Member Article

In South Africa, the song Akanamali, sung by the artist Sun-El Musician and featuring Samthing Soweto, was one of the most popular songs of 2017. Towards the end of the year, South African financial services giant First National Bank (“FNB”) ran a campaign to promote its products and services. It called this campaign Akanamali and featured the hook of the song, which was about a lack of money. It was a good fit for FNB, as it was able to associate its financial services with a South African musical phenomenon.

So, what do other South African artists need to know if they want to generate revenue from their IP (other than royalties) like Sun-El Musician and Samthing Soweto? 

Copyright law protects a wide range of works, including songs (referred to in the legislation as “musical works”) and sound recordings. No registration is required or indeed possible for these forms of works and the right comes into existence as soon as certain requirements are met. In the case of a song, this simply means reducing it to a material form, such as sheet music or a recording. The owner of the copyright in a song has the exclusive right to do certain things, including the right to reproduce the song. It’s this element of exclusivity that makes copyright a revenue-generator. 

With songs, there is a further IP right involved, and that is a trade mark right. The name of a song is a trade mark in the same way that the name of any product is a trade mark. As such, the name of a song can be registered as a trade mark, provided that it is distinctive. In the first instance, it can be registered as a trade mark for musical recordings themselves. It can, however, also be registered as a trade mark for obvious spin-off products such as T-shirts and caps. It can even be registered as a trade mark for totally unrelated goods or services, provided that there is an intention to use the name in relation to such goods or services, even if such use is by way of a licence to third parties. So, the name of a song could be registered as a trade mark for marketing-related services or even financial services. As with copyright, the owner of a trade mark registration has the exclusive right to use the trade mark and, once again, this exclusivity is a revenue-generator. 

So, a musician can have revenue streams other than music royalties. There might be licence fees (arising from copyright protection) from a company that uses the song in a marketing campaign or licence fees (arising from trade mark protection) from a company that uses the name of the song in relation to their goods or services.

South Africans, be they musical artists or entrepreneurs, must be IP-savvy and should embrace IP as a means of generating revenue. But IP is a multifaceted field and advice will inevitably be required. Common questions include: 

• What IP rights are relevant? I’ve mentioned two forms of IP, copyright and trade marks, but there are others, including image rights, patents (inventions) and registered designs (product designs). 
• What steps must be taken to protect the IP rights? Although copyright is an automatic (unregistered) right, trade marks should definitely be registered, and patents and registered designs must be registered. 
• Where should the IP rights be registered? IP rights are essentially territorial in nature, which means that it’s necessary to register an IP right in each country where protection is required.
• Should one sell their IP rights or license them? In the case of a licence, there are a number of factors to consider: exactly what rights will be given to the licensee, will the rights be exclusive, for how long will those rights last and what get-outs will there be if, for example, the licensee doesn’t exploit the right in a satisfactory way or uses the right in a manner that causes reputational harm? It’s complex!

Given South Africa’s sluggish economy, IP is undoubtedly something that the authorities should be pushing. They might take a leaf out of the book of the UK authorities. On 18 January 2018, the BBC reported that the UK Intellectual Property Office had produced a campaign to teach young children about IP, using cartoons featuring puns on famous names: Kitty Perry, Justin Beaver and Ed Shearling. This campaign is aimed at getting children to understand and respect IP. The UK authorities say that it’s right to target children because they will, in due course, “take up careers in industries that depend on inventiveness and creativity.” Quite right, too!