In respect of the second leg of its claim, i.e., that founded on alleged infringement of trade mark(s), each plaintiff
alleges that, without the requisite authority and, as envisaged in section 44(1)(a) and (b) of the Trade Marks Act, in
breach of the plaintiff 's rights in the relevant trade mark(s), the defendants used the plaintiff 's trade mark(s) in
relation to the relevant films/trailers by
(a) selling, letting or, by way of trade, offering or exposing for sale or hire the films/trailers;
(b) distributing the films/trailers for the purposes of trade.
The further allegation of each plaintiff is that it apprehends on reasonable grounds that the defendants will
continue their unlawful activities referred to above unless restrained from doing so by an order of this Court and
that it has no other remedy available.
The relief sought by each of the plaintiffs as set out during the argument of Mr Cullabine, is:
(1)
an order interdicting the defendants from infringing its rights to copyright in the relevant films;
(2)
an order interdicting the defendants from infringing its rights to its trade mark(s);
(3)
the payment of damages for infringement of copyright;
(4)
the payment of additional damages for infringement of copyright as envisaged in section 24(3) of the Copyright Act;
(5)
costs of suit.
Each summons also contained prayers for relief in the form of delivery up of all copies of the films/trailers, but in that
the plaintiffs had already secured possession of same the plaintiffs did not persist in seeking such relief.
The allegations made in the respective particulars of claim in support of the claim for additional damages referred
to above were couched thus:
"Having regard to the flagrancy of the First and Second Defendant's copyright infringement, and the benefit which has
accrued to the First and Second Defendants by reason of the infringement as a consequence of unauthorised
Page 592 of [1996] 1 All SA 584 (SE)
copying having taken place without payment of any consideration or royalties and as effective relief would not otherwise be
available to the Plaintiff, the Plaintiff has suffered additional damages within the meaning of section 24(3) of the Copyright
Act ...".
The evidence on behalf of the plaintiffs concerning or bearing on the search conducted at the premises of the
second defendant on 11 August 1993 was as follows:
One Askew, the Director of the Film Security Office of the Motion Picture Association of America in South Africa,
testified that the Association which is comprised of the nine plaintiffs, all major American film studios, which finance
it, was formed to combat what was referred to as piracy, i.e., acts done by persons in infringement of the copyright
and trade mark rights of members.
Potgieter testified that in his capacity as a senior field inspector in the employ of the Association he received
certain information from one Holtzhausen, who was then in the employ of the second defendant. Holtzhausen
further furnished him with a video tape recording (exhibit "2") of certain portions of the interior of the premises of
the second defendant. The recording was played during the trial in a television set brought into the courtroom for
that purpose. It depicted, inter alia, someone opening the walkin safe with a key, various film cassettes included
amongst which were the cassettes containing copies of the films which are the subject matter of these proceedings
in the safe, a workshop area in which were, inter alia, two video machines, one on top of the other and a cassette
holder bearing the name of a film, "Robin Hood, Prince of Thieves" on top of the video machines. Arrangements
were made for a meeting in Port Elizabeth between Potgieter, Holtzhausen and members of the Sanab branch of
the South African Police Services. Inspector Van As interviewed Holtzhausen and on the strength of information so
received obtained a search warrant authorising a search of the second defendant's premises. Potgieter, Van As and
another policeman repaired to the premises of the second defendant where Van As identified himself to the first
defendant and gave him a copy of the warrant. He, Potgieter, also identified himself to the first defendant.
According to Potgieter the warrant authorised a search for material which infringed copyright in films and that the
first defendant was so advised. The latter had no objection to the search being carried out and in fact cooperated
fully. Although Potgieter knew, because of what Holtzhausen had told him, that the tapes that he was looking for
were in the safe, in order to protect the identity of his informant, the search was commenced behind the counter,
thereafter through the stalls and eventually in the safe, which the first defendant unlocked at their request. In the
safe, amongst other items, the video cassettes comprising exhibit "1", which included the cassettes containing
copies of the films that are the subject matter of these proceedings, were found and possession thereof was taken.
The tapes were on the face of it illegal ones and Potgieter sought an explanation from the first defendant for them
whereupon the first defendant stated that he had made the tapes to use as his "masters" because the tapes that
were his stockintrade suffered a "lot of damages in the market place" and instead of buying new tapes he would
make copies from the "masters" to replace the damaged tapes. At no stage did the first defendant proffer the
explanation that he had acquired the tapes from someone in George and a proposition to that effect by Mr Vlok,
who appeared for the defendants, was rejected. The handwritten labels on the tapes were different from the labels
on tapes marketed to the public. The scenes of
Page 593 of [1996] 1 All SA 584 (SE)
the work area shown on exhibit "2" indicated to him that copying of tapes was undertaken there. He denied the
proposition put to him under crossexamination that while the first defendant did refer to "masters" the reference