TRADE MARK: 88/10379 TriStar (s.f.) and Winged Horse Device. FILMS/ TRAILERS AND TRADE MARK INVOLVED: The
Kiss 88/10379; Look Who's Talking 88/10379; Avalon 88/10379; Look Who's Talking Too 88/10379; Another
You 88/10379; Blind Fury 88/10379; I Love You to Death 88/10379.
(vii) Eighth Plaintiff:
TRADE MARKS: 83/8922 Mickey Mouse Device; 90/0156 Touchstone; 90/0157 Walt Disney; 90/0158 Hollywood.
FILMS/TRAILERS AND TRADE MARK INVOLVED: Run 82/8922, 90/0156, 90/0157 and 90/0158; True Identity
90/0156; That Darn Cat 90/0157 and 90/0158; Billy Bathgate 90/0156; V.I. Warshawski 90/0156, 90/0157,
90/0158 and 83/8922; Pretty Woman 90/0156; Dick Tracey 83/8922, 90/0156 and 90/0157; Filofax 90/0158;
Fantasia 83/8922, 90/0156 and 90/0157; Turner and Hooch 90/0156; One Good Cop 83/8922, 90/0157 and
90/0158; The Little Mermaid 83/8922 and 90/0157; An Innocent Man 90/0156; What about Bob 90/0156; Oscar
90/0157 and 90/0158.
(viii) Ninth Plaintiff:
TRADE MARK: 85/5245 Paramount Pictures and Device. FILMS/TRAILERS AND TRADE MARK INVOLVED: Funny about
Love 85/5245; Frankie and Johnny 85/5245; Body Parts 85/5245.
(3) (a) During the course of a search, referred to in the evidence as a raid, conducted at the premises of the
second defendant in the presence of the first defendant on 11 August 1993 by one Van As, an inspector in the
South African Police Services, one Potgieter, a senior field inspector in the employ of the Motion Picture Association
of America, and another member of the South African Police Services, video cassettes containing recorded video
copies of the films and trailers referred to above together with a number of other video cassettes containing copies
of films were found in a locked walkin safe. Possession of all the said video cassettes was thereupon taken. They
were exhibit "1" at the trial.
(b) The labels on the cassettes, which depicted the names of the films contained therein, were handwritten and
some bore the word "Master".
(c) All of the copies of the films/trailers referred to earlier had been made without the authority of the relevant
copyright owner or exclusive licensee for the Republic of South Africa or any other party who could grant any
relevant rights in respect of films subject to copyright and were accordingly copies which infringed the copyright
therein.
(d) Any use by the defendants thereof in the course of business of the second defendant would have constituted
unauthorised use, as envisaged in section 44(1)(a) and (b) of the Trade Marks Act, of such trade marks as
appeared thereon or on the cassettes and accordingly an infringement of the rights held in such trade marks.
(4) (a) Certain companies were at all material times the duly appointed exclusive licensees of the respective
plaintiffs in the Republic of South Africa in respect of the said films and trailers, viz., CIC Video (Pty) Ltd for the third
and ninth plaintiffs; NuMetro Video (Pty) Ltd for the first, second, fifth and eighth plaintiffs; SterKinekor Films (Pty)
Ltd for the fourth and seventh plaintiffs.
(b) Formal notice of the institution of these proceedings was given on behalf of the plaintiffs to the said companies
as envisaged in section 24(1C) of the Copyright Act and the companies responded by intimating that they had no
objection to the proceedings and did not intend to intervene therein.
(5) A minimum royalty of R50 000,00 would have been payable by a licensee in the Republic of South Africa to the
respective copyright holders in respect of any of the films referred to earlier. The average of such royalties would
have been the sum of R70 000,00. By way of explanation it should be recorded that during the course of the trial Mr
Cullabine advised me from the Bar that the parties had agreed on the figure of R70 000,00 as being the minimum
royalty which would have been payable in respect of any of the films. It appeared during argument, however, that
there had been a misunderstanding in this regard and an agreement between the parties in the terms set out
above was recorded at that stage.
(6) On a previous occasion the defendants had, in response to a complaint and demand made on behalf of the
owner of the copyright in a film titled "One Flew over the Cuckoo's Nest" founded on the defendants' possession of
a copy thereof, paid the sum of R5 000,00 to the local representatives of the Motion Picture Association of America.
In respect of a still earlier incident, the details of which were not canvassed during the evidence, the defendants
had paid the sum of R1 500,00.
Page 591 of [1996] 1 All SA 584 (SE)
In respect of the first leg of its claim, i.e., that founded on alleged infringement of copyright, it is the allegation of
each plaintiff that, without the requisite authority and in breach of the plaintiff 's rights as copyright owner or
exclusive licensee in respect of the relevant film, the defendants engaged in:
(a) making reproductions and/or adaptations of the film or substantial parts thereof,
(b) letting or offering or exposing for hire by way of trade, directly or indirectly, reproductions or adaptations of the
films or substantial parts thereof,
(c) importing into the Republic of South Africa for a purpose other than their own private and domestic use and/or
selling, letting or by way of trade offering or exposing for sale or hire and/or distributing for the purpose of trade or
for some other purpose to an extent where the plaintiff or, where the plaintiff was the exclusive licensee, the
copyright owner was prejudicially affected, reproductions of the films or substantial parts thereof, the making of
which, to the knowledge of the defendants, constituted infringement of the copyright in the films, or would have
constituted such infringement if such manufacture had taken place in South Africa.