your product to potential buyers and consumers.
4. Patent Websites: Research patent websites, and try to post on them in order to
advertise your invention.
5. Look for Investors: Contact investors that would be interested in investing in

your product, thereby providing you with capital to launch your product.
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Can I Manufacture and Sell the Patented Invention After I License the Patent?
Depending on what kind of license you grant to someone, you may or may not be able
to manufacture and sell your patented invention yourself. If you agree to give someone
an exclusive license, or if you give someone an assignment of your patent rights, only
that person has the ability to manufacture and sell the invention.
Do I Have to Put My License in Writing?

Yes, any assignments of patent rights must be in writing in order to be valid. However,
all licenses do not have to be in writing in order to be valid. A license can be oral and will
be enforceable if it is qualified as a general contract and follows all the general contract
principles, including satisfying the Statute of Frauds.
Should I Record My Licenses and Assignments?

You are not required to record your licenses and assignments with the United States
Patent and Trademark Office (USPTO), but you may want to do so. Unless you record
your license, you cannot sell it to subsequent buyers or offer it to a secured creditor.
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Thus, although it is not necessary to record your license, it is probably in your best
interest to record your license, even though it is not necessary to do so.
CAN I CHALLENGE THE VALIDITY OF A PATENT LICENSED TO ME?

Generally, patent laws do allow you to challenge the validity of a patent after you have
obtained a license for some of the patent rights.
PATENT APPLICATION PROCEDURE IN ZAMBIA
Filing
Search and Preliminary
Examination
Publication
Substantive Examination
Grant
Renewal / Maintenance
Arguments
Objections
Objections overcome
There are some basic steps before filing an application for a patent at in Zambia. It is
advised to conduct a patent search to determine if there are other inventions that are
similar to yours. Also a patent search allows you to make sure your invention qualifies
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for a patent protection. The Patents Act , has specific rules that can be followed to file a
patent.
1.Filing
Assuming you are a first time applicant you will first file an "original application" packet
which includes the claims of your invention. Accompanying this application will be any
drawings relevant to the invention, a declaration of inventorship, and a power of
attorney (when you have an attorney representing your interests). You also have to
include an application fee.
2. First Office Action

Once your application is filed with the PACCRA it is reviewed by a patent examiner
trained in the particular field where your invention is relevant. Usually, the examiner will
send you a letter asking you questions about your application or requiring you to make
changes to your application. These requests are called Office Actions. You must
respond to office actions by making the requested changes to your application (called
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amendments), or you may make an argument to the examiner regarding the objections
stated in the office action. This process usually takes about six to eight months.
3. Second Office Action

After reviewing your response to the first office action the examiner can either issue the
patent or send you a second office action. A second office action usually addresses new
problems that your response to the first office action created. The second office action
process can take up to one year. Once you have responded to the second office action
the examiner must issue a patent or reject your application. If your patent is rejected
you can appeal the denial. Appeals can take up to two more years to complete.
4. Issuance
Once an examiner is satisfied with your application they will make an allowance and the
applicant will be required to pay an issuance fee. Once this fee is paid the applicant
owns exclusive rights to the invention not to exceed 20 years from the date of the
original application. Allowance to issuance can take up to one year.
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How Long Does a Patent Last?
Patents filed after June 8, 1995 last for a period of 20 years from the date the
application was filed. Patents filed before June 8, 1995 have whichever is the greatest
of a term of 17 years from the date the application was granted or 20 years from the
date the application was filed.
A patent duration also depends on what kind of patent is being filed. The validity of
patents is as follows:
Utility Patent: 16 years from the date of filing if filed prior to June 8, 1995 (or 17
years from the date the patent is issued, whichever is longer)
Utility Patent: 20 years from the date of filing if filed after June 8, 1995
Design Patent 14 years from the date of issue for design patents
Plant Patents: 17 years from the date of issue
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Do Patents Ever Expire Early?

Patents can and sometimes do expire early. Some of the common ways that the
duration of a patent term is cut short are:
The patent is found to be invalid
The inventor fails to pay maintenance fees
Once the patent expires, either because the time limit expired or failure to pay the
required fees, the patent goes into the public domain and can be used, sold, or imported
by anyone. The patent owner does not have rights over the patent after it expires, but
may bring infringement action or enforcements actions if the patent was infringed during
the time when the patent was not expired and was valid.
What Could Make My Patent Invalid?

A patent can be deemed invalid for a number of reasons. Usually, a patent will be found
to be invalid during infringement cases where an accused infringer defends himself by
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claiming your patent is invalid. Some of the common reasons patents are found to be
invalid are:
The invention was not actually patentable - if someone can bring evidence
that your invention lacked the requisite novelty, utility, or non-obviousness
required for a patent, the PATENTS OFFICE can declare your patent invalid.
You obtained the patent fraudulently - even if your invention was patentable, if
someone can show that you got your patent by deceiving the PATENTS OFFICE,
your patent can be declared invalid.
You used your patent to commit illegal acts - if you use your patent to engage
in illegal conduct, the PATENTS OFFICE can declare your patent invalid.
What Are Maintenance Fees and When Do I Have to Pay Them?

Maintenance fees must be paid to the PATENTS OFFICE to keep the patent in force.
Maintenance fees are due 3 , 7 , and 11 years after the patent has been granted.
However, if you miss these deadlines, you have a 6 month grace period to pay the
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maintenance fee along with a penalty surcharge to keep your patent in force. If you fail
to pay the maintenance fees, your patent will expire.
What Is Patent Infringement?
Patent infringement is the unauthorized manufacture, use, sale, or importation of a

patented invention.
How Do I Know if Someone Infringed on My Patent?

Whether or not someone infringed on your patent will depend on the scope of the claims
of your patent. The claims define your invention, and therefore define the scope of
protection your invention receives. In order to infringe on your patent, an invention must
infringe on every claim made in your patent. To determine if a new invention infringes on
your patent, you must go through two steps:
You must determine the scope and meaning of the claims in your patent
Then you must determine if the new invention infringes on those claims
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How Do I Determine the Scope of My Patent's Claims?

The meaning and scope of the claims will depend primarily upon the language of the
claims. In determining the meaning and scope of your claims, consider the following:
Claims should have the same meaning for infringement as they had for validity.
Unless you state otherwise, the language in the claims should be given its
ordinary meaning.
A single word will have only one meaning. The same word in two different claims
will have the same meaning in each claim. You cannot try to change the meaning
of the words in a claim to widen the scope of your patent.
Claims should be construed as broadly as possible.
So when you are trying to determine the scope of your claims, you need to look at what
the claims actually describe, not what you want them to describe.
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Does the New Invention Have to Be Identical to My Invention to Infringe on My

Patent?
While it might seem that a new invention would have to be a duplicate of yours to
infringe, it is often sufficient for the new invention to just be substantially similar to yours.
An invention can infringe two ways:
Literally - The claims of your patent directly describe the infringing invention
Doctrine of Equivalents - The infringing invention does not literally fall under
your claims, but it performs the same function in order to achieve the same
result, and every element of every claim of your invention has some
corresponding equivalent in the infringing invention
What Remedies are Available to Me If Someone Infringes on My Patent?

If you win a lawsuit against an infringer, you may be entitled to a number of remedies
including:
An injunction
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Damages
Court costs and attorney's fees
Infringement
A patent grants to the patentee the right to decide who should or who should not exploit
his patented invention. Furthermore, a patent enables the patentee to enforce his rights
against any person who infringes his patent. A person infringes a patent for the
invention if, while the patent is in force, he does any of the following acts within Zambia
without the consent of the proprietor of the patent.
(a) Where the invention is a product, he makes, uses, exercises, offers for sale, sells or
imports the product;
(b) Where the invention is a process, he uses, offers for sale, sells or imports any
product obtained directly by means of that process.
There are various ways in which infringement of patent rights might arise.
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Firstly, the infringement could occur or take place where a third party, without any
attempt to avoid the infringement, deliberately infringes a patent. This may involve direct
copying of the invention or minor variations or modifications of the patent. 43
The second type of infringement occurs where the infringement is deliberate, but the
infringer makes attempts to avoid the appearance of infringement. It often happens that
once the invention is disclosed, either by publication of the patent document or sale of
the product incorporating the invention, third parties are given ideas of the problem and
how the invention will solve the said problem. Hence third parties may come up with an
alternative invention to deal with or solve the same problem.
Thus, while third parties may be genuinely trying to design around the patent whilst still
making use of the basic idea of the inventor, the result achieved may fall within the
scope of the claims of the patent. It must be observed that this is the most common
form of infringement faced by the patent owners and gives rise to most litigation.
The third type of infringement arises in the case of accidental infringement. Accidental
infringement often happens where, for example, research departments of different
43 D.,Matthews, D., Globalising Intellectual Property Rights, the TRIPS Agreement, New York: Routledge, 2002.
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organisations may all be working on a similar problem, or where several companies who
have been asked to tender for a contract to solve a particular problem or to achieve
certain result, and in so doing come up with similar ideas to that which may have been
involved in the patented invention. Thus, although the patentee may feel that his
invention has been copied, the third party has in fact arrived at a similar if not identical
solution through a different route
Elements of Infringement
In order to establish infringement the proprietor of the patent must prove
i)
Carrying out of Prohibited Act
ii)
Prohibited act must have been carried out in the country where the patent
iii)
was granted.
Prohibited act must be in relation to a product or process falling within the
scope of a claim of the patent
Defences
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A person sued for an alleged infringement of a patent has various defences including
statutory defences, challenge the validity of the patent, and apply to court for a
declaratory non-infringement.
The statutory defences to patent infringement include:
i)
ii)
the alleged infringement was done during the lapse of the patent
the alleged infringement was carried out after the patent had been
revoked;
(iii)
the alleged infringement occurred before the publication of the
patent application;
(iv)
the infringing activity was done for experimental purposes relating
to the subject matter of the invention;

(v) the infringer is a government department or any person authorised in writing by the
Minister to make, use or exercise the invention for the service of the state. 44
UNIT 4
44 Gervais, D., The TRIPS Agreement, Drafting History and Analysis, London: Sweet and Maxwell, 2003.
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TRADE SECRETS
By the end of this unit, students should be able to

a) Appreciate the subject matter of trade secrets
b) Define trade secrets
c) Distinguish trade Secrets, Trademarks, and Patents
d) Protection of trade secrets by entities
What Are Trade Secrets?
Generally, a trade secret is valuable information that gives a business a competitive

edge over other businesses. The "information" can be a formula, pattern, compilation,
program, device, method, technique, or process. Specifically, a trade secret includes
these three elements:
1. The information is not known to the public
2. The information is economically beneficial to the holder

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3. The information holder makes a reasonable efforts to maintain its secrecy45
What Are the Differences Among Trade Secrets, Trademarks, and Patents?
Different statutes protect the sources of intellectual property. Federal statutes (namely,
the Lanham Act and the Patent Act) protect trademarks and patents. For the most part,
state law protects trade secrets, and most states have enacted the Uniform Trade
Secrets Act (UTSA). However, the theft or misappropriate of some trade secrets is a
federal crime.
Also, trademarks and patents are not kept secret from the public. On the other hand,
trade secrets are concealed from the public because if the information becomes public,
the trade secret holder will lose its economic edge.
Finally, trademarks and patents are subject to a number of legal exemptions that do not
apply to trade secrets. People can usually satire or parody trademarks; such parodies
45 Healy, Bernadine, On Gene Patenting, Heller, M. A. and Eisenberg, Rebecca S., Can Patents Deter
Innovation? The Anticommons New England Journal of Medicine 327 (1992)
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and satires are usually speech protected by the First Amendment. Also, patents typically
expire after twenty years, while trade secrets can extend indefinitely.46
How Do Businesses Protect Their Trade Secrets?

Companies can legally protect their trade secrets by adding certain terms to
employment contracts. Non-Disclosure Agreements (NDA) are the most straight-forward
protections. An NDA requires employees to keep company information confidential.
Companies can also use Non-Compete Covenants to prevent ex-employees from
disclosing trade secrets to competitors.
Companies can also develop policies and procedures for an employee's use of the
trade secret and communications regarding the trade secret. Companies can address
these policies in trainings or orientations as soon as the employee is hired. The
company should clearly convey its intent to maintain the confidentiality of the trade
secret.
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Difficulties Surrounding Trade Secret Lawsuits

Most trade secret lawsuits are between the alleged holder of a trade secret and its
competitor(s) or former employee(s). In lawsuits against competitors, the competitors
will often claim that they created the trade secret first. For this reason, it is very
important for companies to maintain a record of the dates of when they created their
trade secrets.
Why Are Security Measures Important?
The essence of trade secret law lies in the fact that economically valuable information is
kept secret from the public domain. If you want to be eligible for trade secret protection,
you must have some security measures to keep your information secret. If you do not
use adequate security measures, even if someone steals or misappropriates your
information, it will not be considered a trade secret and you will have no remedy for the
loss of the information.
What Kind of Security Measures Will Protect My Trade Secret?

You need to take reasonable security measures to protect your trade secret.
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The reasonableness of your security measures will depend on several factors. Some of
these factors include:
The value of the information - The more valuable the information, the greater
the security measures must be to be reasonable
The trustworthiness of the people you disclose the information to - It is

probably only reasonable to disclose information if you disclose to people who
are likely to keep the information secret
The necessity of disclosure - It is only reasonable to disclose information if that

disclosure is necessary. If you don't value your information enough to limit who
you disclose it to, you probably cannot protect it as a trade secret
Industry standards - If you conform to the industry standards of security, you

are more likely to be seen as acting reasonably
Cost of security measures - The amount of money you spend on security

measures should be proportionate to the value of the information to your
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business. This does not mean you have to spend exorbitant amounts of money
to protect your information
What Are Some Common Security Measures?

There are several types of security measures that can be useful when protecting a trade
secret. They include:
Nondisclosure or confidentiality agreements for employees and independent

contractors
Physical limitations such as fences, locked doors, security guards, or restricted

areas
Notices, such as "no trespassing" or "confidential" that let people know that
information should be kept secret
Computer network security such as coded barriers or password protection
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Limiting the number and identity of employees who access trade secret
information
TRADE SECRETS AS IP COMPONENTS
A trade secret is a form of intellectual property. It is defined as any information, process,

formula, technique, or method that is not readily known by the public and provides an
economic benefit to its holder. This makes it different from other forms of intellectual
property, such as copyrights and trademarks, where the subject matter must be in a
easily visible and tangible form, rather than just an idea or piece of information. In order
for information to keep its status as a trade secret, the holder must make reasonable
efforts to preserve the informations confidentiality.
Unlike other types of intellectual property, one does not register their trade secrets with
government agency. Instead, trade secret protection is typically secured through means
such as contracts, non-disclosure agreements, and non-compete forms. These
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documents and agreements provide guidelines for people who are exposed to the trade
secret that prevent them from sharing that information with anyone who may
disseminate the information to the companys competitors.
How Long Do Trade Secrets Last?

Trade secrets last as long as they are kept secret. Therefore, if no one ever discloses
them and they are not publicly known, trade secrets can last forever. It is recommended
to put safeguards in place not only to protect the trade secret, but also to show the court
that you gave a reasonable effort to protect it in the event that another person attempts
to violate your protection measure and expose your trade secret.
How Do You Terminate a Trade Secret?

Information can lose its protected status as trade secret if it becomes public knowledge.
If the information is readily accessible to people who could commercially exploit it, it can
no longer be claimed as a trade secret.
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Can a Trade Secret Be Terminated by Any Disclosure?

No, disclosure terminates trade secret protection only if the information becomes
generally known or readily ascertainable. Some types of disclosures that will not
terminate trade secret protection are:
Disclosure to employees
Disclosure to suppliers
Disclosure to people who want to license your product
As long as the person you make the disclosure to is under some duty to not disclose
trade secret information to others, and as long as they respect that duty, disclosing
trade secret information will not terminate protection.
When Does Disclosure Terminate a Trade Secret?

Disclosure will terminate a trade secret when it makes the information publicly available.
It does not matter if the disclosure was intentional or accidental. It does not matter if the
trade secret owner took all reasonable precautions to protect the information. What
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matters is whether or not the information is made generally known. This can occur in
several different ways:
The trade secret owner can deliberately terminate the trade secret by
publishing the information or by selling a product that makes the information
obvious
Someone else who learned of the information can disclose it
Is Disclosure the Only Way to Terminate a Trade Secret?

Disclosure is not the only way to terminate a trade secret. A trade secret is terminated
any time the protected information becomes available to the public. For example:
If someone develops the information independent of the trade secret owner
If a person reverse engineers a product to find out how it was made (in other
words, buys a product legally, takes it apart, and figures out how to make the
product as a result of taking it apart)
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What Can I Recover If My Trade Secrets Have Been Misappropriated?
Trade secrets are protected against "misappropriation," which includes a breach of a

confidentiality agreement or discovery of a trade secret held by another by improper
means. There are several remedies available to trade secret owners in the event of
misappropriation. These remedies include monetary relief, equitable relief, and costs
and attorney's fees.
Monetary Relief
Monetary relief, in the form of compensatory damages is available to remedy trade
secret misappropriation:
Compensatory damages - An owner of a trade secret may recover losses

incurred and/or the misappropriator's profits as a result of misappropriation.
Royalties - The court may also opt to award a "reasonable" royalty amount,
according to the Uniform Trade Secrets Act.
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Punitive damages - Punitive damages are available under the Uniform Trade
Secrets Act for willful and malicious misappropriation. In some cases, these
awards have been in the amount of millions of dollars.
Equitable Relief
Injunctions are orders issued by a court ordering someone to do something or
prohibiting some act. Injunctions are available in two forms:
Preliminary injunctions - court orders made in the early stages of a lawsuit or

petitions which prohibit the parties from doing an act which is in dispute
Permanent injunctions - final orders of a court that a person or entity

discontinue doing certain activities permanently or take certain actions
Preliminary injunctive relief is generally granted to the prevailing trade secrets owner.
Permanent injunctive relief generally has a time limit imposed on it, which follows the
"head start theory." The "head start" theory is based on determining how long it would
have taken the misappropriating company to discover the trade secret.
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Frequently, the trade secret injunction will be tied in with an order requiring the return of
materials related to the trade secrets at issue.
Costs and Attorneys' Fees

Costs are typically recoverable and, in areas that have adopted the Uniform Trade
Secrets Act, the court may award attorneys' fees if the misappropriating party has been
found to have acted in bad faith.
UNIT 5
TRADE MARKS
By the end of this unit, students should be able to;

a) Define trade marks
b) Appreciate the law behind trade marks
c) Appreciate rationale behind trade marks
d) Advise on all legal matters surrounding trade marks
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Definition of trade marks
A trademark is a word, phrase, logo or other symbol, used to identify a product, the
source of a product and the manufacturer or merchant. 47 A trademark is usually used to
distinguish one product and its manufacturer from another. Before registering your
trademark, it is important to run a trademark search to determine whether another
business or entity is already using the same name. You do not want to come up with a
business name, run ads, create brochures and specific items and later on be forced to
change the name.
In short, a trademark is any word or symbol that a producer uses to identify the source
of goods or services. Trademark law exists to prevent consumer confusion and protect
business goodwill by not allowing businesses to misrepresent the source of their goods.
A trade mark is a sign which distinguishes the goods or services produced or provided
by one enterprise from those of another. Trade marks are closely associated with
business image, goodwill and reputation. Goods or services are often requested by
47Catherine Colston, (1999). Principles of Intellectual Property Law. London: Cavendish Publishing Limited.
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reference to a trade mark and the public will rely on many marks as indicating quality,
value for money or origin of goods or services.
48
The signs that may serve as trade marks include words, letters, numerals, drawings,
colours, pictures, shapes or devices, labels or combinations of the above. In order to be
protected, a trade mark must fulfill two requirements, namely, first, it must be distinctive
or distinguishable among different products; and second, it must not deceive or mislead
the public, or be contrary to morality or public order. Like a patent, a trade mark grants
an exclusive right to use distinctive signs, such as symbols, colours, letters, shapes or
names to identify the producer of a product, and protect its associated reputation. The
period of protection of a trade mark varies, but is usually seven years in Zambia and ten
years in some countries. Thereafter a trade mark can be renewed indefinitely. The
owner of the trade mark is responsible for enforcing his trade mark and detecting any
infringement as well as instituting legal proceedings against those who infringe the trade
mark. Trademark infringement is illegal use of someone elses mark. There are several
48 Ibid
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ways someone can be liable for trademark infringement, but generally it is because
someone is using the same or similar mark.49
Common Types of Trademarks

There are many types of trademarks, such as:
Service Mark - Rather than promoting a product, the service mark promote a
particular type of service
Trade Dress - A product is sometimes known for its special packaging, or trade
dress
Collective Mark - A collective mark is a symbol, word, or phrase used to identify

a group, organization or association, and the products, services or members of
the group
Certification Mark - A certification mark is a symbol or name used to guarantee

the quality of another's service or product
49 David I Bainbridge, (2007). Intellectual Property Law, (6th Ed). United Kingdom: Pearson Education Limited.
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What Is a Trademark Search?

Before you decide to use a particular trademark or name, you should conduct a
trademark search to determine whether a similar trademark already exists. If you use a
trademark that is similar to, or the same as, another person's registered trademark, you
can be held liable for damages and the registered owner's attorney fees. Generally, a
court will presume that the unregistered trademark owner knew about the registered
trademark, even if you did not.
A trademark name or brand should be adequately searched before a application is filed

with the trade mark office to determine whether the trademark is already being used by
someone else. Failure to do a proper trademark search could result in being forced to
change the name.
A trademark search can be performed by the following methods:
1. Do your own search of trademarks registered by the Zambian Patent and

Trademark Office on their website.
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2. Do an Internet based search to determine if the trademark name is being used by

someone else.
3. Use a fee-based trademark search agency that uses trademark databases for
similar trademarks such as Thomsons SAEGIS.
4. Do a search of your states trademark database in addition to the federally

registered trademarks found at PACRAs website.
5. Work with an attorney to help you search for available and unavailable
trademarks.
Registering a Trademark
A trademark or service mark should be registered with the Zambian Patent and
Trademark Office because after a trademark is registered, the founder of the trademark
will be protected against other people who want to copy or duplicate the trademark and
the official registration also put the rest of the country on notice that the specific
trademark has already been discovered and registered. To register a trademark with the
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Zambian Patent and Trademark Office, the founder of the trademark must intend to use
the trademark on products or services that is used nationally and effects trade and
commerce.50
The trademark cannot be registered with the PACCRA if:
Trademark is identical or similar to an already existing trademark or related

goods/service.
Trademark is on the list of prohibited or reserved list.
Trademark is too descriptive and does not qualify for protection.
Once the Patent and Trademark Office has approved the trademark, it will be registered
for a term of ten years. Six years into the ten-year period, the owner must then file a
form stating that the trademark is still in use. Otherwise, the registration may lapse.
50 David I Bainbridge, (2007). Intellectual Property Law, (6th Ed). United Kingdom: Pearson Education Limited.
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Trademark Infringement or Dilution

Federal law offers protections for a trademark if someone uses it without permission.
The trademark is protected from:
Infringement - Infringement occurs when someone uses the same or similar

trademark for a similar good or service
Dilution - Trademark dilution occurs when someone uses a well-established

trademark for a different service, but either tarnishes the trademark's good name
through the use or weakens the consumer's association between the trademark
and the services
Trademark Counterfeiting
One increasingly common form of trademark infringement is creating counterfeit
goods. Trademark counterfeiting is when a manufacturer produces goods that look
exactly like the goods produced by the trademark owner, including stealing the logo and
putting it on the fake product, and passes them off as the trademark owners goods.
Trademark counterfeiting is a very serious problem, since most consumers will assume
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that the logo on the products indicates their true source. In addition to misleading
consumers, the owner of the trademark is harmed, because the counterfeit goods may
be of lower quality than the real ones, which hurts their reputation and business
goodwill.51
Passing off
Passing off is a common law tort which can be used to enforce unregistered trademark
rights. Passing off is concerned with the protection of business goodwill and reputation.
Therefore, the law of passing off prevents one person from misrepresenting his goods
or services as being the goods or services of the plaintiff, and also prevents one person
from holding out his goods or services as having some association or connection with
the plaintiff when it is not true. A cause of action for passing off is a form of intellectual
property enforcement against the unauthorised use of a mark which is considered to be
similar to another partys registered or unregistered trademarks, especially where an
action for trademark infringement based on a registered mark is unlikely to be
51Paul Marett, (1996). Intellectual Property Law. London: Sweet & Maxwell
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successful due to the differences between the registered trade mark and unregistered
mark.
Passing off and trademark law deal with overlapping factual situations, but deal with
them in different ways. Passing off does not confer monopoly rights to any marks or
names. It does not recognise them as property in their own right. Instead, the law of
passing off is designed to prevent misrepresentation to the public where there is some
sort of association between the plaintiff and the defendant. Where the defendant does
something so that the public is misled into thinking the activity is associated with the
plaintiff, and as a result the plaintiff suffers some damage, under the law of passing off it
may be possible for the plaintiff to initiate action against the defendant. 52
The law of breach of confidence has developed as a way of protecting confidential
information by preventing its use by persons to whom the information has been divulged
in confidence or the further disclosure of such information by such persons. There are
various types of information that are protected which range from personal relationships,
employees, professional relationships, business and commerce, as well as industrial or
52 William Coruish and David Llewelyn, (2007). Intellectual Property Law: Patents, Copyrights, Trademarks and
Allied Rights, (6th Ed). London: Sweet & Maxwell.
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trade secrets. In the context of intellectual property, we are only concerned with trade
and industrial secrets.
Trade secrets are information of a business or technical nature that have commercial
value and have been kept confidential. They can include secret processes, mixture of
ingredients, recipes, know-how or any other confidential information such as list of
customers, which may give a competitive edge or may otherwise be valuable. The main
purpose of the law of confidence is that it prevents a person making wrongful use of
information beyond the purpose for which it was disclosed to him. The law of
confidence, therefore, protects ideas and is a useful ally to other intellectual property
rights such as patents, often being the only form of protection when the subject matter is
still in early stages.
Rationale and Justification for Intellectual Property

There are a number of reasons that have been advanced to justify the existence of
intellectual property rights, and these include the following:
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Punishments for Counterfeiting a Trademark

In the United States, the Customs Office can seize imported counterfeit goods, which
may lead to criminal fines. Also, the trademark owner may sue producers of counterfeit
goods. The owner can recover any lost profits and sometimes recover up to 3 times
their actual damages (meant as a deterrent), resulting in huge awards.
What are the Obstacles to Registering my Trademark?

There are several bars to registration. These include:
Surnames
Geographic Marks
Immoral Marks
Functionality
Surnames
The name needs to be associated with the product more and associated with the
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surname less to be granted registration.
Geographic Marks
The central question is whether the term has primary geographic significance. There
are two types: descriptive and misdescriptive.It does not matter whether a geographic
trademark is descriptive or misdescriptive because (1) the trademark is barred if it is
primarily descriptive and (2) a defense that the trademark was not descriptive would
make it primarily misdescriptive.
Immoral Marks
Any offensive trademark is barred from registration until it gains so much secondary
meaning that the offensiveness is eliminated. There is little likelihood of the trademark
being registered if it is immoral.
53
Functionality
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A device that is solely functional cannot be registered. This would exclude others from
the function as well. Those seeking to gain legal protection of a functional device
should look to a patent lawyer for advice. The Supreme Court has said, ?a product
feature is functional if it is essential to the use or purpose of the article or if it affects the
cost or quality of the article.? The question to ask is whether the device's sole purpose
is useful.
What Are Common Law Trademark Rights?
Common law trademark rights are trademark rights gained through common use
rather without federal registration. Common law trademark rights are not governed by
the federal statute, but rather through state law.
Is There a Way to Obtain Trademark Rights without Registration?

If you use your trademark in connection with goods you sell, you can gain legal
protection of your trademark through the common law instead of registration.
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These rights are only upheld in the geographic area where you sell the goods. Federal
registration of the trademark rights is always recommended since it will result in
additional rights that are not covered by common law.
Can the Same Trademark Be Used in a Different Area?

At common law, your trademark rights only cover the geographic region you are selling
your goods in. So someone else in another region can typically use the same trademark
as long as they do not market in your territory. If you choose to expand into another
region where someone else is using your trademark, that person might be able to stop
you from using the trademark in that region (even if you came up with the trademark
first).
Common law trademark rights are also limited to geographical areas where the
trademark is being used. For example, if the special brand of soap sold under the name
Bubbles is sold only in California only, then the trademark right to the name Bubbles
exists only in California and no other geographical area. So, if another person sold soap
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under the name Bubbles in the state of Nevada without the knowledge that there is an
existing trademark name in California, there would be no trademark infringement.
However, if the person in Nevada wanted to sell the Bubbles brand nationwide through
all the states including the state of California, it would be discovered that California
already has a existing brand named under the Bubbles trademark and that person
would be unable to sell their product in the California market. 54
What If I Just Discovered I Have Been Using Someone Else's Common Law
Trademark?
You can keep using the trademark if you can show that you had no knowledge
whatsoever of the existing trademark. A court is more likely to let you keep using the
trademark if your use is in a different region or for a different type of product.
How Can I Lose My Trademark Rights?
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There are a few ways in which a person or a company can lose ownership rights of a
trademark:
The trademark may be abandoned by the trademark owner.
The trademark may be diluted by use from others.
The trademark rights may be severely infringed upon by another person or

company.
What Is Dilution of a Trademark?

Dilution of a trademark occurs when the trademark name become synonymous with a
certain type of product. Examples of trademarks that have been lost through dilution
include: escalator, aspirin, zippers, and kerosene.
How Do I Prevent Dilution of a Trademark?

The most effective way to prevent loss of trademark rights through dilution is to stay
informed of the use of the trademark by others and prevent any misuse of the trademark
by competitors. This may include having to sue competitors that use your trademark in a
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general description of their product to stop them from using your trademark that
way.Companies that have successfully kept their trademark rights as a result of
aggressively engaging in litigation with others that have misused their trademarks
include Kleenex and Xerox, which are two trademarks that still are used in everyday
language to refer to the products they sell.55
How Can I Lose My Trademark Rights Because of Someone Elses Infringement?

With trademark rights, you have to be willing to stop other people from committing
violations. If someone uses your trademark without your permission and you do not try
to stop them in a timely fashion, then the courts may infer that you do not actually own
the rights to the trademark.
As with many other kinds of lawsuits, if you do not file your claim of trademark
infringement within the time period set forth by the statute of limitations, you lose the
right to sue for that specific instance of trademark infringement.
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What Can I Do To Preserve My Trademark Rights After Someone Else Has

Infringed On Them?
The best thing that you can do to ensure that you keep your trademark rights is to stop
people from engaging in behavior that infringes upon your rights. By taking steps to stop
others that are infringing upon your trademark rights, you demonstrate to the courts that
you are the legal owner of those rights and that you actually have an interest in
preserving those rights.
Remedies for Trademark Infringement

There are several remedies available to the owner of a trademark in the event of
infringement or theft of a trademark, such as a logo or a slogan. Remedies are provided
under a federal statute, the Trademark Counterfeiting Act of 1984 (18 U.S.C. 2320),
and are available only to owners of federally registered marks. However, relief may also
be obtained under the common law of certain states.
These remedies include Monetary Relief, Equitable Relief, Seizures and Costs and
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Attorney's Fees.
Monetary Relief
The Act provides for the recovery of monetary relief:
Actual damages
Lost profits resulting from the infringement
Accounting for infringer's profits
Triple the damages for willful (i.e., deliberate) infringement
Actual damages incurred, including any profits lost as a result of the infringement, are
commonly awarded. These damages may be increased three-fold in cases of willful
infringement. Additionally, in cases of willful infringement, the infringer's profits may be
recovered.
Punitive damages are generally not recoverable in federal trademark infringement

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cases. Punitive damages may sometimes be available under state unfair competition
laws.
Equitable Relief
Injunctions are orders issued by a court requiring someone to do something or
prohibiting some act. Injunctions are available in two forms:
Preliminary injunctions - court orders made in the early stages of a lawsuit or

petitions which prohibit the parties from doing an act which is in dispute (e.g.
using the trademark)
Permanent injunctions - final orders of a court that a person or entity

discontinue doing certain activities permanently or take certain actions
Preliminary injunctive relief is granted if the trademark owner can demonstrate a

probability of winning the case and if he can show a permanent injury sustained in
the absence of injunctive relief. The courts will also take into account the hardships
an injunction imposes on the parties and any public interest involved. It is within the
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court's discretion whether or not to grant permanent injunctive relief, although it is

often awarded to the prevailing trademark owner. 56
Seizures
The court may also issue an order allowing trademark owners seizure of the
counterfeit goods and the infringer's business records.
Costs and lawyer's fees

A trademark owner may recover his costs and, in extraordinary cases of willful
infringement, reasonable attorneys' fees.
ACTIVITY
a)
b)
c)
d)
What is a trade mark?

Discuss the rationale behind trade mark law.
What are the remedies available and possible defenses
Outline the procedure for trade mark registration procedure
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UNIT 6
PASSING OFF
By the end of this unit, students must be able to;

a) Define passing off
b) Outline elements of passing off
c) Analyse damages and remedies under this tort in Intellectual Property
Introduction
Passing off is a common law tort which can be used to enforce unregistered trademark
rights. The law of passing off and trademark law have common origin and therefore are,
in many respects similar. Passing off occurs where the reputation of party A, is
misappropriated by party B, such that party B misrepresents this reputation and
damages the goodwill of party A. The Trademarks Act provides that no person is entitled
to institute any proceedings to prevent or to recover damages for the infringement of an
unregistered trademark, but nothing should be deemed to affect rights of action against
any person for passing off goods as the goods of another person or the remedies in
respect of the same.
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The law of passing off prevents one person from misrepresenting his goods or services
as being the goods and services of the plaintiff, and also prevents one person from
holding out his goods or services as having some association or connection with the
plaintiff when this is not true. In the case of Star Industrial Company Limited v. Yap
Kwee Kor,57Lord Diplock stated that, a passing off action is a remedy for the invasion of
a right of property not in the mark, name or get-up improperly used, but in the business
or goodwill likely to be injured by the misrepresentation made by passing off one
persons goods as the goods of another. Similarly, Lord Herschell stated that passing off
is a remedy for the invasion of a right of property, the property being in the business or
goodwill likely to be injured by the misrepresentation rather than in the mark, name or
get up improperly used.
Passing off and the law of registered trademark deal with overlapping factual situations,
but deal with them in different ways. Passing off does not confer monopoly rights to any
57 [1975] FSR 256, PC.

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names, marks, get-up or other indicia. It does not recognise them as property in its own
right. Instead, the law of passing off is designed to prevent misrepresentation to the
public where there is some sort of association between the plaintiff and the defendant.
Where the defendant does something, so that the public is misled into thinking the
activity is associated with the plaintiff, and as a result, the plaintiff suffers some damage,
under the law of passing off it may be possible for the plaintiff to initiate action against
the defendant.
The types of misrepresentation include, inter alia:

(i) using the mark of the plaintiffs product;
(ii) using the get-up of the plaintiffs product;
(iii) using the plaintiffs advertising theme; or
(iv) using the design or shape of the plaintiffs product.
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For misrepresentation to be actionable, it must be one calculated to cause damage to

the plaintiffs goodwill. The plaintiff need not prove actual or special damage, a real and
tangible probability of damage is sufficient for a claim of damages.
Basic Requirements for a Passing Off Action

The law of passing off will restrain someone from passing off his goods as being the
goods of another person. Thus, in Perry v. Truefitt,Lord Langdale MR stated that a
man is not to sell his own goods under the pretence that they are the goods of another
trade. In Spalding and Brothers v. AW Gamage Limited58, Lord Parker considered
the nature of passing off, stating:
The more general opinion appears to be that the right, (that is, the right to take action to
prevent passing off) is a right of propertyproperty in the business or goodwill likely to
be injured by the misrepresentation.In that case the plaintiffs sold footballs. In 1910 and
1911, they used the mark orb, for a moulded ball calling it in some instances the
58 (1915) 84 LJ Ch. 449.

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Improved Orb. In 1912, after discovering faults in some of these moulded balls, they
produced a sewn ball under the mark, Improved Sewn Orb and sold off old stock to
waste rubber merchants. The defendant store, however, bought up these faulty
moulded balls and advertised them in a manner imitating the announcement of the
sewn balls in the plaintiffs 1912 catalogue. The Court granted an injunction in favour of
the plaintiff. The basic requirements for a passing off action were laid down by the
House of Lords in the case of Erven Warnik Besloten Vennootschap v. J Townend
and Sons (Hull) Limited.59The claimants, representatives of the Dutch manufacturers
of Advocaat, made a liqueur called Advocaat which came to be well known. It was a
high quality liqueur made from brandwijn, egg yolks and sugar, which acquired a
substantial reputation and sold it in large quantities. The defendant decided to enter this
market and made a drink called Kneelings Old English Advocaat which was made from
Cyprus sherry and dried egg powder, an inferior but less expensive drink compared to
the claimants. This captured a large part of the claimants market in the United
59 [1979] AC 731.
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Kingdom, but it could not be shown that consumers would mistake it for the claimants
drink.
Nevertheless, it was held that the reputation associated with the claimants product
should be protected from deceptive use of its name by competitors even though several
traders shared the goodwill. There was a misrepresentation made by the defendant
calculated to injure the claimants business or goodwill and the injunction was granted in
favour of the claimants.
Lord Diplock laid down the essential elements of passing off, as being:
(a) a misrepresentation;
(b) made in the course of trade;
(c) to prospective customers of his or ultimate consumers of goods
or services supplied to him;
(d) which is calculated to injure the business or goodwill of another trader (in the sense
that this is a reasonably foreseeable consequence); and
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(e) which causes actual damage to a trader by whom the action is brought or (in a quia
timet action) will probably do so. In Reckitt and Colman Limited v. Borden
Incorporation60, Lord Oliver reduced the above essential elements to three, namely the
existence of the claimants goodwill, a misrepresentation as the goods or services
offered by the defendant, and damage (or likely damage) to the claimants goodwill as a
result of the defendants misrepresentation.
Misrepresentation
Misrepresentation is the second crucial element in the action for passing off. However,
the misrepresentation must be calculated to make or lead the public believe that the
goods or services being offered by the defendant are the goods or services of the
claimant. In Reddaway v. Banham,61
60 [1990] 1 RPC 341 (the Jif Lemon case).

61 [1896] AC 199, HL.
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the appellant manufactured belting which, for the purpose of distinguishing it from
similar products he called Camel-hair Belting. The yam used was chiefly of camel hair
though few people realised this.
The respondent, a former employee of the appellant, began making similar belting,
which he first called Arabian and then, in response to particular orders, Camel-hair.
Other manufacturers used almost identical yam to make belts and sold them as Yale,
Buffalo,
Remedies
As passing off is an invasion of property rights, the remedies the plaintiff is entitled to
are injunctions and/or damages or as an alternative, an account of profits. Furthermore,
an order may be granted for the delivery up or destruction of articles to which the name
or mark has been applied or, if possible, an order for the obliteration of such names or
marks. Damages will usually be based upon the actual loss attributable to the passing
off, that is, resulting from the loss of sales experienced by the claimant. In some cases ,
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however, damages may be calculated on a royalty basis, that is, based on the amount
that the defendant would have paid, had he sought the licence to use the name or mark
from the plaintiff.
Besides, the nominal damages will be available against a trader who commits passing
off innocently. This was laid down by Lord Parker of Waddington in Spalding v.
Gamage Ltd62, where he stated: Nor need the representation be fraudulently made. It is
enough that it has been made, whether fraudulently or otherwise, and that damage may
probably ensue, though the complete innocence of the party making it, may be a reason
for limiting the account of profits to the period subsequent to the date at which he
becomes aware of the true facts. The representation is in fact treated as the invasion of
a right giving rise at any rate to nominal damages, the inquiry being granted at the
plaintiffs risk, if he might probably have suffered more than nominal damages.
Malicious Falsehood
62 (1915) 84 LJ Ch. 449.

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Malicious falsehood is a tort that is related to passing off. Malicious falsehood could
arise where someone publishes information that is capable of serious damage or
calculated to disparage a traders position or reputation. An example would be where
one trader unjustifiably states that the goods of another trader are of poor quality. In
White v. Mellin63,Lord Watson stated:
In order to constitute disparagement which is, in the sense of law, injurious, it must be
shewn that that the defendants representations were made of and concerning the
plaintiffs goods; that they were in disparagement of his goods and untrue.
Activity;
a)
b)
c)
d)
What is passing off?

What are the remedies of passing off?
What are the elements of this tort ?
Outline the possible defenses available for defendant.
63 [1895] AC 154 at p. 166.

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UNIT 7
WORLD INTELLECTUAL PROPERTY
ORGANISATION
By the end of this unit, students must be able to;

e) Trace the historical background of WIPO
f) Appreciate the effectiveness of all the WIPO conventions
A Brief History
One of the oldest specialized agencies of the United Nations, the World Intellectual
Property Organization (WIPO) has a long and interesting past. Browse some of the key
milestones in the Organization's history.
1883 Paris Convention
The Paris Convention for the Protection of Industrial Property is born. This international
agreement is the first major step taken to help creators ensure that their intellectual
works are protected in other countries. The need for international protection of
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intellectual property (IP) became evident when foreign exhibitors refused to attend the
International Exhibition of Inventions in Vienna, Austria in 1873 because they were
afraid their ideas would be stolen and exploited commercially in other countries. The
Paris Convention covers:
Inventions (patents) | Trademarks | Industrial designs
1886 Berne Convention
Following a campaign by French writer Victor Hugo and his Association Littraire et
Artistique Internationale the Berne Convention for the Protection of Literary and Artistic
Works is agreed. The aim is to give creators the right to control and receive payment for
their creative works on an international level. Works protected include:
novels, short stories, poems, plays;
songs, operas, musicals, sonatas; and
drawings, paintings, sculptures, architectural works.
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1891 Madrid Agreement
With the adoption of the Madrid Agreement, the first international IP filing service is
launched: the Madrid System for the international registration of marks. In the decades
that follow, a full spectrum of international IP services will emerge under the auspices of
what will later become WIPO.
1893 BIRPI established
The two secretariats set up to administer the Paris and Berne Conventions combine to
form WIPO's immediate predecessor, the United International Bureaux for the
Protection of Intellectual Property best known by its French acronym, BIRPI. The
organization, with a staff of seven, is based in Berne, Switzerland.
1970 BIRPI becomes WIPO
The Convention establishing the World Intellectual Property Organization (WIPO)

comes into force and BIRPI is thus transformed to become WIPO. The newly
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established WIPO is a member state-led, intergovernmental organization, with its

headquarters in Geneva, Switzerland.
1974 WIPO joins the UN
WIPO joins the United Nations (UN) family of organizations, becoming a specialized
agency of the UN. All member states of the UN are entitled, though not obliged, to
become members of the specialized agencies.
1978 PCT System launched
The PCT international patent system begins operation. The PCT expands rapidly to
become WIPO's largest international IP filing system today.
1994 AMC established
The WIPO Arbitration and Mediation Center is established. The Center offers alternative
dispute resolution services to help solve international commercial disputes between
private parties.
1998 WIPO Academy opens its doors

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The WIPO Academy is established to provide general and specialized courses on IP.
Academy courses are interdiscplinary in their approach and targeted at a wide range of
IP professionals.
2007 WIPO Development Agenda adopted
WIPO formally adopts its Development Agenda, with the aim of ensuring that
development issues are taken into consideration throughout the Organization's work.
ACTIVITY
a) Discus the historical development of WIPO
b) Outline the challenges faced in adopting the WIPO agenda.
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UNIT8
DESIGNS
By the end of this unit, students should be able to

a) appreciate the law on designs
b) trace the historical background on designs
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c) appreciate design infringement and defenses

d) appreciate the rationale on design protection
The Registered Designs Act64 defines the design as features of shape, configuration,
pattern or ornamental applied to an article by any industrial process or means, being
features which in the finished article appeal to and are judged solely by the eye, but
does not include a method or principle of construction or features of shape or
configuration which are dictated solely by the function which the article to be made in
that shape or configuration has to perform. Thus, the right given to the owner of the
design upon registration is to protect the original ornamental or aesthetic and nonfunctional features of an industrial article or product that result from design activity.
Industrial design is relevant to a wide variety of mass produced as well as individually

crafted products including, furniture, electrical appliances, cars, handicrafts, fashion,
toys, technical and medical instruments, watches, jewelry and other luxury items, textile
64 Registered Designs Act, Chapter 402

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designs, sports equipment, household products and architectural structures.Industrial

design is also applied to product packaging and containers.
As a general rule, an industrial design consists of the three-dimensional features, such
as the shape of a product, the two-dimensional features, such as ornamentation,
patterns and lines or colour, or a combination of two or more of such features.
History of designs
Like copyright and patents, design laws trace their origin from the design laws of the
United Kingdom. The first legislation to deal with industrial design protection was the
Designing and Printing of Linen Act of 1787 which gave a very limited copyright
protection to those who engaged in the arts of designing and printing linens, cottons,
calicos and muslin and also gave proprietors the sole right of printing and reprinting
them for two months from the date of publication, provided the name of the proprietor
was marked on each piece. This period of protection was extended to three months in
1794
From 1839, a number of laws were passed which gradually extended the
boundaries of design protection. The Copyright of Design Act, 1839, increased the
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protection given to fabrics by extending the law to fabrics composed of wool, silk or hair
and to mixed fabrics made up of any two of the following materials namely, linen, cotton,
silk or hair. In addition, the Act extended protection far beyond the textile trade and laid
the foundations of modern design law. It gave protection to every new or original design
including textiles. It also allowed protection for the ornamentation and for the shape and
configuration of any article of manufacture.
The Copyright of Design Act, 1839, introduced a system of registration. A Registrar was
appointed by the Board of Trade and unless a design was registered before it had been
published, the benefits of the
Act could not be obtained. This is still a central principle and differentiates a registered
design from copyright in which rights automatically reside with the owner. In 1842 the
Design Act was passed which consolidated all earlier Acts and further increased the
remedies for infringement, and divided the possible articles of manufacture and
substances into classes. In 1843 the Design Act was amended to extend protection of
the Act to designs composed of functional features. In 1875, however, the powers and
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duties of the Board of Trade under the various Designs Acts were transferred to the UK
patent office by the Copyright of Designs Act, 1875, through the Designs Registry which
still carries out the registration of designs. In 1883 a single consolidating and amending
Act was passed embracing Designs, Patents and Trademarks. 65
Zambia had its own legislation to deal with designs on 1 December 1958, when the
Registered Designs Act, Chapter 402 of the Laws of Zambia was enacted. The
Registered Designs Act, whose purpose is to make provision relating to the registration
of designs, establishes the Designs office and appointment of relevant officers; provides
the procedure for the registration of designs both local and foreign; provides rights to
the proprietor of the design as well as limitations on the rights granted; deals with issues
relating to the assignment, cancellation, infringement, offences and penalties as well as
use of the registered designs for the services of the State. It must be noted that ever
since the Registered Designs Act was passed in 1958, it has never undergone any
major amendments.
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Rationale of Designs
Protections of designs are justified for various reasons. Firstly, the design of an article is
often the factor that makes it attractive and appealing to customers and visual appeal is
the key determinant in the decision of the consumer to choose one product in
preference to another. This is particularly evident where there is a wide range of
products such as cars, computers performing the same function. 66
Secondly, developing or creating designs which must be attractive and appeal to the
consumer calls for investment in terms of money, skill and time. Design protection
therefore enables the owner of the design to get a fair return on his investment made in
creating and marketing the design. Furthermore, design protection allows the owner of
the design to prevent his competitors from copying and imitating the design, and
thereby strengthen his competitive position. Thirdly, industrial designs are business
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assets that can increase the commercial value of an enterprise and its products. The
more successful a design, the higher the value of the enterprise. Fourthly, a design may
provide an additional source of revenue for the enterprise, through licencing out to
others, for a fee. Notwithstanding what is stated above, the owner of the design may
use his monopoly right to prevent his competitors to develop or create similar designs or
threaten them with infringement actions. He may also charge high prices for his
products.
SUBJECT MATTER AND CONDITIONS OF PROTECTION
Section 2 of the Registered Designs Act defines design as meaning, features of shape,
configuration, pattern or ornament applied to an article by any industrial process or
means, being features which in the finished article appeal to and are judged solely by
the eye.A registered design is a monopoly right to protect the outward appearance of
an article or a set of articles which have been manufactured and to which a design has
been applied. However, the design protection does not apply to articles or products to
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grant the proprietor of the design exclusive rights over the commercial exploitation of
those articles or products. Rather, design protection only applies to such articles or
products as embody or reproduce the protected design. Protection, therefore, does not
prevent other manufacturers from producing or dealing in similar articles fulfilling the
same utilitarian function, provided that such substitute articles do not embody or
reproduce the protected design. It is not every type of a design that qualifies for
registered design protection. Only those designs which have some form of aesthetic
appeal will qualify for registration. Aesthetic appeal is defined in relation to designs as
being those creations which appeal to and judged by the eye. Registered Designs Act
excludes from protection designs which are solely functional or whose appearance is
solely dictated solely by the function they have to perform.
Requirements for registration

In order to qualify for registration the design must meet the following conditions.
(i) It must have features of shape, configuration, pattern or ornament;
(ii) It must be new/original;
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(iii) It must be applied to industrial process;

(iv) It must appeal to an eye.
Features
A design to qualify for registration and protection must have features of shape,
configuration, pattern or ornament. These features relate to three dimensions such as
shape, and two dimensions such as ornamentation, pattern and lines.
Novelty
A design may only be registered if it is new or original.935 For a design to be
considered new, it must satisfy two conditions. Firstly, it should not be the same as any
design registered in a prior application. Secondly, prior to the filing of the application for
registration, the design should not have been published in Zambia. However, the
novelty of the design shall not be destroyed either by publication or by disclosure of the
design to the public. Thus, an application for the registration of a design should not be
refused, and the registration of a design should not be invalidated, by reasons only of:
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(i) the disclosure of the design by the proprietor to any other person in such
circumstances as would make it contrary to good faith for that other person to use or
publish the design;
(ii) the disclosure of the design in breach of good faith by any person other than the
proprietor of the design
(iii) in the case of a new or original textile design intended for registration, the
acceptance of a first and confidential order for goods bearing the design;939 or
(iv) the communication of the design by the proprietor of the design to a government
department or to any person authorised by the Minister to consider the merits of the
design, or of anything done in consequence of such a communication.
Besides, an application for the registration for a design made under the Paris
Convention for Protection of Industrial Property does not destroy the novelty of the
design.The novelty requirements in a design is very similar to those in patent law. Thus,
in Rosedale Manufacturers Limited v. Airfix Productions Limited67, the anticipation
rules in patent law were held to apply to registered designs.
67 [1957] RPC 239.

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Application by Industrial Process

A design to qualify for registration must be applied to an article. The Registered Designs
Act defines an article as any article of manufacture and includes any part of an article if
that part is made and sold separately. In Sifam Electrical Industrial Company v.
Sangamo Weston Limited68 the design which appeared on the front of an electric
meter was held not to be part of an article because it was not intended to be sold
separately by the proprietor of the design.
Graham, J. said:
on the whole I think the intention must be to grant registration only for such articles
as are intended by the proprietor of the design to be put on the market and sold
separately, such as for example a hammer handle, or a bit of a bradawl.
In addition to the requirement that a design must be applied to an article, the design
must be done by means of industrial process.
68 [1973] RPC 899.

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Eye Appeal
A design has to appeal to the eye if it is to be registered. Therefore, a design which
lacks aesthetic appeal will not qualify for registration. The aesthetic appeal in relation to
designs is a creation which appeals to and is judged solely by the eye. In Amp
Incorporation v. Utilux Pty Limited69, the House of Lords considered the phrase
appeal to and judged by the eye, where it held that an electrical terminal clip for use
inside a washing machine was a solely functional design which did not appeal to nor
was it judged by the eye. The House of Lords set out a number of general propositions
including the following:
(a) the eye to be considered is the eye of the customer and not the eye of the judge,
(b) the article may still appeal to the eye even though it is not of aesthetic quality or a
work of art,
(c) the intention of the designer is of value, but it is not conclusive and a solely
functional article does not possess features judged solely by the eye since the only
issue of interest to purchase is whether the article will meet its intended function.
69 [1972] RPC 103.

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Exceptions to Registration
Not every design qualifies for registration even when it satisfies the requirements for
registration. The Registered Designs Act excludes from registrability the following
designs:
(a) Methods or principles of construction

If a substance of the design is dictated by the process which gives the article its
appearance the design will be excluded from registration. In Cow (BP) and Company
Limited v. Cannon Pty Limited70, the plaintiff had designed a rubber hot water bottle
with a series of diagonally arranged ribs on both sides of the bottle and this design was
subsequently registered.
70 [1989] 1 AC 217.
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An alleged infringer raised as a defence that the registration was invalid because the
design of the hot water bottle involved a method or principle of construction and that its
features of shape of configuration were dictated solely by function. It was claimed that
the ribs were a feature necessary to facilitate the heat transfer. These claims were
rejected because the development of other designs for hot water bottle was not
prevented as rival manufacturers could still have created their own designs for ribs, for
example, horizontal ribs would be equally effective but would constitute a different
deign.
(b) Features dictated solely by function
Features of shape or configuration which are solely dictated by the function which the
article to be made in that shape or configuration has to perform are excluded from
protection by the design. It should be noted that many articles to which designs are
applied are not themselves novel, and are produced by a large number of different
manufacturers. Articles such as shoes, belts or screws may be produced by various
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manufacturers, and all articles within each class are intended to perform the same
function. If a design for one such article, for instance, screws, is dictated purely by the
function which the screw is intended to perform, protection for that design would have
the effect of excluding all other manufacturers from producing items intended to perform
the same function.
In Lamson Industries Limiteds application71,a computer paper which contained

alternating horizontal bans of white and light green was designed to facilitate the
checking of figures on a computer print out and therefore the design of the paper was
held not to be registrable as the features which the applicants sought to register were
governed by the ultimate function of the article.
(c) Features of Shape which are dependent upon the appearance of another article of
which the article is intended by the author of the design to form an integral part
71 [1978] RPC 1.
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In Ford Motor Company Limiteds design applications, the appellant, Ford Motor
Company, sought to register the designs of various motor vehicle components, including
main body panels, doors, bonnet tops and wind-screens, under the Registered Designs
Act, 1949. These articles formed part of and contributed to the overall shape and
appearance of the vehicle, though they were sold as replacement parts. As such they
were distinguishable from components subsidiary to the vehicles eventual shape such
as wing mirrors, wheels, seats and steering wheel. The House of Lords considered
whether the components in question were articles within the meaning of sections 1 and
44 of the Act. It held that articles which had no independent life as an article of
commerce were excluded from the scope of registered design protection. The House of
Lords upheld the Registered Designs Appeal Tribunals decision and rejected all the
components in respect of which the registration was sought.
(d) Designs Contrary to Law or Morality
Designs which are contrary to law or morality are excluded from registration. In
Mastermans Design,72 the applicant sought registration in respect of a design for a
72 [1991] RPC 89.

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Scotsman doll with a kilt and anatomically correct male genitalia which were exposed
when the kilt was lifted.
Certain Specified Designs under Rule 10 of the Registered Design Rules, designs
excluded from registration are:
(ii)
Works of sculpture other than casts or models used or intended to

be used as models or patterns to be multiplied by any industrial
(iii)
(iv)
process;
(ii) Wall plaques and medals and
Printed matter primarily of a literary or artistic character, including
book jackets, calendars, certificates, coupons, dressmaking,
patterns, greetings cards, leaflets, maps, plans, postcards, stamps,
trade advertisements, trade forms, and cards, transfers and the
like.
Application for Registration
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The following persons may make an application for registration of a design in respect of
any article or set of articles, namely:
(i) the person claiming to be the proprietor of the design;
(ii) assignee; or
(iii) legal representative.
The application for the design must be made in the prescribed form and signed by the
applicant or his agent. Furthermore, every application for the design must state the
article to which the design is to be applied and the proprietor of the design. Where it is
desired to register the same design in respect of more than one article, a separate
application must be made in respect of each article. Each application must be
numbered separately and treated as separate and distinct.
The Registrar may, for the purpose of deciding whether a design is new or original,
make such searches, if any, as he thinks fit. Except in the case of an application to
register a design to be applied to a textile, to wall paper or to lace, the application for a
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design registration must be accompanied by a statement of the features of the design

for which novelty is claimed.
The Registrar may refuse any application for the registration of a design or may register
the design in pursuance of the application subject to such modifications, if any, as he
thinks fit. If on receipt of an application for registration of a design, there appears to the
Registrar to be any objection to the application, a statement of those objections must be
sent to the applicant in writing and, unless within two months he applies for a hearing or
makes observations in writing on the objections, he is deemed to have withdrawn his
application. If the applicant wishes to appeal from the Registrars decision, he must,
within one month, apply to the Registrar on the prescribed form requesting him to state
in writing the grounds of his decision and the materials used by him in arriving at the
decision. The Registrar must send such statement to the applicant, and the date it is
sent is deemed to be the date of the Registrars decision for the purposes of an appeal.
Disputes as to State use of Design

Any dispute relating to:
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(i) the exercise by a government department or a person authorised by the Minister;

(ii) the terms for the use of a design for the services of the State; or
(iii) the right of any person to receive any part of a payment, may be referred to the High
Court by any party to the dispute for determination.73 In any proceedings concerning the
said dispute, to which a government department is a party, the government department
may, if the registered proprietor is a party to the proceedings, apply for cancellation of
the registration of the design upon any ground on which the deletion of a design may be
ordered by the High Court, and in any case, put in issue the validity of the registration of
the design without applying for its cancellation. If in the said proceedings any question
arises whether a design has been recorded or applied by or on behalf of a government
department, and the disclosure of any document recording the design, or of any
evidence of the application of registration of the design is, in the opinion of the
government department prejudicial to the public interest, the disclosure may be made
confidentially to Counsel appearing for the other party or to an independent expert
agreed upon by the parties.
73 S. 21 (1)(a)(b)(c), Registered Designs Act.

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In determining any dispute between a government department and any person as to

terms for the use of a design for the services of the State, the High Court must have
regard to any benefit or compensation which that person or any person from whom he
derives title may have received, or may be entitled to receive, directly or indirectly from
any government in respect of the design in question. 74
DEFENCES FOR INFRINGEMENT
The Registered Designs Act grants to the proprietor of the design the exclusive right in
Zambia to:
(i) make or import the design for sale or hire, or for use for the purposes of any trade or
business; or
(ii) sell, hire or offer for sale or hire, any article in respect of which the registered design
or a design not substantially different from the registered design has been applied.
74 S. 21 (4), Registered Designs Act.

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Therefore, if anyone who, without the consent of the registered proprietor, does
anything which falls within the said exclusive rights of the registered proprietor will
infringe the right in a design. Any action or legal proceedings relating to the infringement
of copyright in a registered design should be commenced in the High Court.
Defences
In an action for infringement of a registered design, the defences available to the
infringer include, inter alia:
(i) the alleged infringement falls within any limitation on the rights of the proprietor of the
registered design, such as compulsory licenceor the use of the design for services of
the State;
(ii) attack the validity of the registration of design on grounds such as the design was
not new or original at the date of registration.
(iii) the alleged infringement occurred before the design had been registered;
(v)
the alleged infringement was carried out after the registered design
had been revoked, for example for non-renewal.
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Where any person, whether entitled to or interested in a registered design or an

application for registration of a design or not, by circulars advertisements or otherwise
threatens any other person with proceedings for infringement of the copyright in a
registered design, any person who is aggrieved with the threats may bring an action
against him so as to seek some relief from the Court If in such action the defendant
does not prove that the acts in respect of which proceedings were threatened constitute
or, if done, would constitute an infringement of the copyright in a registered design, the
plaintiff must be entitled to the following relief, namely:
(i) a declaration to the effect that the threats are unjustifiable;
(ii) an injunction or interdict against the continuance of the
threats; and
(iii) such damages, if any, as he has sustained thereby.
It should be emphasised that a mere notification that a design is registered does not
constitute a threat of proceedings. The defendant in any such action may apply, by way
of counter-claim in the action, for any relief to which he would be entitled in a separate
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action in respect of any infringement by the plaintiff of the design to which the threat
relates.
Remedies
There are two remedies available, under the Registered Designs Act, where the
registered design has been infringed. These remedies are civil sanctions and criminal
sanctions.
Civil Sanctions
The civil sanctions to the proprietor of registered design whose deign has been infringed
are:
(i) injunctions or interdict;
(ii) damages;
(iii) an account of profits; and
(iv) seizure and destruction of infringing products.
It is imperative to state as regards damages that the Registered Designs Act exempts
an innocent infringer from liability for damages .Therefore, in proceedings for
infringement of copyright in a registered design, damages must not be awarded against
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a defendant who proves that at the date of the infringement he was not aware, and had
no reasonable ground for supposing, that the design was registered. 75 A person must
not be deemed to have been aware or to have had reasonable ground for supposing
that the design was registered by reason only of the marking of an article with the word
registeredor any abbreviation, or any word or words, expressing or implying that the
design applied to the article has been registered, unless the number of the design
accompanied the word or words or the abbreviation in question.
In John Khalil Khawan and Company v. K. Chellaram and Sons (Nigeria) Ltd 76, the
court considered the issue of the exemption of an innocent infringer of the right in the
registered designs from being liable for damages.
Criminal Sanctions
The criminal sanctions under the Registered Designs Act provides for imprisonment or
fine or to both.
75 S. 16 (1), Registered Designs Act

76 [1964] 1 WLR 711 PC.
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ACTIVITY
Explain the rationale behind designs.

What are the limitations of the Registered designs Act of Zambia
What are the defenses and possible remedies for infringement of designs.
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BIBLIOGRAPHY
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Catherine Colston, (1999). Principles of Intellectual Property Law. London: Cavendish

Publishing Limited.
David I Bainbridge, (2007). Intellectual Property Law, (6 th Ed).
United Kingdom:
Pearson Education Limited.
Helen Norman, (2005). Intellectual Property Law. London: University of London Press
Paul Marett, (1996). Intellectual Property Law. London: Sweet & Maxwell
William Coruish and David Llewelyn, (2007). Intellectual Property Law: Patents,
Copyrights, Trademarks and Allied Rights, (6th Ed). London: Sweet & Maxwell.
Kanja .G.M. (2006) Intellectual Property, University of Zambia Press, Lusaka
Statutes
The Patents Act, Chapter 400 of the Laws of Zambia.
The Copyright and Performance Rights Act Chapter 406 of the Laws of Zambia
Trade Marks Act Chapter 401 of the laws of Zambia
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The Registered Designs Act,Chapter 402 of the laws of Zambia
TRIPs Agreements
WIPO conventions
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INTELLECTUAL PROPERTY LAW MODULE

CAVENDISH UNIVERSITY ZAMBIA

Prepared by Mr. Ndlovu.

Aims of the module

Objectives of the module

Demonstrate sound knowledge and understanding of those aspects of

intellectual property law identified in the indicative syllabus above

which shape intellectual property law

reform in the relevant areas

limited staff guidance

Catherine Colston, (1999). Principles of Intellectual Property Law. London: Cavendish

David I Bainbridge, (2007). Intellectual Property Law, (6 th Ed).

Pearson Education Limited.

Kanja .G.M. (2006) Intellectual Property, University of Zambia Press, Lusaka

The Patents Act, Chapter 400 of the Laws of Zambia.

Trade Marks Act Chapter 401 of the laws of Zambia

The Registered Designs Act,Chapter 402 of the laws of Zambia

Introduction to Intellectual Property Lawpage 5

Definition of Intellectual Propertypage 5

Types of Intellectual Property.page 7

Basic forms of Intellectual Propertypage 9

Rationale behind copyrightpage 13

Types of copyrighted works..page 16

Subject matter patents.page 36

Procedure for patent applicationpage

Types of Trade Marks

Bars to trade mark registration

By the end of this unit, students should be able to;

Define Intellectual property

Understand categories of Intellectual Property Law

Appreciate intellectual property law

Be able to guide legally on matters of intellectual property law

What Is Intellectual Property?

(i) literary, artistic and scientific works,

Intellectual Property as Property

The second type of property is immovable property, or as it is sometimes known, real

Types of Intellectual Property

neighbouring to copyright. The industrial property branch of intellectual property covers

advances in technology such as information technology and biotechnology and changes

The 4 Basic Forms of Intellectual Property

1. Copyright: A copyright is an exclusive right held for a limited time by original

2. Trademark: Trademark law protects consumers by empowering producers to

3. Patent:Patent law protects inventors by granting them an exclusive right to

Who Should Be Concerned about IP Issues?

Employees in high-tech industries: many lawsuits have started when an

Employers: As mentioned above, there can be some confusion as to who owns

a) What is intellectual property?

By the end of this lecture, students should

Reproduce the copyrighted work

Distribute copies of the copyrighted work to the public for sale

Perform the copyrighted work

8Section 7,CAP 406 of the Laws of Zambia.

Rationale of Copyright Protection

(a) Creative Incentive

(b) Reward for Labour

(c) Encouragement of Learning

(d) Promotion of the Economy

(e) Cultural Importance & Protection

(f) Protection of Human Rights

The authors work is an emanation of his personality and consequently should be

(g) Prevention of Piracy and Counterfeit

Piracy and counterfeit are a disincentive to creation of copyright work. Where

Types of Copyrighted Works