Mr Video (Pty) Ltd and others v Nu Metro Filmed Entertainment (Pty) Ltd and others
[2010] 2 All SA 34 (SCA)
Division:
SUPREME COURT OF APPEAL
Date:
29 September2009
Case No:
472/08
Before:
LTC HARMS DP, CH LEWIS, S SNYDERS JJA, NV HURT AND ZL
TSHIQI AJJA
Sourced by:
A Street
Summarised by:
DPC Harris
. Editor's Summary . Case Referred to . Judgment .
[1] Civil procedure Copyright infringement Locus standi Locus standi of parties to participate in proceedings to
restrain infringement Delivery of infringing items Relief by way of order for delivery up of infringing articles Section
24(1) of the Copyright Act gives the court a discretion to order that the infringer should deliver up all infringing copies, as
defined in section 1 Special order for costs marking court's disapproval of conduct of infringing parties.
[2] Intellectual property law Copyright Alleged infringement of Alleged infringement by video distributor, in distributing
copies of films in respect of which respondents were sole distributors Where it was common cause that a party is
appointed as the only local distributor of the films being distributed, distribution by another party amounts to copyright
infringement.
[3] Intellectual property law Copyright Infringement Delivery of infringing items Copyright Act 98 of 1978 Section
24(1) of the Copyright Act gives the court a discretion to order that the infringer should deliver up all infringing copies, as
defined in section 1.
Editor's Summary
The first respondent traded in films in the theatrical (cinema) sector of the film market in South Africa and also in the
rental and retail sales sector of that market. The second, third, fourth and fifth respondents (referred to in the
judgment as "the owners") were the owners of the copyright in the films with which their application in the court
below dealt. The first appellant carried on business as a franchisor of businesses, conducted under the name "Mr
Video", for the hiring of recorded films to members of the public for home viewing, and the remaining appellants
were franchisees.
Upon discovering that the appellants were offering DVD recordings of the films which they had imported for hire in
their businesses, the first appellant brought an application for interdictory relief.
The first issue in dispute was the first respondent's locus standi to participate in the application, it being
contended that the first respondent had not proved that it held valid licences from the copyright proprietors which
entitled it to proceed against the first appellant. The second issue was the owners' entitlement to an order for
delivery up of infringing copies in terms of section 24(1) of the Copyright Act 98 of 1978. The High Court found
against the appellants on both issues, leading to the present appeal.
Held The appellants contended that the first respondent had failed to prove that it was the exclusive licensee of
the owners. They also submitted that, on a
Page 35 of [2010] 2 All SA 34 (SCA)
proper interpretation of the licence agreements, first respondent's rights were not such as would entitle it to
restrain the dealing by the first appellant in the imported DVDs. The court held that it was not necessary to decide
whether the licence agreements were valid or what their scope was. At the lowest level, the first respondent and
the owners had established that the first respondents appointed as the only local distributor of the films. The
appellants acknowledged that their conduct infringed the copyright of the owners and was accordingly unlawful. In
the premises, the first respondent was entitled, quite apart from any rights it may have as a licensee, to join in the
proceedings to interdict. The challenge to its locus standi, accordingly, failed.
The next issues related to the order for delivery of infringing items. Section 24(1) of the Copyright Act gives the
court a discretion to order that the infringer should deliver up all infringing copies. An infringing copy in relation to a
cinematograph film is defined in section 1 of the Act. The Court found the copies requested by the respondents to
fall within that definition, and again dismissed the appeal.
Notes
For Civil procedure see:
.
LAWSA Reissue (Vol 3(1), paras 1441)
.
Harms, LTC Civil Procedure in the Superior Courts Durban LexisNexis Butterworths 2005
For Intellectual property see:
.
LAWSA First reissue Vol 29