Foreign copyright violation at issue
SA court can hand down judgments only on local infringements
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.