.
Burrell TD Burrells South African Patent and Design Law 3ed Durban LexisNexis Butterworths 1999
No cases referred to in judgment
Judgment
HURT AJA:
[1] This is an appeal against certain orders granted by Fourie J in the Cape High Court. The appeal is with his
leave. For the sake of clarity and because there are a number of parties involved, I intend to refer to them as
follows:
(a)
to Nu Metro Filmed Entertainment (Pty) Ltd (the first respondent) as "Nu Metro";
(b)
to the second, third, fourth and fifth respondents collectively as "the owners" (a reference to the fact
that they are the owners of the copyright in the films with which their application in the court below
dealt);
(c)
where I refer individually to any of the owners, I will use an abbreviation of its name, ie "Fox", "Disney",
"Warner" or "Videovision";
(d)
to all 23 appellants collectively as "the Video Group";
(e)
where I refer to the first appellant individually, I shall call it "the Franchisor".
Page 36 of [2010] 2 All SA 34 (SCA)
[2] Nu Metro trades 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 owners are wellknown producers and distributors of films in
the entertainment field, save that Videovision is not involved in the production of films, but, as a substantial
part of its business, acquires by assignment the South African copyright in respect of various films which it
distributes in this country. The Franchisor carries 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. The Video
Group includes 22 of the Franchisor's franchisees. The application in the High Court related to various films in
which the owners claimed to own the copyright. These will be referred to collectively as "the films".
[3] Nu Metro discovered that the Video Group were offering DVD recordings of the films, which they had imported
from America, for hire in their businesses. They, therefore, brought an application for relief by way of
interdicts, delivery up of infringing articles and costs, based on the contention that the Video Group's conduct
in offering these imported DVDs for hire constituted an infringement of the owners' copyright and an
infringement of the exclusive licence rights which Nu Metro claimed to hold as a result of agreements
concluded with the owners. The Video Group opposed the application, disputing the owners' claim to be the
copyright owners and Nu Metro's claim to be an exclusive licensee. They admitted that they had imported
numbers of DVD recordings of the films from the USA, but disputed the contention that their conduct
amounted to copyright infringement. Shortly before the date on which the opposed application was set down
for hearing, however, the Video Group conceded that the owners were, indeed, the owners of the copyright in
the films and tendered to submit to the interdicts sought against them and to an order directing them to pay
the owners' costs.
[4] This tender disposed of some of the issues in the opposed application, and the issues with which Fourie J was
required to deal were the following:
(a)
Nu Metro's locus standi to participate in the application, it being contended that Nu Metro had not
proved that it held valid licences from the copyright proprietors which entitled it to proceed against The
Video Group;
(b)
the owners' entitlement to an order for delivery up in terms of section 24(1)1 of the Copyright Act 98 of
1978 ("the Act");
(c)
three separate issues as to costs.
Fourie J found against the Video Group on all of these issues. It is these adverse findings that the Video
Group have sought to challenge on appeal.
Page 37 of [2010] 2 All SA 34 (SCA)
The locus standi issue
[5] The Video Group contended, both in the court below and before us, that Nu Metro had failed to prove that it
was the exclusive licensee of the owners. They also submitted that, on a proper interpretation of the licence
agreements which Nu Metro had annexed to the replying affidavit, its rights were not such as would entitle it
to restrain the dealing by the Video Group in the imported DVDs to which reference has been made. The
argument presented in support of these contentions was complicated but, in my view, futile. I do not think
that it is necessary to decide whether the licence agreements are valid or what their scope is. At the lowest
level, Nu Metro and the owners have established that Nu Metro is appointed as the only local distributor of
the films. The Video Group have acknowledged that their conduct infringes the copyright of the owners and is
accordingly unlawful. In the premises, Nu Metro 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 must accordingly fail.
The order for delivery of infringing items