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[2008] ZASCA 143
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King v South African Weather Services (716/07) [2008] ZASCA 143; 2008 BIP 330 (SCA) ; 2009 (3) SA 13 (SCA) ; [2009] 2 All SA 31 (SCA) (27 November 2008)

THE
SUPREME COURT OF APPEAL
REPUBLIC
OF SOUTH AFRICA
JUDGMENT
Case No: 716/07
PIETER JOHANNES KING
Appellant
and
THE SOUTH AFRICAN WEATHER SERVICE Respondent
Neutral
citation:
King v SA Weather Service
(716/2007)
[2008] ZASCA 143
(27 NOVEMBER 2008)
Coram:
Harms ADP, Cloete, Cachalia JJA, Leach and Griesel
AJJA
Heard:
03 November 2008
Delivered:
27 November 2008
Updated:
Summary:
Copyright; owner of copyright; work made in the
course of employee’s contract of employment is owned by
employer; determination
of whether work made in the course of
employment.
ORDER
On appeal from:
High Court, Pretoria
(R.D. CLAASSEN J
sitting as court of first instance):
The
appeal is dismissed with costs
JUDGMENT
HARMS ADP, (CLOETE, CACHALIA JJA,
LEACH AND GRIESEL AJJA concurring):
Introduction
[1] The appellant, Mr Pieter
King, sought to enforce a copyright claim in computer programs
against the respondent, the South African
Weather Service, in the
High Court, Pretoria. His claim on the merits of the case was
dismissed. The trial court refused leave
to appeal but it was
subsequently granted by this Court. In the event, as will appear
hereafter, we dismiss the appeal with costs
on the ground that King
was not the copyright owner.
[2] Mr King was an employee of
many years’ standing of the Chief Directorate of the Weather
Bureau (‘the Bureau’),
which at all relevant times was a
division of one or other state department. The respondent, a juristic
person, was formed in terms
of the
South African Weather Service Act
8 of 2001
and it took over all the functions of the Bureau and
replaced it as from 15 July 2001. In terms of
s 18(1)
, King
automatically became an employee of the respondent. He was
essentially a meteorological technical officer in charge of the

Upington office. A dispute arose concerning the source codes of
computer programs developed by King, which he refused to hand over
to
the respondent. This led to his suspension and disciplinary steps on
the ground of insubordination. He was subsequently found
guilty at
the disciplinary hearing and dismissed.
[3] On 12 June 2002, which was
during the period of suspension, King sought to draw to the
respondent’s attention the fact
that the programs he had
written prior to 7 June 2000 ‘were not written in the course
and scope’ of his employment
or ‘under [the employer’s]
supervision and control’; instead, he alleged, as the person
who exercised control
over the making, he was the author. However, on
the assumption that he may have authorised the respondent to use his
programs,
he gave notice of the termination of any licence with
effect from 30 June 2002. The respondent did not comply with his
demand
and about a year later he instituted action claiming an
interdict and damages.
[4] In the action, which is the
subject of this appeal, King’s case was in short that he had
created a number of weather computer
programs between 1980 and 2002;
that they had been written in his own time, at home, to assist him
personally in the performance
of his duties as employee; that it had
not been part of his duties as meteorologist to write computer
programs; that he had authorised
the respondent by means of a tacit
licence to use the programs; that he had withdrawn the licence as
from 30 June 2002; but that
the respondent was nevertheless ‘using’
the weather programs to provide specialised weather forecasting and
climate
information and the like, and also reproduced or adapted
them.
Basic copyright principles
[5] Before turning to the
particular it may be convenient to set out in general terms certain
basic copyright principles because
copyright cases are technical and
those relating to computer programs notoriously difficult.
1
It is accordingly necessary, in enforcing any alleged copyright
claim, to have regard to all the relevant statutory requirements

necessary to establish a copyright claim in the name of a particular
claimant, and to determine whether or not copyright infringement
had
taken place.
[6] Copyright is a creature of
statute and has to be found within the four corners of a statute, in
particular the
Copyright Act 98 of 1978
.
2
Certain defined works (of which computer programs are one) are
eligible for copyright under the Act. This assumes, however, that
the
work concerned is ‘original’
(s 2(1))
and has been
reduced to a material form
(s 2(2)).
In addition, copyright must have
been conferred by virtue of nationality, domicile or residence or as
a result of first publication
(s 3
and
4
). It is accordingly of the
utmost importance for a copyright claimant at the outset to identify
the work or works which are said
to have been infringed by the
defendant.
[7] Copyright infringement is
(subject to an irrelevant exception) actionable ‘at the suit of
the owner of the copyright’
(s 24(1)).
It is only actionable at
the suit of the author if the author is also the owner.
[8] The word ‘author’
has a technical meaning; and the author is not necessarily the person
who first makes or creates
a work. It depends on the nature of the
work. In the case of a computer program, the author is ‘the
person who exercised
control over the making of the computer program’
(s 1
sv ‘author’).
[9] The author of a work that
attracts copyright is usually the first owner of the copyright
(s
21(1)(a))
but that need not necessarily be the case. An exception,
which applies to computer programs amongst others, concerns the case
of
a work ‘made in the course of the author’s employment
by another person under a contract of service’: in this
event
the employer is ‘the owner of any copyright subsisting in the
work’
(s 21(1)(d)).
There is another relevant exception that
concerns works which were made ‘by or under the direction or
control of the state’
(s 5(2))
– ownership of any such
copyright initially vests in the state and not in the author
(s
21(2)).
[10] ‘Using’ a
copyright work does not amount to copyright infringement. Primary
infringement consists in the performance
of an act, in the Republic,
which the owner has the exclusive rights to do or to authorize
without the latter’s consent
(s 23(1)).
(Secondary infringement
is not in issue and need not be discussed.) The exclusive rights of
the owner depend on the nature of work.
In the case of computer
programs the important rights are those of reproduction, adaptation
and rental.
3
[11] The issues in this case are
many. In relation to the issue concerning the subsistence of
copyright they concern authorship,
originality, and ownership
(whether belonging to the author, the employer or the state). In
respect of infringement the questions
are whether the respondent had
the consent (or licence) of the owner; the terms of the licence; the
validity of the notice of cancellation;
and whether King has
established that the respondent had committed any infringing act
since the date of revocation of the licence.
In view of my conclusion
it is unnecessary to resolve all of these issues.
Ownership of copyright: ‘in
the course of employment’
[12] For purposes of this appeal
I shall assume that King authored, not only in the sense of
compiling, but also in exercising control
over the making of the
weather programs on which he relied – in other words, that he
was the author as defined in the Act.
I shall furthermore assume that
the state is not the owner of the copyright by virtue of the
provisions of
s 5(2)
because the works had not been made ‘by or
under the direction or control of the state’.
4
I accordingly proceed to consider whether, in terms of
s 21(1)(d)
,
the computer programs were authored by King ‘in the course of
[his] employment by [the Bureau] under a contract of service’.

The inquiry is limited to the Bureau (as part of the state) because
the works on which King relied were allegedly all made before
the
respondent had been constituted. In other words, if the works were
made in the course of his employment with the Bureau and
ownership in
the works accordingly vests in the state, King had no rights to
enforce against the respondent.
[13] The wording of
s 21(1)(d)
can be traced back to at least s 5(1)(b) of the British Copyright Act
1911, which was incorporated into our Patents, Designs, Trade
Marks
and Copyright Act 9 of 1916 by means of a schedule, and which formed
the basis of copyright law in the British Empire and
subsequently in
most Commonwealth countries. Except for a short hiatus, the phrase
‘in the course of employment’ has
since remained part of
our statute law.
5
It is a stock concept in employment law (formerly known as the law of
master and servant). The term is unambiguous and does not
require
anything by way of extensive or restrictive interpretation. A
practical and common sense approach directed at the facts
will
usually produce the correct result.
[14] In the court below and,
initially, in the heads of argument King submitted (although not
necessarily in these terms) that the
phrase meant that the work must
have been authored ‘in terms of’ the contract of
employment – in other words,
unless the employee had to create
the work in terms of the employment contract, ownership does not vest
in the employer. The submission
may have had some merit had the Act
provided as s 39 of the British Patents Act 1977 provides, namely,
that the employer is the
owner of an invention
made
‘in the course of’ the ‘normal duties’ of the
employee. This provision changed the common-law test,
6
which does not refer to ‘normal duties’ but it retained
the ‘in the course of’ requirement and did not
supplant
it with an ‘in terms of’ requirement.
7
Counsel, wisely,
did not persist with the argument but, as will become apparent,
King’s evidence was sculptured to fit the
proposition.
8
[15] Copyright law in the USA is
somewhat different: it provides that the employer is considered to be
the ‘author’
and in consequence the owner of a work made
for hire. A ‘work made for hire’ is defined in terms that
echo those used
in s 21(1)(d) of the Act – it is a ‘work
prepared by an employee within the scope of his or her employment’.
9
The
statute does not define ‘scope of employment’, but the US
Supreme Court held in
Community
for Creative Non-Violence v Reid
490 US 730 (1989)
that Congress incorporated common-law agency principles into the
copyright statute and intended to describe the conventional
master-servant
relationship as understood by common-law agency
doctrine. Consequently, to show that the creation of a work was
within the scope
of the employee’s employment, the employer has
to establish that (a) the work was of the type for which the employee
was
hired to perform; (b) the employee’s creation of the work
occurred ‘substantially within the authorized time and space

limits’ of his post; and (c) the creation was ‘actuated,
at least in part, by a purpose to serve’ the employer’s

interests.
10
The court rejected other tests espoused by earlier courts namely
whether the employer retained the right to control the product
or
actually wielded control over its creation.
[16] Counsel
for the respondent relied heavily on US jurisprudence – and
there are cases that are, on the facts, hardly distinguishable
from
those in this case
11
– but, as Michael D Birnhack recently pointed out, agency law
principles, which were developed in the context of tort law,
do not
necessarily fit the copyright context.
12
The same may be said about the argument of the respondent that the
tests developed in the framework of vicarious liability should
apply.
Again, it appears to be wrong to apply delictual ‘principles’
without more to determine questions of ownership
in the arcane area
of copyright especially since policy considerations must differ.
13
[17] Having
had regard to a number of judgments,
14
both local and from elsewhere, it appears to me to be dangerous to
formulate generally applicable rules to determine whether or
not a
work was authored in the course of the employee’s employment.
It remains by and large a factual issue that depends
not only on the
terms of the employment contract but also on the particular
circumstances in which the particular work was created.
15
I accordingly turn to a discussion of the salient facts.
The facts
[18] It is
convenient to begin with a discussion of the ‘business’
of the Bureau. By its very nature a weather bureau
collects,
processes, analyses and stores weather related data. To do this the
Bureau developed a Microsoft based Windows automated
weather system
(WAWS), which contained a broad collection of computer program
modules used to capture, process and store weather
related data. It
is common cause that all the ‘infringing’ programs were
written to conform with and were incorporated
into and became an
integral part of the Bureau’s WAWS. King’s programs were,
accordingly, directly related to the ‘business’
of the
Bureau. They captured, rectified and transmitted weather data to head
office. And, as he reluctantly had to concede, the
programs were to
the advantage of his employer. Much, though, was made by King of the
fact that the Bureau was not a commercial
organisation and that the
respondent, in terms of its governing Act, has to generate income. As
I understand King’s point,
it is that his tacit licence did not
cover commercial use of the programs by the respondent. The licence
issue, however, arises
only once the ownership issue has been
determined.
[19] Another
important aspect to consider is the nature of King’s duties in
terms of the employment contract. In this regard
the matter must be
looked at broadly and not by dissecting the employee’s task
into its component activities.
16
His duties changed over the years but one would not ordinarily
include computer programming as part of the duties of a
meteorologist.
However, that is not the full picture. As
meteorologist King had to collect and collate meteorological data and
transmit it to
head office for analysis and storing. He developed his
programs for this very purpose. Although he may have done it to make
his
own job easier, he did it because of his employment with the
Bureau.
[20] This
leads to another and most significant factor. It is clear that but
for his employment with the Bureau, King would not
have created these
works. There is, accordingly, a close causal connection between his
employment and the creation of the programs.
In other words, his
employment was the
causa
causans
of the programs. Some of the programs were specifically written for
other weather stations of the Bureau at their request and for
their
use. They were not created for external use by others; instead, they
were purely work related. Importantly, the Bureau prescribed
the
format of the programs and had to approve of them before they could
be implemented and used in the system.
[21] Reverting
to King’s evidence that he was the owner of the copyright
because the works had not been prepared in the performance
of his
duties, the problem is that it is belied by the objective facts. For
instance, King prepared quarterly reports about the
performance of
his duties. They dealt with his merits as employee and they stressed
that the major component of his work was programming.
A job
evaluation investigation in April 2000, with which he agreed at the
time, stated that he was responsible for system development
and
programming and calibration of the Bureau’s automatic weather
station network. The estimate was that he was, at the time,
spending
some 50 per cent of his time on system development and programming.
[22] This
also controverts his evidence that he had compiled the programs after
hours. Although it must be accepted that his initial
programming took
place at home it is clear that as time passed he spent increasingly
more of his office hours developing programs,
to such an extent that
he failed to give sufficient attention to his duties as head of the
Upington office. In any event, the fact
that an employee creates a
work at home (or even during office hours at the premises of the
employer) is but a factor that has
to be taken into account in
answering the question whether the work was made in the course of his
employment.
[23] Mr
King also relied on the Personnel Administration Standard, which
contained a personnel standard for a meteorological technician.
It
did not list computer programming as part of the job description but
the document in its terms was not intended to be all-embracing
and
anticipated that a fuller job description could be issued (as
happened) and, as said before, a work may be created in the course
of
employment without having been created in terms of the contract. In
addition, the scope of employment may change explicitly
or by
implication.
17
Lastly, he relied on an industrial settlement agreement, which
provided that the April 2000 job evaluation would be cancelled.
The
meaning of the settlement agreement need not be considered as
cancellation could not change ownership retrospectively.
[24] It is
not necessary to deal with the evidence any further. The court below
did a careful analysis of all factors relevant to
the question and
came to the conclusion that the works had been made in the course of
King’s employment. King’s counsel
was not able to show
that the court below had erred. To the contrary, I am satisfied that
the court did not. This conclusion obviates
the need to consider the
other issues
18
and the appeal stands to be dismissed with costs.
[25] The
following order is made:
The appeal is dismissed with
costs.
__________________________
L T C HARMS
ACTING DEPUTY PRESIDENT
APPEARANCES:
For Appellant: E S J van Graan SC
Instructed by:
Botes Attorney, Pretoria
Claude Reid Attorneys,
Bloemfontein
For Respondent: A J Bester
Instructed by:
Spoor & Fisher, c/o Van
Zyl Le Roux & Hurter, Pretoria
Israel Sackstein Matsepe Inc,
Bloemfontein
1
Memory Institute SA CC t/a SA Memory Institute v Hansen
2004 (2) SA 630 (SCA);
Haupt t/a Soft Copy v
Brewers Marketing Intelligence (Pty) Ltd
2006 (4) SA 458 (SCA).
2
Section 41(4). Compare
Ashdown v Telegraph Group Ltd
[2001]
EWCA Civ 1142
;
Butterworth
&
Co
(
Publishers
)
Ltd
v Ng Sui Nam
1987
RPC 104
(Singapore High Court);
Théberge
v
Galerie
d
'
Art
du Petit Champlain Inc
2002 SCC 34
,
[2002] 2 SCR 336.
3
Section 11B.   ‘Nature of copyright in computer
programs—Copyright in a computer program vests the
exclusive
right to do or authorize the doing of any of the following acts in
the Republic:
(a) Reproducing the
computer program in any manner or form;
(b) publishing the
computer program if it was hitherto unpublished;
(c) performing the
computer program in public;
(d) broadcasting the
computer program;
(e) causing the computer
program to be transmitted in a diffusion service, unless such
service transmits a lawful broadcast,
including the computer
program, and is operated by the original broadcaster;
( f ) making
an adaptation of the computer program;
(g) doing, in relation
to an adaptation of the computer program, any of the acts specified
in relation to the computer program
in paragraphs (a) to (e)
inclusive;
(h) letting, or offering
or exposing for hire by way of trade, directly or indirectly, a copy
of the computer program.’
4
See
Biotech Laboratories (Pty) Ltd v Beecham Group PLC
2002 (4) SA 249,  [2002] 3 All SA 652
(SCA).
5
Discussed in
Biotech Laboratories (Pty) Ltd v Beecham Group PLC
2002 (4) SA 249,  [2002] 3 All SA 652
(SCA).
6
Liffe
Administration and Management v Pinkava
[2007]
EWCA Civ 217.
7
Presumably the common-law approach still
applies to South African patents since the current
Patents Act 57 of
1978
does not deal with patents by employees.
The
Designs Act 195 of 1993
s 1(1)
sv ‘proprietor’ is
similar to the Copyright Act.
8
See
British
Reinforced Concrete Engineering Co Ld v Lind
(1917) 34 RPC 101
(Ch).
9
17 USC § 201(b) read with § 101.
10
Avtec Systems Inc v Peiffer
[1995] USCA4 2513
;
67 F3d 293
,
38 USPQ 2d 1922.
11
Genzmer v Public Health Trust of Miami-Dade
County
219 FSupp.2d 1275
and
Miller
v
CP Chemicals Inc
808 FSupp
1238
are particularly instructive.
12
Michael
D
.
Birnhack
‘W
orking
Authors’
(October
2008) footnote 3. Tel Aviv University Legal
Working
Paper Series.
www.
law.bepress.com/taulwps/fp/art97/
(accessed 4 November 2008).
13
See, in another context,
Ngubetole v Administrator, Cape
1975 (3) SA 1 (A) 8G-9F.
Also
Laddie, Prescott and Vitoria
The Modern
Law of Copyright and Designs
(2 ed)
vol 1 para 11.37.
14
Trewhella Bros (UK) Ltd v Deton Engineering (Pty)
Ltd
Stranex
Judgments on Copyright
57;
Stephenson Jordan & Harrison
Ltd v Macdonald &Evans
(1952) 69 RPC 10
(CA);
Noah v
Shuba
1991 FSR 14
(Ch);
Morewear Industries (Rhodesia) Pvt
Ltd v Irvine
1960 Burrell’s PR 202 (Federation of Rhodesia
and Nyasaland).
15
Compare
British Reinforced Concrete
Engineering Co Ld v Lind
(1917) 34 RPC
101 (Ch) 109.
16
Per Diplock LJ in
Ilkiw v Samuels
[1963] 2 All ER 879 (CA)
quoted in
Bezuidenhout NO v Eskom
2003 (3) SA 83,
[2003] 1 All SA 411 (SCA) para 21, both
dealing with tort or delict.
17
Noah v Shuba
1991 FSR 14
(Ch).
18
It may, though, be noted that counsel was unable
to point to any evidence which established an infringing act after
the date on
which the licence was supposed to have ceased. The only
evidence related to the use of programs and even WAWS was no longer
being
used by the respondent at the time of the trial.