For­eign copy­right vi­o­la­tion at is­sue

SA court can hand down judg­ments only on lo­cal in­fringe­ments

Business Day - Business Law and Tax Review - - FRONT PAGE - RACHEL SIKWANE ENS

THE Supreme Court of Ap­peal handed down a judg­ment last month on an is­sue raised by way of ex­cep­tion in the mat­ter be­tween Gallo Africa Limited (Gallo) and oth­ers vs Sting Mu­sic (Pty) Limited (Sting) and oth­ers.

Gallo had is­sued sum­mons in the South Gaut­eng High Court against Sting, al­leg­ing that the de­fen­dants had in­fringed their copy­right in the Umoja mu­si­cal and lit­er­ary works by per­form­ing, mak­ing record­ings and cin­e­mato­graph films and broad­cast­ing the per­for­mance, in part or in whole.

Gallo al­leged that the in­fringe­ment took place in SA and 19 other coun­tries world­wide, in­clud­ing Ja­pan and the US. They sought re­lief from the court for, among other things, in­ter­dicts and dam­ages against Sting in re­la­tion to, not only their in­fringe­ment in SA but also in the 19 other coun­tries.

Sting raised an ex­cep­tion to the lat­ter and asked whether a South African high court had ju­ris­dic­tion to hear the part of the claim that was based on the copy­right leg­is­la­tion of for­eign states.

The South Gaut­eng High Court up­held the ex­cep­tion and the Supreme Court of Ap­peal granted Gallo leave to ap­peal this de­ci­sion, af­ter leave had been re­fused by the court orig­i­nally.

In de­fend­ing their par­tic­u­lars of claim, Gallo ar­gued that the high court had ju­ris­dic­tion to hear the for­eign in­fringe­ment claims be­cause: a) The re­lief sought, namely in­ter­dicts and dam­ages, is within the high court’s com­pe­tence; b) The plain­tiffs are in­co­lae (res­i­dent) of the high court; c) on­lyThe de­fen­dants are domi­ciled or res­i­dent in SA and within the ju­ris­dic­tion of the high court; d) Sec­tion 19(1)(a) of the Supreme Court Act, 1959, gives a high court ju­ris­dic­tion over all per­sons re­sid­ing or be­ing in its area of ju­ris­dic­tion; e) A court can grant an ef­fec­tive in­ter­dict against some­one re­sid­ing within its ju­ris­dic­tion; and f) A court can de­ter­mine the rel­e­vant for­eign law through ex­pert ev­i­dence.

A point was also made about the in­con­ve­nience of in­sti­tut­ing le­gal pro­ceed­ings in 20 ju­ris­dic­tions.

There are four main forms of in­tel­lec­tual prop­erty rights -— pa­tents, de­signs, trade­marks and copy­right.

The Supreme Court of Ap­peal noted that in­tel­lec­tual prop­erty rights are ter­ri­to­rial in na­ture and can­not be pro­tected by one uni­form right cov­er­ing the whole world. In­stead, these rights are sub­ject to the law of a pos­si­ble 150plus na­tional or re­gional territories. Each right is in­de­pen­dent of the other and each right awards priv­i­leges to the rights holder limited to the state or re­gion in which the right is awarded.

Copy­right is dif­fer­ent from the other three in­tel­lec­tual prop­erty rights in that pro­tec­tion is au­to­matic and not con­di­tional upon com­pli­ance with any for­mal­ity. For in­stance, in or­der for a trade­mark to come into “ex­is­tence”, it would have to be reg­is­tered on the rel­e­vant na­tional reg­is­ter. Copy­right, how­ever, ex­ists nat­u­rally by virtue of lo­cal leg­is­la­tion.

This does not, how­ever, de­tract from the fact that copy­right, as a form of in­tel­lec­tual prop­erty right, is nev­er­the­less ter­ri­to­rial in na­ture and that the in­fringe­ment thereof has to be de­fended in the ter­ri­tory in which the in­fringe­ment takes place, and ad­ju­di­cated in the light of the copy­right laws of that ju­ris­dic­tion. The fact that the copy­right con­sists of a work that was cre­ated in SA is ir­rel­e­vant for the pur­pose of found­ing ju­ris­dic­tion.

The ap­peal court noted that an at­tempt to ex­er­cise ju­ris­dic­tion over for­eign-owned copy­right could re­sult in a clash of in­tel­lec­tual prop­erty poli­cies of dif­fer­ent coun­tries. It would also re­sult in a re­straint on ac­tions in an­other coun­try, which in­ter­fer­ence a for­eign judge should avoid, and cre­ate too much room for “fo­rum-shop­ping”. There­fore, the ap­peal court noted that al­though Sting were res­i­dent of the court of first in­stance and that this pro­vided grounds for ju­ris­dic­tion, the re­quire­ment for ju­ris­dic­tion will only be met if the court can also give an ef­fec­tive judg­ment.

Both the rea­son for ju­ris­dic­tion and the court’s abil­ity to give an ef­fec­tive judg­ment are nec­es­sary for the ju­ris­dic­tion re­quire­ment to be met.

In light of the fact that copy­right is ter­ri­to­rial, a South African high court can­not hand down an ef­fec­tive judg­ment against de­fen­dants with re­gard to their in­fringe­ment of copy­right in for­eign ju­ris­dic­tions. It has to fol­low, there­fore, that Gallo will have to pur­sue the in­fringe­ment, in­ter­dicts and dam­ages in those for­eign ju­ris­dic­tions where the in­fringe­ments took place.

Pic­ture: SOWE­TAN

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