REMEDIES UNDER THE COPYRIGHT AND NEIGHBOURING RIGHTS ACT
Remedies under the Copyright Act are provided for under Sections 29–33 which cover provisional measures, civil remedies, criminal sanctions, powers of custom officials and measures, remedies, and sanctions against abuses in respect of technical means of protection and rights management information. These provisions, and the criteria thereof, are as outlined immediately below.
Section 29(1) - Subject to subsection (2) where a complaint of the contravention of the provisions of this Act is made and it is considered that a document, book or other object connected to any investigation in regard to the complaint is being concealed within specified premises, a Police Officer or such other person as the Minister may, by Order, appoint and grant investigating powers, shall enter the premises to conduct a search and seize any item found within the premises.
Section 29(2) - The Police Officer or the person appointed by the Minister under subsection (1) (hereinafter both referred to as "the investigating officer") shall not enter, conduct a search or seize any item in terms of subsection (1) unless he has obtained –
(a) the consent in writing of the owner of the premises or the person in charge of the premises; or
(b) a search warrant.
Section 29(3) - The court shall grant the application for a search warrant if it appears, on information given on oath or affirmation, that there are reasonable grounds to suspect that –
(a) there are works that infringe the rights protected under the Act in the premises;
(b) there is in the premises equipment or other device specifically designed or adapted to circumvent any device or means intended to prevent or restrict reproduction of a work or to impair the quality of copies made (the latter device or means hereinafter referred to as "copy-protection or copy-management device or means"); or
(c) a document, book or other object which may afford evidence of such contravention of the provisions of this Act is within those premises.
Section 29(4) - Where a Chief or Senior Magistrate is satisfied, from information given on oath or affirmation by the investigating officer, that urgent action is required to obtain evidence pertaining to the contravention of the provisions of this Act, which evidence is likely to be concealed or destroyed, the Magistrate may dispense with any procedural requirements and grant a search warrant to the investigating officer at such time and place and under such conditions as the urgency of the matter may require.
Section 29(5) - A search warrant granted by the court shall –
(a) authorize the investigating officer mentioned in the warrant to enter the premises identified in the warrant to conduct searches, examinations, take extracts or copies, seize any item or to do any other thing that may assist with the investigation;
(b) be executed by day, unless the court authorizes its execution by night; and
(c) be in force until it is executed, cancelled by the court or a period of one month from the date of its issue expires, whichever occurs first.
Section 29(6) - The investigating officer executing a search warrant under this section shall, before such execution or upon demand by any person whose rights may be affected –
(a) present his identification card; and
(b) hand to such person a copy of the warrant.
Section 29(7) - An investigating officer shall not seize any item found within the premises being searched in accordance with the provisions of this section unless he has handed the person, from whose possession or charge the item is being seized, a receipt of the seizure in the prescribed form.
Section 29(8) - A person from whose possession or charge a document, book or other object has been seized shall, as long as it is in the possession or charge of the investigating officer concerned, be allowed on request to make copies or to take extracts from it at any reasonable time at his own expense and under the supervision of that investigating officer or other authorized person in the service of the Office.
Section 29(9) - A person shall not be entitled to refuse to answer any question or to produce any document, book or other object on the ground that such answer, document, book or other object would incriminate him.
Section 29(10) - Subject to subsection (11), incriminating evidence, arising out of any answer, document, book or other object a person may present to an investigating officer in answer to an enquiry made by the investigating officer, shall not be admissible in any criminal trial against that person.
Section 29(11) - Any person who –
(a) obstructs or hinders the investigating officer in the performance of his functions in terms of this section; or
(b) knowingly makes a false statement or gives a false answer to any enquiry,
shall be guilty of an offence and shall be liable, upon conviction, to a fine not exceeding BWP 2,000 or to imprisonment for a term not exceeding 12 months, or to both.
Section 30(1) - The court shall, subject to any other Act of Parliament, and on such terms as it may deem reasonable, have the authority to –
(a) grant injunctions to prohibit the committing, or continued committal, of infringement of any right protected under the Copyright Act;
(b) order the impounding of copies of works or sound recordings suspected of being made or imported without the authorization of the owner of any right protected under the Copyright Act, where the making or importation of copies is subject to such authorization, as well as the impounding of the packaging of, the implements that could be used for the making of, and the documents, accounts or business papers referring to such copies;
(c) order payment of any damages suffered in consequence of the infringement, including any profits enjoyed by the infringing party, that are attributable to the infringement; and
(d) award exemplary damages where it finds that the infringement is prejudicial to the honour or reputation of the person whose rights were infringed.
Section 30(2) - In addition to any civil remedy that may be ordered by the court against any person who has infringed any right protected under this Act, the court shall have the authority to order the destruction or other reasonable disposition of infringing copies, where they exist, and their packaging outside the channels of commerce in such a manner as to avoid harm to the holder of the right, unless the owner of the right requests otherwise, provided that copies and their packaging which were acquired by a third party in good faith shall not be so destroyed.
Section 30(3) - Where there is a danger that implements may be used to commit or continue to commit acts of infringement, the court shall, whenever and to the extent that it is reasonable, order their destruction or other reasonable disposition outside the channels of commerce in such a manner as to minimize the risks of further infringements.
Section 30(4) - Any person who, in contravention of the provisions of subsections (2) and (3), fails to carry out the order of the court for the destruction or other reasonable disposition of the infringing copies or implements, shall be guilty of an offence and upon conviction shall be liable to a fine not exceeding BWP 10,000 or to imprisonment for a term not exceeding five years, or to both.
Section 31 provides for Criminal Sanctions as follows:
(1) Any person who contravenes the provisions of this Act, so as to infringe a right protected under the Copyright Act for profit, shall be guilty of an offence and upon conviction shall be liable to a fine not exceeding BWP 20,000 or to imprisonment for a term not exceeding ten years, or to both.
(2) Any person convicted of a second or subsequent offence shall be fined a minimum of BWP 30,000 or a maximum of BWP 5,000,000 or be imprisoned for a term not exceeding ten years, or to both.
Section 32 provides for the Powers of Customs officials as outlined below:
Any goods imported into the country that are in contravention of the provisions of the Copyright Act may be placed under an embargo, destroyed or otherwise disposed of as provided for under sections 119 and 120 of the Customs and Excise Duty Act.
Section 33 provides for Measures, remedies, and sanctions against abuses in respect of technical means of protection and rights management information
(1) The following acts shall be considered unlawful and, in the application of the civil and criminal remedies under this Part, shall be assimilated to infringements of the rights protected under this Act –
(a) The manufacture or importation for sale or rental of any device or means specifically designed or adapted to circumvent any device or means intended to prevent or restrict reproduction of a work, sound recording or a broadcast, or to impair the quality of copies made (the latter device or means hereinafter referred to as "copy-protection or copy-management device or means"); or
(b) the manufacture or importation for sale or rental of any device or means that is susceptible to enable or assist the reception of an encrypted programme, which is broadcast or otherwise communicated to the public, including by satellite, by those who are not entitled to receive the programme;
(c) the removal or alteration of any electronic rights management information without authority;
(d) the distribution import for distribution, broadcasting, communication to the public or making available to the public, without authority, of works, performances, sound recording or broadcasts, knowing or having reason to know that electronic rights management information has been removed or altered without authority.
(2) In the application of civil and criminal remedies under this Part, any illicit device and means referred to in subsection (1) and any copy from which rights management information has been removed, or in which such information has been altered, shall be assimilated to infringing copies of works, and any illicit act referred to in subsection (1) shall be treated as an infringement of copyright or related rights to which the civil remedies and criminal sanctions provided for in this Part are applicable.
(3) In this section, "rights management information" means any information which identifies the author, the work, the producer of the sound recording, the broadcaster, the performer, the performance, or any owner of a right under this Act, any information about the terms and conditions of use of the work or the performance, and any numbers or codes that represent such information, when any of these items of a work or a fixed performance, appears in connection with the broadcasting, communication to the public or making available to the public of a work or a fixed performance.
At the discretion of the Judge, attorneys' fees may be applied.
REMEDIES UNDER THE INDUSTRIAL PROPERTY ACT
The Industrial Property Act provides specific remedies and criteria for the protection of patents, industrial designs, trademarks, traditional knowledge and handicrafts. It also provides general offences and penalties which are applicable for any other offences which constitute an infringement under the Act. The remedies described above are outlined below.
Section 27 – Provides for proceedings of Infringement of a patent
Section 27(1) - The patentee shall, in addition to any other rights, remedies or actions available to him or her, have the right to institute court proceedings against any person who infringes the patent by performing, without such patentee's consent or authorization, any of the acts referred to in section 24(2), or who performs any act which makes it likely that infringement will occur.
Section 27(2) - The patentee in proceedings for infringement shall be entitled to relief by way of the following —
(a) an interdict or injunction;
(b) delivery up or destruction of any infringing product, article or product of which the infringing product forms an inseparable part;
(c) damages; or
(d) an account of the profits derived from the infringement.
Section 27(3) - In any proceedings for infringement, the defendant may counterclaim for the invalidation of the patent and, by way of defence, rely upon any ground on which a patent may be invalidated.
Section 27(4) - The patentee, before instituting proceedings, shall give notice to every licensee to the patent in question whose name is recorded in the patent register, and any such licensee shall be entitled to intervene as co-plaintiff.
Section 27(5) - In any proceedings for infringement, other than criminal proceedings, where the subject matter of the patent is a process for obtaining a product, the burden of establishing that the product was not made by the process shall rest on the defendant if the product obtained by the patented process is new in terms of section 8(3).
Section 27(6) - In requiring the production of evidence in proceedings for infringement, the court shall take into account the legitimate interests of the defendant in not disclosing his or her manufacturing secrets.
Section 27(7) - The court shall, in awarding damages, calculate such damages taking into account the amount of a reasonable royalty which would have been payable by a licensee or sub-licensee in respect of the patent concerned.
Section 27(8) - The court shall not, in awarding damages under this section, also order, in respect of the same infringement, that the plaintiff be given an account of the profits derived by him or her from the infringement.
Section 55 of the Industrial Property Act - proceedings for infringement of industrial designs
Section 55(1) - An owner of a registered design shall, in addition to any other rights, remedies or actions available to him or her, have the right to institute court proceedings against any person performing, without the owner's consent or authorization, any of the acts referred to in section 53, or who performs acts which make it likely that infringement will occur.
Section 55(2) - In any proceedings under this section, the court may grant relief by way of damages, interdict, delivery up or destruction of any infringing product, article or product of which the infringing product forms an inseparable part, or account of profits derived from the infringement or otherwise as it may consider necessary.
Section 55(3) - The court shall not, in awarding damages under this section, also order, in respect of the same infringement, that the plaintiff be given an account of the profits derived by him or her from the infringement.
Section 55(4) - In any proceedings under this section, the court shall have jurisdiction to order the revocation of the registration of a design on any of the grounds specified in section 59, and any such grounds may be relied upon by way of defence.
Section 83 provides for proceedings for infringement of marks
Section 83(1) - The owner of a mark shall, in addition to any other rights, remedies or actions available to him or her, have the right to institute court proceedings against any person who infringes the mark by using that mark without his or her authorization or by performing acts which make it likely that infringement will occur.
Section 83(2) - The right conferred under this section shall extend to the use of a sign similar to the registered mark in relation to goods and services similar to those for which the mark has been registered, where confusion may arise in the public.
Section 83(3) - The right conferred under this section shall extend to the use of a sign which constitutes a reproduction, an imitation or a translation of a registered mark which is well known in Botswana in relation to goods or services which are not similar to those in respect of which a mark is registered where —
(a) use of the mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered mark; and
(b) the interests of the owner of the registered mark are likely to be prejudiced by such use.
Section 83(4) - A plaintiff in proceedings for infringement shall be entitled to relief by way of an interdict, delivery up or destruction of any infringing product, article or product of which the infringing product forms an inseparable part, damages or an account of the profits derived from the infringement.
Section 83(5) - The court shall not, in awarding damages under this section, also order, in respect of the same infringement, that the plaintiff be given an account of the profits derived by him or her from the infringement.
Section 122 - Right to institute infringement proceedings for Traditional Knowledge and Handicrafts
Section 122(1) - Any proceedings concerning the protection or infringement of rights over traditional knowledge shall be initiated either by the local community or any other owner of that knowledge.
Section 122(2) - The Court may order the infringing party to pay to the local community an amount to be prescribed.
Section 134 - Offences and Penalties
Section 134(1) - Any person who, knowing the same to be false —
(a) makes or causes to be made a false entry in any register kept in terms of this Act;
(b) makes or causes to be made any document falsely purporting to be a copy of an entry in any such register; or
(c) produces, tenders or causes to be produced as evidence an entry acquired under paragraph (b) or a copy thereof,
commits an offence and shall, on conviction, be sentenced to a fine of not less than BWP 5,000 but not more than BWP 10,000, or to imprisonment for a term of not less than one year but not more than three years, or to both.
Section 134(2) - Any person who —
(a) for the purpose of deceiving the Registrar or any other officer in the execution of his duties under this Act; or
(b) for the purpose of procuring or influencing the doing or omission of any act under this Act,
makes a false statement or representation knowing the same to be false, commits an offence and shall, on conviction, be sentenced to a fine of not less than BWP 5,000 but not more than BWP 10,000, or to imprisonment for a term of not less than one year but not more than three years, or to both.
Section 134(3) - Any person who, knowing the same to be false, makes a false statement or representation that —
(a) a patent has been granted to him or her or to any other person in respect of any invention;
(b) he or she or any other person is the owner of any registered design, mark, collective mark or trade name; or
(c) he or she has been granted an exclusive or compulsory licence to use any patent, registered design, registered mark or collective mark or trade name,
which statement or representation is intended to induce another person to act thereon, commits an offence and shall, on conviction, be sentenced to a fine of not less than BWP 2,000 but not more than BWP 5,000, or to imprisonment for a term of not less than six months but not more than two years, or to both.
Section 134(4) - Subject to the provisions of sections 25(1), 31, 32, 33, 55(4), 81(2) and 111(2), the performance of any act referred to in sections 25, 55, 81 and 111 by a person other than the owner of the title of protection and without the agreement of such owner shall constitute an infringement.
In terms of Section 134(5), the court may, on the application to it by the owner of the title of protection, or by a licensee if he or she has requested the owner to institute court proceedings for a specific relief and the owner has refused or failed to do so, grant an interdict to prevent an infringement or unlawful act referred to in sections 93(3), 111(2) and 114(2).
Section 134(6) provides that "any person who intentionally or wilfully performs any act which constitutes an infringement as defined in subsection (4) of this section, or an unlawful act as defined in sections 93(3), 111(2) and 114(2) commits an offence and shall be sentenced, on conviction, to a fine of not less than BWP 2,000 but not more than BWP 5,000, or to imprisonment for a term of not less than six months but not more than two years, or to both".
Section 134(7) provides that "any person who commits an offence or unlawful act for which no specific penalty has been specified shall be sentenced to a fine of not less than BWP 2,000 but not more than BWP 5,000, or to imprisonment for a term of not less than six months but not more than two years, or to both".