Metro GoldwynMayer Incorporated and others v Ackerman and another
 1 All SA 584 (SE)
SouthEastern Cape Local Division
29 February 1996
488494/95; 496/95; 550/95
PG Beningfield and KN Harvey
. Editor's Summary . Cases Referred to . Judgment .
Copyright Breach of Copyright Act 98 of 1978 Section 24(3) Damages When awarded.
Copyright Breach of Copyright Act 98 of 1978 Section 24(3) Interpretation thereof.
Copyright Breach of Copyright Act 98 of 1978 Sections 24(1A) and 24(1B) to be read together Damages How
calculated Value judgment employed.
Copyright Breach of Copyright Act 98 of 1978 Section 26(10) Use of presumption contained therein.
The Plaintiffs, all legal personae incorporated in terms of the laws of the United States of America, were the owners
of the copyrights to, and trademarks appearing on, certain feature films and their trailers allegedly illegal copies of
which were found upon the First Defendant's premises. First Defendant, one Ackerman, was the sole member and
manager of the Second Defendant, a close corporation, which conducted business as a video hire outlet, trading
under the name of "Film World". It was common cause that the video cassettes in question were found in a locked
walkin safe on Film World's premises, together with two video cassette recorders. Video taped evidence of the
shop, the safe and its contents, was obtained and submitted to the Court by a former employee of Ackerman.
Plaintiffs' counsel submitted that, on a proper assessment of the evidence in its entirety, the Defendants had failed
to discharge the onus imposed on them in terms of section 26(10) of the Copyright Act 98 of 1978 ("the Act") and
that even were Plaintiffs not assisted by the presumption contained in that section, they had nevertheless
succeeded in establishing an illegal trade in the films in violation of copyright. Defendants' argument before the
Court was that the video cassettes were bought from a supplier with a view to wiping them clean
Page 585 of  1 All SA 584 (SE)
and then using them as blank cassettes when copying the home and private video productions of their clients.
Plaintiffs sought orders interdicting the Defendants from infringing their copyrights in the relevant films as well as
infringing their rights to their trademarks, as well as payment for damages for infringement of copyright together
with additional damages as envisaged in section 24(3) of the Act, and costs of suit.
Held The Court found that, on a conspectus of all the evidence, the Plaintiffs' submissions were to be upheld and
that the statements which Ackerman made fell squarely within the ambits of the acts which in terms of section 23,
read with section 8, of the Act, constituted an infringement of copyright.
Plaintiffs' counsel argued that a finding that the Defendants had dealt in the films in breach of copyright, even
though such finding was reached on the basis of the Defendants' failure to rebut the presumption contained in
section 26(10) of the Act, constituted a finding of fact and as such should operate in respect of the Plaintiffs' claim
that the Defendants had breached the trade marks in the relevant films; the argument was that as the alleged acts
relied upon for both legs of the claim were not severable, a finding thereon in respect of the first leg of the claim
(breach of copyright) was necessarily also applicable to the other leg (breach of trademark). The Court endorsed
the approach of Basson J who had found, in delivering the majority judgment in S v Bruhns 1984 (1) SA 481 (NC),
that a conviction upon one charge obtained solely by invoking a presumption could not be taken into account by the
court as a relevant fact in considering whether the accused was guilty on a second charge. The Court nevertheless
held, in the instant case, that the finding that the Defendants had not rebutted the presumption and its
consequential finding that they had dealt in the films in question, was based on evidence and would have been
reached even in the absence of any such presumption.
The Court found that in the circumstances the Plaintiffs were entitled to the interdicts sought against the
Defendants preventing their infringement of the Plaintiffs' copyright in the relevant films and from infringing their
trademarks. The fact that the offending copies of the films in question had been removed from the Defendants'
possession did not preclude Plaintiffs from being granted the relief sought; a reasonable apprehension existed that
the Defendants would again utilise unauthorised copies of films or their trailers in breach of the Plaintiffs' copyright
and trade mark rights.
In respect of the damages sought for infringement of copyright, the Court found that section 24(1) of the Act was
applicable. Plaintiffs' counsel rightly conceded that whilst section 24(1A)1 provided for an option allowing for the
calculation of damages by the Plaintiff, section 24(1B) was to be read in conjunction therewith allowing for an
adjustment of the initial figure. The figure arrived at in terms of section 24(1A) was R50 000,00 in respect of each
film and was based on an agreement reached by the parties. The Court found that a value judgment was required