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South Africa Readings
  • 1 South African Copyright Act No. 98 of 1978

  • 2 South African Music Rights Organisation Ltd v Trust Butchers (Pty) Ltd 1978 (1) SA 1052

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    SOUTH AFRICAN MUSIC RIGHTS ORGANISATION LTD v TRUST BUTCHERS (PTY) LTD 1978 (1) SA 1052 (E)

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    Citation

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    1978 (1) SA 1052 (E) 

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    Court

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    Eastern Cape Division

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    Judge

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    Addleson J

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    Heard

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    May 23, 1977; May 24, 1977

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    Judgment

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    June 30, 1977

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    Annotations

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    Link to Case Annotations

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    Judgment

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    ADDLESON, J.:

    19

    The plaintiff claims an interdict and damages in the sum of R1 000 against the defendant for alleged breach of copyright.

    20

    The defendant's plea put practically all the plaintiff's material allegations in issue but the disputes were substantially curtailed by an agreement reached at the pre-trial conference and recorded in the minute handed in under Rule 37. As a result the following facts are not in dispute:

    21

        (a) The plaintiff is a non-profit company, limited by guarantee. It holds, by assignment, the copyright "of the majority of original musical works written and published in South Africa since 1962". The copyright owned by the plaintiff includes the right to perform those musical works in public and to authorise others to perform them and to collect royalties for such performance. The plaintiff also holds, by assignment from the Performing Rights Society of England, the copyright in a very large number of similar works written and published in the United Kingdom, North America, Europe and South Africa.

    22

       (b) The copyright referred to is that which exists under the Copyright Act, 63 of 1965, to which reference will later be made; and as a result the plaintiff at all material times had the exclusive right in South Africa to authorise public performances, and to collect royalties for such performances, of the musical works in which it held the copyright. Such authorisation is permitted by the plaintiff by way of licence to, or the payment of royalties by, the persons so authorised.

    23

        (c) The defendant has since 1968 conducted the business of a butchery in Mount Road, Port Elizabeth, to which butchery (which is a retail self-service institution) the public have access.

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       (d) For a period which is in dispute the defendant has had a radio receiver on the premises and has from time to time operated that receiver to receive broadcasts from the South African Broadcasting Corporation. During the time when those broadcasts were being received, including 12 and 21 March 1975, a number of musical (to use that word in its most generous sense) works were "played" by the defendant in its butchery; that is, the works were emitted from the loudspeaker of the radio in the butchery. The names of these works are set out in para. 10 of the plaintiff's particulars of claim and are works in which the plaintiff holds the copyright.

    25

     It is common cause that the defendant was not licensed by the plaintiff to perform in public any of the works in question.

    26

    The plaintiff contends that the defendant has caused those works to be performed in public "since at least November 1972... to date hereof" and has also caused other works in which the plaintiff holds the copyright to be performed and has thereby infringed the plaintiff's rights in such works; and that it believes that the defendant will continue to infringe those rights. The plaintiff therefore claims an order interdicting the defendant from performing or permitting the performance in public, without the plaintiff's authorisation, of the musical works in which the plaintiff holds the copyright. The plaintiff also claims damages in the sum of R1 000 for the defendant's past infringement of copyright, the details of which claim I shall discuss later.

    27

    In terms of the Rule 37 minute "the only issues between the parties for determination" by this Court are said to be:

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       "(ii) whether the performance of the musical works by the defendant as alleged by the plaintiff was public";

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    and

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      "(ii) whether the plaintiff has established damages in the sum claimed."

    31

    However, since the defendant has also disputed the plaintiff's right to an interdict, that claim also has to be determined.

    32

    The first issue really involves two questions of fact. Firstly, was the radio on the defendant's premises played sufficiently loudly to be heard  G by members of defendant's staff and customers in the shop; or was it played so softly that it could only be heard by the defendant's managing director, Mr. Coleske and his wife in their office? In the former event, it was conceded by the defendant that this would constitute the "public" performance of the works in question; that is indeed clear from the discussion of the meaning of "public performance" in Copyright Law by Copeling at pp. 76 - 77, and Copinger and Skone James on Copyright, 10th ed. at pp. 198 - 200, and see also The Performing Rights Society v Rangers F.C. Supporters Club and Others, 1975 R.P.C. 626 at pp. 635 et seq.

    33

    The first question, whether the performance was public, seems to me to present no difficulty of decision and does not require extensive reference to the evidence. In fact, Mr. Rossouw for the defendant, in the course of his argument, did not attempt to attack the substance of the plaintiff's evidence in this regard - and in my view, wisely so. There is clear and acceptable evidence from Mr. Bell, an inspector employed by the plaintiff, and his assistant, Mr. Chauke, that on 21 October 1972, 13 February 1975, 12 March 1975 and 31 March 1975 they visited the defendant's premises and heard musical works playing in the butchery - and indeed, that the music was audible from the pavement outside; that they saw a radio connected to two extension loudspeakers on either side of the store from which the music was emanating and that it was clearly audible to staff and customers in the butchery. On 12 and 21 March, Mr. Bell made arrangements to tape-record the same music as was being played in the butchery (excluding a gramophone record which was at one stage played on a record player there) and established that over a period of several hours the defendant caused to be publicly performed, as part of a programme being broadcast on the radio, a number of works in which the plaintiff holds the copyright. The names of these works are recorded on Mr. Bell's reports, exhs. "D" and "E".

    34

    As far as this part of the case is concerned, the evidence of Bell and Chauke was not seriously or effectively attacked in cross-examination. While I am aware that they are employees of the plaintiff and might therefore be inclined to favour and to attempt to re-inforce the plaintiff's case, I can find no basis for doubting their evidence. By contrast the evidence for the defendant on this issue was singularly tentative and unimpressive. In effect Mr. Coleske admitted that between October 1972 and August 1975 (when the summons in this case was served on him) the radio with its two loudspeakers was played in a fairly central and entirely open position in the butchery. Although he contended that the loudspeakers were next to each other and not on opposite walls; and that the quality of the radio reception was not always good (when machinery was being used in the butchery) I prefer and accept the evidence of Bell and Chauke, whose demeanour and credibility were superior to that of Coleske. The other witness for the defendant, an employee named Coetzee, was most unsatisfactory and unconvincing. He was thoroughly ill at ease in the witness-box and hesitant and vague in his answers and I feel that I can place no reliance whatsoever on his evidence. In addition, when Mr. Bell visited Mr. Coleske, the latter did not deny that the music was clearly audible in the butchery. Similarly, a number of letters to the defendant between 1 November 1972 and 4 January 1973, and again between 21 February 1975 and 23 June 1975, specifically alleged that the defendant was "publicly performing copyright music in your store"; and the defendant's only reaction throughout that period was a letter of 9 January 1973 in which it was stated that

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       "the radio playing in the above business is merely a radio, no tapes, records or any other compositions are attached or played. The radio is for my own use and not for public use."

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    In the light of the evidence, the statement in the last sentence is clearly not correct and the defendant's attitude in general seems to me to support the evidence for the plaintiff that the defendant had created facilities in its butchery whereby music was publicly performed, in that the music received on the radio was clearly audible to staff and customers on the premises.

    37

    The second factual question is the period over which this public performance took place. Mr. Coleske said that he acquired control of the defendant in 1968 and at that time had a small portable radio in his office, which he played for his own benefit and for that of his wife, mainly in order to hear the news. In 1972 that radio was stolen in a burglary and he then acquired the present apparatus - a combination of radio and record-player with the two separate loudspeakers. Because reception was poor in the centre of the shop, he placed the new radio near the front door, where it was seen by Bell and Chauke. When he received the plaintiff's summons in August 1975, he caused the radio to be disconnected and to be stored with its loudspeakers on top of the office partition - as it appears in the transparencies, exhs. F1 and F2, which were taken by the plaintiff in December 1976. He admitted that, approximately one week ago, Bell saw the radio and loudspeakers in the same position as they had been during his previous visits; but he explained that they had recently  C been placed in that position in case they were required for inspection for the purposes of this case.

    38

    There is evidence that the portable radio remained in the defendant's office and that the position of the office itself has been moved from time to time since 1968. Coleske himself is hard of hearing; the office consisted of partitions without a "ceiling" and with a swing door. Coleske in fact did not seriously deny that radio could have been heard by staff and customers and such denials as he made were very half-hearted and unimpressive. It seems clear to me that his attitude, all along, was that he possessed a radio listener's licence and was entitled to play his radio in the butchery; and presumably he was not even conscious up to 1972 that he might be infringing copyright in doing so. I have already indicated that I can attach no value whatsoever to the evidence of Coetzee. While, therefore, there is no evidence for the plaintiff as to the date when these public performances commenced, it seems to me that on the evidence of Coleske, his attitude towards his right to play his radio as he wished and on the probabilities, I am entitled to find that the public performance of music over the radio commenced in 1968 and took place continuously thereafter.

    39

    As to the date on which the performances ceased, however, I can find no basis for rejecting Coleske's evidence (supported, for what it is worth, by Coetzee) that he disconnected the radio when he received the summons in this case. It seems probable that he would do so, at least until the action were determined, when faced with a claim for an interdict, damages and Supreme Court costs. Moreover there is some corroboration for his evidence in the fact that the radio was apparently not in use when the transparencies, Fl and F2, were taken in December 1976. While I am sceptical of his explanation for recently restoring it to its previous position, I cannot reject that explanation on the evidence before me.

    40

     I find therefore that the defendant regularly caused public performances, to take place, from 1968 to August 1975, of musical works broadcast by the South African Broadcasting Corporation and received by the radios, then in the butchery. Since it is not disputed that the plaintiff holds the copyright in approximately 90 per cent of the works in which copyright subsists, it follows on a balance of probabilities that there was an infringement of the plaintiff's copyright in each of the years from 1968 - 1975 inclusive. There is no reason to believe - nor was it suggested by the defendant - that music was not "played" on the radio in the defendant's premises in any of those years, or that in any particular year the "playing" of the radio was so limited as to exclude the probability that there was a breach of the plaintiff's copyright in any of those years, of the works in which it held the copyright.

    41

    Since it is common cause that the defendant was not licensed by the plaintiff for such public performances, the defendant's breach of copyright entitled the plaintiff to damages.

    42

    Sec. 18 of the Copyright Act provides as follows:

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       "(1) Subject to the provisions of this Act, infringements of copyright shall be actionable at the suit of the owner of the copyright, and in any action for such an infringement all such relief by way of damages, interdict, accounts or otherwise shall be available to the plaintiff as is available in any corresponding proceedings in respect of infringements of other proprietary rights.

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       (2) Where in an action under this section an infringement of copyright is proved or admitted, and the court having regard (in addition to all other material considerations) to:

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       (a)   the flagrancy of the infringement; and

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       (b)   any benefit shown to have accrued to the defendant by reason of the infringement,

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       is satisfied that effective relief would not otherwise be available to  D the plaintiff, the court shall in assessing damages for the infringement have power to award such additional damages as the court may consider appropriate in the circumstances."

    48

    The actual damages suffered by the plaintiff would include the licence fees which the defendant should have paid for the years during which the copyright was infringed. See Performing Rights Society v Berman and Another1966 (2) SA 355 (SR) at p. 356. The evidence of Mr. Roos, the secretary of the plaintiff, explains the basis on which such licence fees are calculated, namely on the area of the premises in which the performance takes place and the number of staff there employed. On the information which was finally disclosed by the defendant at the trial and  F the calculations done by Mr. Roos on exh. "T", the total licence fees, together with interest at 10 per cent, which the plaintiff should have received for the years 1968 - 1975 inclusive, amount to R220,13 and this sum must therefore be awarded to the plaintiff.

    49

    In addition, Mr. MacArthur, for the plaintiff, has asked that damages include the costs incurred by the plaintiff in establishing the breach of copyright. He contended that this would at least include a pro rata share of the cost of investigations by Bell and Chauke. Mr. Roos estimated that these could conservatively be calculated as follows, taking into account the daily cost of such investigations:

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    Two visits of one hour each in 1972      R15

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    Two visits of one hour each in 1975   R20

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    Two full days of taping the performances in the defendant's

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    premises in March 1975 and checking the information and

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    writing the necessary reports   R160

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       ______

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       Total   R195

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       ______

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    Mr. Roos emphasised that these costs excluded a pro rata share of many related costs, such as administrative expenses, correspondence etc. and he contended that R195 was the minimum amount expended by the plaintiff in establishing the defendant's infringement of copyright.

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    The defendant was not in a position to dispute the figures quoted by Mr. Roos but Mr. Rossouw contended that these costs were not damages but were part of the costs of preparing for this action and should therefore be recoverable, if at all, as part of the costs of a successful action. Although he did not quote any authority for this proposition, he equated the investigations of Bell and Chauke with the cost of a medical examination intended to qualify a doctor to give evidence on damages in an action arising out of a motor accident.

    60

    Although I regret that counsel on both sides did not give me more assistance on the question of damages, I do not think that Mr. Rossouw's analogy is a good one. It is part of the plaintiff's functions to collect licence fees in respect of the performance of works of which it holds the copyright: and, in order to protect the artists to whom royalties are due, the plaintiff must necessarily investigate whether infringements of the nature with which this case is concerned are occurring. It seems to me that, if a person is persistently infringing such rights, he cannot complain if the plaintiff claims from him the reasonable and necessary costs of establishing that such an infringement has occurred. The position would in my view be different in regard to investigations which take place after a clear infringement has been detected and which are then done solely for the purpose of proving the infringement in Court. In the present case, however, the plaintiff's ability to enforce and protect its copyright depended on discovery that such copyright was being infringed and that could only be done by the investigations in question. Moreover it must be borne in mind that the defendant failed to respond satisfactorily to written complaints that he was infringing the copyright. The plaintiff was therefore obliged to incur expenses, not in proving the infringement, but establishing whether there was such an infringement in order to take steps to protect its rights. Such expenses do not seem to me to be too remote from the defendant's wrongful conduct to disqualify them from being regarded as damages flowing from that conduct. The expenses of Bell and Chauke itemised above seem to me to have been part of the cost of establishing that the defendant was causing public performances of the works in question and that such performances were regularly taking place. The last such visit in respect of which these expenses are claimed was on 21 March 1975 and it seems to me that up to that stage those expenses were reasonably incurred by the plaintiff in determining whether an infringement of copyright was taking place, the extent of such infringement and whether action could and should be brought to protect the copyright. I am therefore of the view that they constitute damages flowing directly from the defendant's infringement and that the amount of R195 should be awarded to the plaintiff.

    61

    Mr. MacArthur also asked that I award an additional sum under sec. 18 (3) of the Act as "exemplary" or "penal' damages. Such damages could not be awarded under sec. 18 (3) (b), since it has not been "shown" that any benefit has accrued to the defendant, by reason of the infringement, on which such damages could be calculated. It was suggested that an award could be made under sec. 18 (3) (a) having regard to "the flagrancy of the infringement". I have however several difficulties with that contention.

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    Firstly, such additional damages may only be awarded if the Court is satisfied "that effective relief would not otherwise be available to the plaintiff". In the present case, I propose to award the plaintiff the actual pecuniary loss it has suffered and an interdict, which, it seems to me, should constitute effective relief to the plaintiff. Secondly, no yardstick has been suggested by which such additional damages can be assessed; and, although it is suggested in Copeling, op. cit. at p. 153, that the amount to be awarded is entirely in the Court's discretion, I cannot simply pluck a figure out of the air without some basis on which to assess it. None of the cases (all of which are English authorities) to which I was referred seem to me to be in pari materia. Thirdly, even though the defendant's conduct is open to criticism (as I shall indicate later when dealing with costs), it does not seem to me to be comparable to the type of conduct dealt with in the English cases, or discussed in Copeling and Copinger and Skone-James (at p. 217), or of a "flagrancy" deserving of a special award of exemplary damages. Mr. MacArthur said that the matter was res nova in South Africa and in my view it is not an appropriate case for the award of damages beyond the normal ambit of compensation for pecuniary loss.

    63

    In the circumstances it seems to me that the plaintiff's damages must be limited to the two amounts mentioned above, namely R220,13 and R195, a total of R415,13.

    64

    Although the granting of an interdict against the defendant was not one of the matters put in dispute in the Rule 37 minute, Mr. Rossouw argued that I should not grant this relief because the evidence for the defendant (which the plaintiff cannot contest) is that he ceased to infringe the plaintiff's copyright in August 1975. If that is the case I do not see how (subject to the question of costs) he can in any way be prejudiced by the granting of the interdict which the plaintiff seeks. This was the view taken in Performing Rights Society v Berman and Another, supra at pp. 357 - 8. In that case, as here, the defendant had given no undertaking not to repeat the infringement and there is no guarantee that he will not repeat such infringement in the future, unless he is prevented from doing so. His past conduct, his contemptuous disregard for the plaintiff's letters, warnings and requests that he pay a licence fee, ("ek het dit as belaglik beskou") his specious reliance on the fact that he held a radio listener's licence; the fact that he only ceased his infringements when served with a summons; and the fact that he has restored the radio to its former place (for reasons of which I am somewhat sceptical) do not inspire confidence that he will not in the future resume his infringement of the plaintiff's copyright. Up to three days before trial he was persisting in his denial of the plaintiff's rights and his denial that he had breached them. It seems to me therefore that the plaintiff has established the requisites for the granting of an interdict and that it should be granted against the defendant.

    65

    Finally, as regards costs, I am of the view that, despite the fact that the damages awarded are only some R415 and that the matter fell within the jurisdiction of a magistrate's court, this is a proper case to award the plaintiff costs on the Supreme Court scale. My reasons are briefly as follows:

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       (a)   The defendant pleaded a complete denial of all the plaintiff's allegations, including the plaintiff's copyright and denied anyinfringement of such rights. All the material facts were in dispute until three days before the trial.

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       (b)   Apart from its letter of 9 January 1973 the defendant did not respond in any way to the letters from the plaintiff. In particular, it made no rebuttal of the basis on which the plaintiff calculated the licence fees due, nor did it give any information as to how long the performance of the works had been taking place. The plaintiff therefore had no way of accurately assessing the damages which might be awarded to it.

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      (c)   The defendant at no time, even after issue of summons, placed on record that it had ceased allowing the public performance of the copyright works nor did it acknowledge the plaintiff's right to a licence fee if copyright works were being publicly performed; nor did it undertake, if it were breaching such copyright, to cease to do so.

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       (d)   Up to three days before trial, therefore, the plaintiff had to come to Court prepared to prove every material allegation in its particulars of claim. These were not simple issues at that stage and it does not seem to me to have been unreasonable to have decided to proceed in the Supreme Court to establish them. The position would have been quite different if the issues had been limited to those on which the trial eventually proceeded.

    70

    For the above reasons it seems to me to be proper that the plaintiff should recover its costs on the Supreme Court scale. I therefore order that:

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    1. The defendant is interdicted and restrained from performing in public  or causing or authorising or permitting the performance in public of, without the plaintiff's authorisation or consent, any musical work, the performing rights of which are owned by the plaintiff.
    2. The defendant pay the plaintiff damages in the sum of R415,13.
    3. The defendant pay the costs of this action.
    72

    Plaintiff's Attorneys: Espin & Espin. Defendant's Attorneys: W. J. Olckers & Son.

    73

     

  • 3 Metro Goldwyn-Mayer Inc & other v Ackerman and another 558 JOC (SEC)

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    --------------------------------------------------------------------------------------------------------------------------------

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    METRO GOLDWYN-MAYER INC AND OTHERS v ACKERMAN AND OTHERS

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    SOUTH-EASTERN CAPE LOCAL DIVISION

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    KROON J

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    --------------------------------------------------------------------------------------------------------------------------------

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    JUDGMENT

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    Each of the nine plaintiffs is a legal persona, either a corporation or a limited partnership, duly incorporated under the laws of the State of Delaware, United States of America and each conducts business as a producer and distributor of cinematograph films.

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    The first defendant is a businessman and the sole member and manager of the second defendant. The second defendant is a close corporation which conducts business in Port Elizabeth, under the style of Film World, as a distributor by way of sale or hire, to members of the public, of video tape copies of cinematograph films.

    9

    The nine plaintiffs each instituted a separate action against the defendants for certain relief the cause of action relied upon in each case being an alleged infringement of copyright and, where applicable, an alleged unauthorised use of a trade mark. The allegations related to an alleged illegal use by the defendants of certain cinematograph films. After the close of pleadings an order consolidating the nine actions was granted by this court.

    10

    When the hearing commenced I was advised by Mr Cullabine, who appeared for the plaintiffs, that the sixth plaintiff, Buena Vista Pictures Distribution Incorporated, was not proceeding with its claims against the defendants. A collective reference hereinafter to the plaintiffs will accordingly be a reference to the remaining eight plaintiffs. I was further advised that the latter plaintiffs were not proceeding with their claims insofar as same related to a large number of the cinematograph films/trailers referred to in the pleadings and were restricting their claims to allegations in respect of certain specified films/trailers details of which will appear below.

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    The following is common cause or not in dispute:

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    (1) At all material times

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    (a) valid copyright subsisted in the Republic of South Africa in terms of the provisions of the Copyright Act (no 98 of 1978) in the cinematograph films the titles of which appear under the headings of `Films' and `Trailers' in the schedule set out below;

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    (b) the plaintiffs were respectively the copyright owners or exclusive licensees, within the meaning of the Copyright Act, of those films the titles of which appear below the name of each plaintiff in the schedule;

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    (c) the films were duly registered in terms of the provisions of the Registration of Copyright in Cinematograph Films Act (no 62 of 1977) in the name of the plaintiff in question either as copyright owner or exclusive licensee;

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    (d)  each of the plaintiffs was accordingly vested with the exclusive right in respect of the applicable films and trailers to do or to authorise in the Republic of South Africa the acts envisaged in section 8 of the Copyright Act.

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    (e)  the trailers reflected in the schedule were substantial parts of the films in question.

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    (f) the defendants were aware that copyright subsisted in the said films.

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    SCHEDULE

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    [...]

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    (2) At all material times

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    (a)  the respective plaintiffs reflected in the schedule set out below were the proprietors in the Republic of South Africa of the registered trade marks listed below the name of the applicable plaintiff;

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    (b)  the said trade marks were valid, subsisting and of full force and effect in the Republic of South Africa and the provisions of section 60 of the Trade Marks Act (no 62 of 1963) were applicable thereto;

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    (c)  the respective trade marks were registered in respect of, inter alia, cinematograph films and recorded video tapes;

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    (d) The respective trade marks appeared on the applicable films/trailers reflected in the said schedule and the video cassettes in which they were contained (all such films/trailers being included in the schedule set out earlier in this judgment).

    26

    SCHEDULE
    [...]

    27

    (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 walk-in safe. Possession of all the said video cassettes was thereupon taken. They were exhibit `1' at the trial.

    28

    (b)  The labels on the cassettes, which depicted the names of the films contained therein, were handwritten and some bore the word `Master'.

    29

    (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.

    30

    (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.

    31

    (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; Nu-Metro Video (Pty) Ltd for the first, second, fifth and eighth plaintiffs; Ster-Kinekor Films (Pty) Ltd for the fourth and seventh plaintiffs.

    32

    (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.

    33

    (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.

    34

    (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.

    35

    In respect of the first leg of its claim, ie 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 films, the defendants engaged in:

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    (a) making reproductions and/or adaptations of the films or substantial parts thereof,

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    (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,

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    (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.

    39

    In respect of the second leg of its claim, ie 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

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    (a) selling, letting or, by way of trade, offering or exposing for sale or hire the films/trailers;

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    (b) distributing the films/trailers for the purposes of trade.

    42

    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.

    43

    The relief sought by each of the plaintiffs as set out during the argument of Mr Cullabine, is:

    44

    (1)  an order interdicting the defendants from infringing its rights to copyright in the relevant films;

    45

    (2)  an order interdicting the defendants from infringing its rights to its trade mark(s);

    46

    (3)  the payment of damages for infringement of copyright;

    47

    (4) the payment of additional damages for infringement of copyright as envisaged in section 24(3) of the Copyright Act;

    48

    (5)costs of suit.

    49

    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.

    50

    The allegations made in the respective particulars of claim in support of the claim for additional damages referred to above were couched thus:

    51

    '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 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 ...'

    52

    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:

    53

    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, ie acts done by persons in infringement of the copyright and trade mark rights of members.

    54

    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 walk-in 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 the first defendant was so advised. The latter had no objection to the search being carried out and in fact co-operated 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 stock-in-trade 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 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 cross-examination that while the first defendant did refer to `masters' the reference was to his own collection of classical films and was not a reference to the subject tapes.

    55

    Inspector van As confirmed the correctness of a statement which he had made on 30 August 1993 concerning the incident (exhibit `H'). The essence thereof was that on 11 August 1993 his informant—ie Holtzhausen—advised him that the first defendant was in possession of pornographic material stored at the premises of the second defendant. On the strength of that information he secured a search warrant and he, Potgieter and another policeman proceeded to the premises in question. The purpose of his visit was explained to the first defendant who was also favoured with a copy of the warrant. In what he referred to as the storeroom—the reference clearly being to the walk-in safe—a large number of video cassettes was found. Inspection thereof revealed no pornographic material. Potgieter made the observation that the cassettes had been `oorgetape' and that an infraction of the Copyright Act had taken place and he enquired from the first defendant if he hired the cassettes out to the public to which the first defendant replied in the affirmative. The cassettes were seized and the first defendant was advised that a case docket relating to a charge under the Copyright Act would be opened against him. Subsequently the first defendant's attorneys submitted to him a statement by the first defendant (exhibit `I'). Under cross-examination van As affirmed that he had gone to the defendants' premises to search for pornographic material, but that Potgieter had also identified himself to the first defendant and stated that he, too, wished to carry out an inspection. Van As also rejected the proposition that when the first defendant used the word `masters' the reference was not to exhibit `1' but to other tapes in the safe. He similarly rejected the proposition that the first defendant had proffered the explanation that he had obtained exhibit `1' from one Sonnen of George. He was unable to recall whether the first defendant had made mention of tapes in his stock-in-trade being damaged, but he added that he was not throughout in the immediate company of Potgieter and the first defendant.

    56

    The first defendant's version of what occurred on the occasion in question and his explanation in respect of the subject cassettes will be set out and discussed presently. At this stage it may be recorded that, as already indicated earlier, he did not dispute that the cassettes containing copies of the films which are the subject of these proceedings were found in the possession of himself and the second defendant and were amongst those found in the safe in the premises.

    57

    Accordingly, section 26(10) of the Copyright Act came into play. It provides as follows:

    58

    `In any proceedings by virtue of this Chapter with regard to the alleged infringement of the copyright in a cinematograph film, a sound recording or a computer program, it shall be presumed, until the contrary is proved, that any person trading in the selling, letting or distribution of copies of any of the said works, and who was found in possession of a copy of such works, sold or let for hire or by way of trade offered or exposed for sale or hire such copy.'

    59

    The evidence offered by the defendants in rebuttal of the presumption provided for in the section was the following:

    60

    The first defendant stated that he was advised by a Mrs van den Berg, also a video shop owner in Port Elizabeth, that the owners of a video shop in George, Mr and Mrs Sonnen, were desirous of disposing of a quantity of video tape cassettes. Initially the asking price was R5 000,00 which was too high for the first defendant. The price was subsequently reduced to R1 500,00. Being under the impression that the items constituted legal stock-in-trade of the Sonnens albeit he did not ascertain the titles of the films, he contacted Mrs Sonnen telephonically and agreement was reached that he would purchase the tapes, 300 in number, for R1 500,00 representing a price of R5,00 per tape. At her request he deposited the sum of R1 500,00 into her bank account at Trust Bank. The boxes containing the tapes were delivered in his absence and his staff, as was their custom, opened same and commenced putting the firm's labels on the tapes. He arrived while this exercise was in progress, but, on observing straightaway that the tapes were illegal copies of films, locked them away in the safe. What moved him to that conclusion was the very unusual circumstance that a number of the tapes comprised copies of two films and the handwritten labels on the cassettes. He explained that he would have put the tapes, which were in good physical condition to a legitimate use, ie by wiping them clean and then using them for the purpose of making copies of home or other private video films for customers. Wiping the tapes clean would entail running them through a video machine with the `play' and `record' buttons depressed, a process taking three hours for each tape. He received the tapes during June/July 1993 and by the time he deposited the purchase price in the relevant account the Sonnens had left for overseas. It was therefore impossible for him to cancel the contract and he had in any event acquired them for a cheap price even for blank tapes. The films on the tapes were not of the kind favoured by his clientele who came predominantly from the Black section of the community and who preferred `action' or `karate' films. He was the only one who had a key to the safe and had been shocked to observe on the video film, exhibit `2', someone using another key to open the safe. After the events in question he had come across another key to the safe behind a television set in the premises which key had clearly been acquired by nefarious means. His explanation for the two video machines which were shown in the film was that the business engaged extensively in what he referred to as `dubbing', ie legitimately making copies of home or private video films for customers who requested same. He dealt at some length with his relationship with Holtzhausen and the character of the latter who had since disappeared—but it is unnecessary for purposes of this judgment to refer thereto. As to the events on 11 August 1993 he confirmed that when van As, Potgieter and the other policeman arrived van As introduced himself and explained that the purpose of their visit was to search for pornographic material. He registered no objection. At their request he unlocked the safe. It was after the films comprising exhibit `1' were discovered that Potgieter introduced himself as a representative of the Motion Picture Association of America and advised him that the cassettes in question were being confiscated. He, the first defendant, furnished the boxes into which the films were packed. He did state to Potgieter that the tapes in the safe were his `masters', but, so he explained, the reference was not to the tapes which had been confiscated but to his private collection of old classical films which were also in the safe and which he thought were also going to be confiscated. He stamped the evidence of Potgieter and van As as to the explanations he allegedly gave as blatant lies. He did not explain the origin of the confiscated tapes to Potgieter, a statement he confirmed when his attorney repeated the relevant question. He later added that he did not have to volunteer that information—meaning presumably that no explanation was sought from him—and intimated that in any event he would not have been believed. Moreover, his attorneys had advised him not to make any statements. He knew that Potgieter wished to check if the tapes were `pirate' copies. He added that he already had legitimate copies of approximately 90% of the confiscated tapes amongst his stock-in-trade and, with reference to his earlier evidence that his clientele was largely uninterested in such merchandise, explained the presence of such stock by pointing to the fact that when purchasing new stock video shop owners are obliged to accept a package which includes such unwanted material, referred to as `fillers'. The tapes were not available for hire out to the public or loan to his friends. Hiring out thereof would have been difficult as the tapes had not been numbered or catalogued and would, by reason of the condition of the tapes, have damaged his reputation. He confirmed that exhibit `I' was a statement made by him in consultation with his attorneys and submitted by them to the police. It contained the details of his defence. He conceded that some of the tapes confiscated had been retrieved from the work area in his premises in regard to which he said that Holtzhausen must have duplicated the safe key and removed some of the tapes to the work area and then video- taped the scene so as to create the impression that duplicating of the tapes was being undertaken.

    61

    Mrs van den Berg confirmed that the Sonnens, who were friends of hers, had contacted her sometime after May 1993 offering video tapes for sale. Their initial asking price was R5 000,00 and the number of tapes involved was 150, a figure of which she was sure. She herself was not interested in acquiring the tapes, but told the Sonnens that she would make enquiries from other video shop owners. One of those approached by her was the first defendant. He balked at the price of R5 000,00. She heard subsequently from the first defendant that he had in fact purchased the tapes from the Sonnens for R1 500,00. The conversation between them on that occasion also canvassed the fact that the tapes had only cost R5,00 each and that the defendant could put them to good use as blank tapes. She had given his telephone number to the Sonnens. She expressed some disbelief at the suggestion that the defendants would have wanted to trade in `fillers', the reference being to the confiscated tapes.

    62

    One Pienaar testified that while he was studying at the University of Port Elizabeth he engaged in part-time shift employment with the defendants during the period 1988 to about May 1994. Since approximately 1990 he had gone out of town once a week to sell videos on behalf of the business. He had never seen exhibit `1' on the premises and as far as he was aware the defendants had never traded therein or in any other illegal material. Part of his duties consisted of making copies of private films for customers. He confirmed that the practice in the business was for staff to open consignments of stock, label the cassettes and list them alphabetically and numerically. He conceded that in the nature of things there had been many times when the first defendant was in the shop and he was absent. The safe did contain spare copies of films purchased second hand to replace copies in stock which became damaged. Such replacements would be done on the instructions of the first defendant who was the only one who had a key to the safe.

    63

    It was the submission of Mr Cullabine that on a proper assessment of the evidence in its entirety the defendant had failed to discharge the onus imposed on them in terms of section 26(10) of the Copyright Act. Indeed, he argued that even if the plaintiffs were not assisted by any presumption they had nevertheless succeeded in establishing that the defendants had, in breach of the copyright of the plaintiffs, traded illegally in the films in question.

    64

    On a conspectus of all the evidence I hold that these submissions must be upheld. My reasons for that conclusion are the following:

    65

    The evidence of Pienaar did not take the case any further and specifically it did not and could not exclude that the defendants dealt illegally with the films in question. Apart therefrom that it need hardly be said that good reasons existed why such activities would not have been undertaken in his presence, on his own showing he was frequently absent from the premises and he could naturally not comment on what occurred during such absences.

    66

    Mrs van den Berg was a witness who proved to be voluble in the extreme. That appeared to be no more than a personality trait, however, and I do not consider that her credibility was affected thereby. Her evidence did offer support for the defendants on the issue of the origin of the offending tapes, viz to the extent that she testified that she was approached by the Sonnens, that she corroborated the first defendant's testimony that she passed on to him the information concerning the tapes which were for sale and stated that she gave the defendants' telephone number to the Sonnens and that she subsequently heard from the first defendant that he had in fact acquired the Sonnen tapes. She was, however, unable of her own knowledge to confirm same. It is true that she stated that she was sure that the Sonnens wished to dispose of 150 tapes whereas the first defendant said that he purchased 300 tapes from them. It cannot be excluded, however, that the extent of the merx could have been changed in the negotiations which the first defendant alleges he had with the Sonnens.

    67

    One other aspect of Mrs van den Berg's testimony requires consideration. Her expressed disbelief in regard to the likelihood of the defendants trading in copies of the offending films on the grounds of the latter being in the nature of `fillers' did not stand up to scrutiny and may have been an indication of a partiality on her part in favour of the defendants. She herself was constrained under cross-examination to concede that some ten of the films, the titles of which were put to her, were in fact not `fillers', but `top' films. On the other hand she indicated that three of these films were old and that another had not been a success in South Africa and she questioned why anyone would want to trade in pirate copies thereof. The comment may be made that the mere fact that a `top' film was somewhat dated would not mean that there would not be a sufficient market for it.

    68

    The first aspect of the first defendant's evidence to be considered is his claim as to the origin of the offending tapes.

    69

    Much was said by Mr Cullabine in criticism of the first defendant in this regard. The criticism was not misplaced. As set out earlier, it was the first defendant's case in this court that he took delivery of the tapes during June/July 1993, ie approximately one to two months prior to the visit of van As and Potgieter to his premises. However, in exhibit `I', the statement made by the first defendant for submission to the police, he said that he had acquired the tapes approximately one year prior to the incident. That, he said, was a mistake. The difference between one or two months and approximately one year is not without importance—because a much longer period would have elapsed without his attending to wiping any of the tapes clean—and it is difficult to understand how the mistake could have occurred even if the statement was signed sometime in 1994. He conceded that his attorney had told him that it was a serious matter and that he should be careful in what he said. When asked if he had properly checked the statement before signing it he said that if he was at the time `in a state' and did not trust the attorney and was about to `leave' him he may not have checked the statement thoroughly. At best the statement was a non sequitur. If he did entertain doubts as to the attorney's integrity or competence all the more reason existed to check the contents of the statement with care before he allowed it to be submitted to the police. It may be noted further that a handwritten correction in the statement was initialled by the first defendant. In his various pleas the following statement appeared:

    70

    `Gemelde bande was teen R5,00 per band aangekoop en was V erweerders bona fide en redelik onder die indruk ten tye van die aankope, welke transaksie telefonies geskied het, dat gemelde bande blanko bande daar sou stel. Verweerders se bedoeling was om gemelde bande as blanko bande te verkoop. By aflewering het Verweerderes vasgestel dat gemelde bande egter bestaan uit bande wat inhoudmateriaal bestaande uit 'n verskeidenheid van films bevat het.'

    71

    This statement is at variance with his evidence in a material respect, viz in regard to the content of the tapes which he was purchasing. The first defendant sought to rely on the possibility of a mistake on the part of the typist who typed the pleas or of a misunderstanding during the relevant consultation between him and counsel, the latter having been Afrikaans speaking and the consultation having been conducted in English. Neither of those possibilities commend themselves for acceptance. One cannot envisage how a typist could have made a mistake of this nature leaving aside the question that the plea was presumably checked by both counsel and the attorney, who was present at the consultation, prior to its being filed. By virtue of the detail contained in the plea one similarly has difficulty in envisaging how both counsel and attorney could have laboured under the same mistaken impression. Moreover, the plea was filed during March 1995 and there was no attempt made at any stage to seek an amendment thereof. The third criticism relates to the inability of the first defendant to produce any documentary proof of the transaction with the Sonnens and specifically proof of the deposit of cash into their account which the first defendant alleged he made. He claimed he was unable to trace the deposit slip and he said that without his furnishing the account number the local branch of the Trust Bank was not able to assist him. Even if this were so, which may be doubted, a similar problem should not have been encountered at the George branch of the bank. The fourth criticism arises out of the discrepancies between what was put on behalf of the defendants to the plaintiffs' witnesses and the first defendant's own evidence on the question of whether the first defendant had on the occasion when the premises were searched proffered the explanation that he had obtained the tapes from the Sonnens—as to which see the resumé of the evidence set out earlier. The fact that, on his own later showing, he did not proffer that explanation in circumstances when the explanation, if true, would have been immediately forthcoming—as to which circumstances, see below—is a serious derogation of the acceptability of his evidence. It should finally be noted that it was Potgieter's evidence that the first defendant admitted that he had `made' the tapes.

    72

    Had the first defendant's evidence stood alone the above criticisms would probably have been sufficient to found a rejection of the evidence. However, there is the additional feature that Mrs van den Berg testified that she subsequently heard from the first defendant that he had purchased the tapes that the Sonnens had offered for sale. In the context of her evidence that discussion would have taken place prior to the date on which van As and Potgieter visited the premises of the second defendant. If that evidence is true it constitutes cognisable support for the case of the defendants as to how they came by the tapes. There is a suspicion that Mrs van den Berg was not an impartial witness, and the criticisms of the first defendant's evidence referred to above also bear on the acceptability of her evidence. However, I intend to proceed on the basis, without making a positive finding to that effect, that no sufficient basis exists for holding that the evidence of Mrs van den Berg was mendacious and that, whatever shortcomings there were in the first defendant's evidence, the support constituted by Mrs van den Berg's evidence is sufficient to carry the day for the defendants in the matter of the acceptability of their explanation as to the origin of the tapes in question.

    73

    Such a finding would, however, not mean that the case must be disposed of in the defendants' favour. The statements which the defendant made concerning the offending tapes, the findings in regard to which are set out below, after their discovery by van As and Potgieter, seen in the light of certain surrounding circumstances, establish that the defendants were dealing in the tapes in breach of the plaintiffs' copyright therein. As intimated earlier that conclusion would follow whether on the basis that the defendants failed to rebut the presumption imposed on them in terms of section 26(10) of the Copyright Act or whether on the basis that the onus rested on the plaintiffs to positively prove such dealing.

    74

    The surrounding circumstances to which I refer are the facts that the defendants are dealers in video recorded films by way of hire or sale and that on the first defendant's own showing the business was equipped and well able to make copies of video films.

    75

    In my judgment the evidence of van As and Potgieter as to the statements made by the first defendant as to what he was doing with the tapes must be accepted and that of the first defendant rejected as false.

    76

    As far as the narrow issue of demeanour in the witness box is concerned, an aspect which is not to be overstated, I do not consider that either van As or Potgieter were subject to valid criticism. The first defendant was possibly a little excitable, but that is not a criticism of any moment. It is with regard to the content of their respective testimonies that the acceptability of the former two and the non-acceptability of the latter appears clearly. I would, however, preface my discussion of the content of the evidence with the observation that van As was clearly an independent and unbiased witness and the same applies to Potgieter notwithstanding that Mr Vlok sought to suggest that in the light of the nature of his work he would have an interest in, as it were, `securing a conviction'.

    77

    I have not lost sight of the fact that Potgieter testified that the search warrant authorised a search for material that infringed copyright and that the first defendant was so advised which, in accordance with the evidence of van As, was in fact not the case. This is not a feature which should be overstated and it may have found its origin in Potgieter's own interest being restricted to the possible presence on the premises of material which infringed copyright. I also bear in mind that there was not an exact coincidence in the statements which van As and Potgieter, respectively, ascribed to the first defendant. Common to both, however, was an admission by the first defendant that he was dealing in the tapes.

    78

    On two material issues the probabilities are overwhelmingly in favour of the plaintiffs, viz whether Potgieter sought an explanation for the offending tapes and whether the first defendant responded thereto. The sole reason why Potgieter was present on the occasion in question was to ascertain whether the defendants were in possession of material which fell foul of the copyright of the plaintiffs. Such material was in fact found and it was manifest that it was offending material. The most natural thing for him to do was to require an explanation thereof or to enquire whether the defendants were dealing in the material. Such an enquiry would not have been ignored by the first defendant who would either have responded directly thereto or responded in the form of declining to furnish an explanation. The first defendant's claim that no such explanation was sought and therefore that he did not offer any explanation simply does not wash and must be rejected as false. The falsity of this claim is further demonstrated by the fact that in cross-examination of the plaintiffs' two witnesses Mr Vlok did not place in issue that Potgieter required the first defendant to explain the presence of the tapes and what he was doing therewith and on the contrary put it to the witnesses that the first defendant had offered an explanation which embraced the acquisition of the tapes from the Sonnens and, presumably, his intention to use the tapes by way of wiping them clean and selling them as blank tapes. An allied aspect relates to the first defendant's claim that the statement he did make referred to his collection of old classical films. He said that the statement, ie that he hoped that they—van As and Potgieter—would not remove his `masters', was born of an apprehension that those films, too, were to be removed. There was, firstly, no indication that van As and Potgieter would remove those films or indeed showed any interest therein. Secondly, the first defendant's alleged use of the word `masters' with reference to old classical films would, to put it at its lowest, have been inappropriate. When questioned on the meaning of the word `master' in the context of the video film industry the first defendant did not proffer the claim that it could refer to old classical films; instead, in common with a number of the other witnesses who testified in the trial, he stated that one of the meanings of the word connotes a reference to a master copy of a tape from which other copies are made. Such a meaning would have been quite appropriate within the context of the statements attributed to the first defendant by Potgieter and van As, to which should be added the defendants' ready ability to engage in the activities referred to in the statements ascribed to him.

    79

    I am not impressed with the reasons that the first defendant proffered why he would not have traded in the films in question. His first alleged reason was that his reputation would have been harmed if he hired out tapes in the bad condition in which these particular tapes were. He could not have been referring to the quality of the recordings because, firstly, he never said so and on the contrary stated that he had not viewed any of the films and that he immediately locked the tapes away because they were manifestly contraband and his sole intention was to trade in them as blank tapes; he would therefore have had no reason to view the quality of the recordings. If the reference was to the physical condition of the tapes he was then hoist on his own petard in that his other evidence was that the tapes were in good condition, hence his intention to sell them as blank tapes. In any event, what was attributed to him, on the strength of his statements, was not that he traded in the tapes themselves, but in copies which he made therefrom. His second reason was that the nature of the films were not of the type sought after by his clientele. But on his own showing he had 90% of the titles on his shelves already and was therefore trading in them, at least to an extent, and such titles were available to those members of the public who did not fall within the alleged main source of his custom. In this regard it bears repetition that, as mentioned earlier, certain of the films were `top' films and they were also of the `action' (or `hard') variety which he had earlier said fell within the type of film that the majority of his clients wanted, a statement from which he subsequently sought to resile when questioned on the fact that some of the films were of this variety by saying that what he had mentioned was the `karate' type of the film.

    80

    Two final examples of unacceptable evidence given by the first defendant should be mentioned. His claim that, contrary to what was said by van As and Potgieter, the search warrant was not shown to him and he was not given a copy thereof, is so against the probabilities that it must be rejected as false. Why the first defendant resorted to this evidence is a matter for speculation. The second aspect is his questioning, at a very late stage in his evidence and despite the relevant admissions which had been made on his behalf, whether certain films canvassed with him were in fact included amongst exhibit `I'.

    81

    It was not argued, and correctly so, that the statements which I have found the first defendant did make, did not justify the inference that the defendants dealt in the films in breach of the plaintiffs' copyright therein. The conduct in question falls squarely within the ambit of the acts which in terms of section 23, read with section 8, of the Copyright Act, constitute infringement of copyright.

    82

    In regard to the second leg of the plaintiffs' claim—relating to infringement of trademark, Mr Cullabine argued that a finding that the defendants had dealt in the films in breach of the copyright therein, albeit such finding was reached on the basis of the defendants having failed to rebut the presumption provided for in section 26(10) of the Copyright Act, was a finding of fact that could and should operate in respect of the plaintiffs' claim that the defendants had breached the trade marks in the relevant films. He conceded that if the claim had only related to an infringement of trade mark as envisaged in the Trade Mark Act, he would not have been entitled, as far as a finding concerning the relevant facts was in issue, to invoke a presumption contained in a different Act, the Copyright Act. He submitted, however, that it would be illogical and impermissible to act on a particular finding of fact for the purposes of one leg of the claim but to hold that that fact had not been established for the purposes of the other leg of the claim; in other words, because the alleged acts relied upon for both legs of the claim were the same and not severable, a finding thereon for the purposes of the first leg was necessarily also applicable to the second leg. Counsel did not cite any authority for his argument. Mr Vlok very properly referred me to a decision which could be invoked to support Mr Cullabine's proposition, viz the judgment of Steenkamp J in S v Bruhns 1983 (4) SA 580 (NC). In that judgment it was held that a conviction of an accused person on a charge of failing to stop his vehicle after having been signalled by a traffic officer to do so in contravention of a provision of the then Road Traffic Ordinance of 1966, which conviction flowed solely from the invoking of a presumption provided for in the Ordinance that the registered owner of a vehicle was the driver thereof at the relevant time, was to be taken into account by the court as a relevant fact in considering whether the accused was guilty on a second charge of driving his vehicle, at the same time and place, at a speed in excess of the limit prescribed in other legislation, viz the Petroleum Products Act of 1977. However, the report referred to by counsel wrongly reflects that the judgment was that of a full bench concurred in by Erasmus AJP and Basson J. In fact the reported judgment was a minority one. The majority judgment of the other two members of the court (per Basson J) which was to the contrary effect, is reported in 1984 (1) SA 481 (NC). Both judgments referred to the earlier decision of the Appellate Division in S v Khanyapa 1979 (1) SA 824 (A) Steenkamp J holding that it was applicable to the matter before him and Basson J, holding that it was distinguishable. In Khanyapa's case it was held that the conviction of the accused of an assault on his wife, based on her evidence she having been a competent witness against the accused in respect of that charge, was a relevant factor to be taken into account in considering whether the accused was guilty on a second charge of murdering his father-in-law, allegedly committed on the same occasion, notwithstanding that the accused's wife was not a competent witness against the accused in respect of this charge. The essence of the basis on which Basson, J, distinguished Khanyapa's case was that, in his view, it referred to convictions based on actual evidence and not to convictions founded on a presumption which may in the result be fictional convictions.
    Insofar as it may be necessary for present purposes I would record that in my respectful view the approach of Basson J in Bruhns' case is to be endorsed. However, as shown earlier, the finding that the defendants had not rebutted the presumption and the consequential finding that they had dealt in the films in question was based on evidence and the latter finding would have been reached even in the absence of any presumption against the defendants. Such a finding is, on the evidence, positively made on the second leg of the claim.

    83

    I turn now to the relief which the plaintiff's are seeking in these proceedings. It was correctly not disputed that both defendants are liable in respect of whatever relief the plaintiffs are entitled to. Harnischfeger Corporation and another v Appleton and another 1993 (4) SA 479 In my judgment the plaintiffs are entitled to both of the interdicts sought. The defendants infringed the copyright and trade mark rights in question; their denial thereof has been rejected as false; no undertaking that the conduct in question will not be repeated has been forthcoming. In such circumstances, provided that it cannot be said there is no likelihood of a future infringement occurring, an interdict against future infringing conduct is the normal and proper remedy and it is not necessary to invoke the further fact that the defendants on two previous occasions met the demand of the Motion Picture Association of America—based in each case on their possession of a copy of a film—for the payment of a sum of money, which the first defendant in any event sought to explain away. The fact that the first interdict sought in terms refers to infringements of the copyright of the plaintiffs in the specific films which are the subject of this judgment and that all of the offending copies of the films or their trailers have been removed from the possessor of the defendants—hence the abandonment of the relief in the form of a delivering up to the plaintiffs of all infringing copies or reproductions thereof—does not preclude the plaintiffs being granted the relief they seek. In the light of the circumstances referred to above I consider that a reasonable apprehension exists that the defendants will again utilise unauthorised copies of the films or their trailers in breach of the plaintiffs' copyright and trade mark rights. My conclusion that the plaintiffs are entitled to the interdicts sought is in accordance with the dicta in Performing Right Society Ltd v Berman and another 1966 (2) SA 355 (R) at 357 and the CCP Record Co case, referred to below, at 448 G.

    84

    The plaintiffs are further entitled to damages. The first category of damages in respect of which Mr Cullabine sought an order is that referred to in section 24(1) of the Copyright Act which provides that infringements of copyright shall be actionable at the suit of the owner of the copyright for such relief in the form of, inter alia, damages as would be available in any corresponding proceedings for the infringement of other proprietary rights. Section 24(1A) provides as follows:

    85

    `Damages contemplated in subsection (1) may, at the option of the plaintiff, be calculated on the basis of a reasonable royalty which would have been payable under the circumstances by a licensee or sub-licensee in respect of the copyright concerned.'

    86

    The option referred to in the subsection was exercised by the plaintiffs. It was the initial simple submission of Mr Cullabine that the section meant no more and no less than that in casu the respective plaintiffs were entitled to damages in the sum of R50 000,00 in respect of each copy of a film the copyright in which formed the subject of the claim of the respective plaintiffs, the said sum having been agreed upon between the parties as representing the minimum figure of the royalty which would have been payable as contemplated in the section. Counsel did not contend that the damages should be fixed with reference to the figure of R70 000,00 being the agreed average royalty which would have been so payable. The argument, however, overlooked the provisions of subsection (1B) which reads as follows:

    87

    `In the determination of the amount of damages referred to in subsection (1A) the court shall, in addition to all other material considerations, take the following factors into account:
    (a) the extent and nature of the infringement of copyright;

    88

    (b)the amount which could be payable to the owner in respect of the exercise of copyright by some other person.'

    89

    In his work, Handbook of South African Copyright Law, at 1-47/48, the learned author, Dr Dean, states the following in regard to subsections (1A) and (1B) which were introduced into the Act in 1992:

    90

    `In lieu of the erstwhile remedy of an account of profits, the Copyright Amendment Act, 1992, introduced specific reference to a reasonable royalty as a form of compensation to a copyright owner for the misuse of his work, apparently as an alternative to conventional damages which would usually take the form of loss of profits through diminished exploitation of the work by the copyright holder. The payment by an infringer of a reasonable royalty to the copyright owner for the unauthorised use made of his work as a form of compensation arising from copyright infringement is not new in our law. Damages in this form have been awarded by the court in the past in several cases. However, the compensation by way of a reasonable royalty provided for in the amendment has something of a notional character to it. More specifically the amendment provides for a reasonable royalty which would have been payable under the circumstances by a licensee or sub-licensee, and that the court, in determining the amount, must take into account the extent and nature of the infringement of copyright and the amount which would be payable in respect of the exercise of copyright by some other person. In other words, the reasonable royalty is not necessarily the actual amount which the infringer would have been required by the copyright owner to pay in respect of the exercise of the right in question but rather an amount that a notional licensee could have been required to pay. ...'

    91

    After further debate at the Bar Mr Cullabine conceded that his initial submission was incorrect and that the proper approach was to read the two subsections together and to adjust whatever figure was arrived at on an application of subsection (1A) in the light of the considerations referred to in subsection (1B). The concession was rightly made. This approach not only accords recognition to the words `calculated on the basis of' in subsection (1B)—which are used in contradistinction to words such as `fixed in a sum equal to'—but also accords a meaning to the provisions of subsection (1B) in the context of both sections read together. A different approach would have the effect of rendering the provisions of the latter subsection pro non scripto.

    92

    The figure arrived at on an application of the provisions of subsection (1A) is, in terms of the agreement between the parties, the sum of R50 000,00 per film. What adjustment thereof must be effected by reason of the considerations referred to in subsection (1B)? It seems to me that what is required of the court is essentially the exercise of a value judgment.

    93

    In regard to the provisions of paragraph (a) of subsection (1B) the evidence discloses that the conduct of the defendants consisted of their retaining in their possession the infringing copies for the purpose of utilising same to make unauthorised copies to replace copies in their stock-in-trade as and when the latter became damaged and utilising same for that purpose. That was the nature of the infringement. As to the extent thereof the evidence only discloses the extent to which the defendants engaged in the activity of retaining the infringing copies in their possession for the purposes mentioned, viz the retention of each infringing copy for a period of a month or two. The evidence does not reveal the extent to which the defendants actually implemented that purpose. In my judgment, on an overall conspectus of all the relevant evidence, the extent and nature of the infringement of copyright are not to be overstated.
    As to the consideration referred to subparagraph (b) of subsection (1B) the only evidence before me is that contained in a paragraph in exhibit `I', the statement of the first defendant submitted to the police. Subject to what has been said earlier in this judgment the first defendant confirmed the correctness of the contents of the statement. Paragraph 11 of the statement records that at the relevant time new and properly authorised copies of films cost approximately R200,00 to R250,00 per copy. That was therefore the amount which could be payable to the owner in respect of the exercise of copyright by the `other person' referred to in subparagraph (b).

    94

    Subsection (1B) further enjoins the court, in assessing the quantum of damages, to take into account, in addition to the matters referred to in sub-paragraphs (a) and (b) `all other material considerations'. Subject to what is said later in this judgment it is not necessary for me to discuss what factors would or could fall within the ambit of this phrase; counsel presented no argument thereanent.

    95

    In the exercise of the value judgment which I am enjoined to do in this matter I am faced with the difficulty of where to draw the line between the figures of R200,00/R250,00 (being the figure in casu envisaged in subparagraph (b) of subsection (1B)) and the figure of R50 000,00 (being the figure in casu envisaged in subsection (1A)). On a conspectus of all the relevant circumstances and in particular the somewhat limited scope of the extent and nature of the infringement of copyright in respect of each relevant film and of the inroad into the licensee's rights in respect of the marketing of the film, I have come to the conclusion that a figure of R1 500,00 in respect of each film would be fair and reasonable. I place on record the confession that the fixing of the award in this figure is characterised by a measure of arbitrariness; it is a matter of assessment rather than computation.

    96

    The other damages claimed are those envisaged in section 24(3) of the Copyright Act. The section reads as follows:

    97

    `Where in an action under this section an infringement of copyright is proved or admitted, and the court having regard, in addition to all other material considerations, to —

    98

    (a)  the flagrancy of the infringement; and

    99

    (b)  any benefit shown to have accrued to the defendant by reason of the infringement, is satisfied that effective relief would not otherwise be available to the plaintiff, the court shall in assessing damages for the infringement have power to award such additional damages as the court may deem fit.'

    100

    Mr Cullabine, adverting to the fact that in terms of section 27(6)(a) of the Act a person convicted of infringing copyright in an article is, in the case of a first conviction, liable to a fine not exceeding R5 000,00 or to imprisonment for a period not exceeding three years, or to both such fine and imprisonment, for each article to which the offence relates, adopted the stance that an appropriate award in respect of each offending film or trailer would be in the sum of R5 000,00. It was his submission that such an award was justified by reason of the following considerations which he contended were present:

    101

    (a)  the conduct in question of the defendants in infringing the copyright of the plaintiffs had indeed been flagrant;

    102

    (b)  a benefit, albeit unquantified, must have accrued to the defendants in consequence of their infringing conduct;

    103

    (c)  by reason of the evil done in the video cassette industry by large scale piracy (testimony concerning which was given by a number of witnesses including testimony that an estimated 15% of the total annual countrywide turnover in the industry constituted pirate turnover involving many millions of rands—evidence which was not disputed by the first defendant who himself spoke of the evil of piracy and registered his strong objection thereto) there was a need to effect a deterrence thereof by way of such an award;

    104

    (d)  effective relief would not otherwise be available to the plaintiffs.

    105

    The approach of the courts to an application for an award of damages in terms of section 24(3) has not been harmonious. In South African Music Rights Organisation Ltd v Trust Butchers (Pty) Ltd 1978 (1) SA 1052 (E), which concerned an infringement of copyright in certain musical works by way of playing a radio in a butchery shop, Addleson J had to consider an application for an award of `exemplary' or `penal' damages under section 18(3) of the Copyright Act of 1965 (the precursor of section 24(3) of the present Act). He held as follows (see 1057 H et seq):

    106

    Such damages could not be awarded under section 18(3)(b) since it had not been `shown' that any benefit had accrued to the defendant, by reason of the infringement, on which such damages could be calculated. Difficulties in the way of making such an award under section 18(3)(a) by reason of the alleged flagrancy of the infringement were the following: Firstly, such additional damages were only permissible if the court were satisfied `that effective relief would not otherwise be available to the plaintiff'. The award to the plaintiff of the actual pecuniary loss it had suffered together with the grant of an interdict did in fact accord effective relief. Secondly, no yardstick was available by which such damages could be assessed and although it was suggested by Copeling (Copyright Law) that the amount to be awarded was entirely in the court's discretion he could not simply pluck a figure out of the air without some basis on which to assess it. Thirdly, although the defendant's conduct was open to criticism it did not seem to be comparable to the type of conduct referred to in English cases or by the English writers or a `flagrancy' deserving of a special award of exemplary damages. The case was accordingly not an appropriate one for an award of damages beyond the normal ambit of compensation for pecuniary loss.

    107

    In Priority Records (Pty) Ltd v Ban-Nab Radio and TV; Gramophone Record (Pty) Ltd v Ban-Nab Radio and TV 1988 (2) SA 281 (D) it was found that the defendant had breached the copyright of the respective plaintiffs by unlawfully selling two audio cassettes. On the interpretation of section 24(3), Page J held as follows: The section appears to have been intended to provide a substitute for the aggravated or exemplary damages available under the English common law. It does not, however, empower the court to award any form of damages unrecognised by South African common law. What is empowered is the award of additional damages when the court is of the view that the remedies afforded by section 24(1)—now to include sections 24(1A) and (1B)—or any other provision of the law are insufficient to recompense him adequately for all the damage, into whatsoever legal category it may fall (ie whether under the actio iniuriarum or any other remedy recognised by our law) occasioned by the infringement. This approach is in accordance with the English law as appears from the following passage in Copinger and Skone James, Copyright, 12th ed, para 644 at 272-3:

    108

    `The section is directed to providing effective relief for the plaintiff. If, for example, effective relief is available to the plaintiff in respect of another cause of action, such as libel or breach of confidence, relief may not be given by an award of additional damages for infringement of copyright. It is thought that damages under this section might be appropriate where a defendant adopts a policy of continual infringement, but an injunction is not an appropriate remedy because the defendant reproduces different material on each occasion. Additional damages may also be awarded where the conduct of the defendant has been deceitful or treacherous, thereby obtaining benefits for himself and inflicting on the plaintiff humiliation for which it is difficult to compensate. Flagrancy implies scandalous conduct, deceit including deliberate and calculated infringement where a defendant reaps a pecuniary advantage in excess of the damages which he would otherwise have to pay. Other relevant considerations are the defendant's general conduct with regard to the infringement and his motives for it, the plaintiff's corresponding behaviour, the injury to the plaintiff's feelings and the indignities and distress he has suffered and the defendant's lack of regret for the hurt and humiliation he has inflicted on the plaintiff. ... The subsection is a comprehensive code for additional damages in that there is no place for the award of aggravated, exemplary or punitive damages outside that subsection.'

    109

    The judgment continues as follows at 294 A to I:
    `In support of his invocation of the section, counsel for the plaintiffs has submitted that the Court should infer from the readiness with which the infringing copies were produced that they were part of a larger stock and indicated that the defendant was pursuing a deliberate and calculated course of infringement for monetary gain. It was further submitted that although the paucity of evidence prevented the plaintiffs from proving the extent of such gain, it could be inferred that it was considerable. It should also be found, in the light of the evidence of Mr Ellis, that the harm resulting to the plaintiffs as members of the trade from the defendant's conduct was considerable and far transcended that flowing from the sale of exhs 1 and 2. The Court should accordingly find (so the argument ran) that effective relief would not be available to the plaintiffs in the absence of an order under s 24(3). I have difficulty in accepting the factual basis of this argument. There is nothing in the evidence to justify the conclusion that the particular infringements complained of were extensive or of long duration or that the defendant derived great financial benefit from those infringements. The making of the copies of the particular musical recordings in issue could well have been an isolated incident and the probability that the defendant was also infringing other copyright material does not alter the position, since it is the effectiveness of the relief for the particular infringement to which the action relates which the section has in mind. I am unpersuaded that an order for an interdict, the actual damages and costs would not constitute effective relief in respect of that infringement. There is, furthermore, no evidence to justify the conclusion that the infringements proved were ``flagrant'' within the meaning of the section or that the defendant derived any great financial benefit from them. It was submitted by counsel for the plaintiffs that the prevalence of this type of infringement, the ease with which it can be committed, the difficulty experienced in detecting it, the enormous cumulative damage which it inflicts upon the industry and the virtual impossibility of proving and recovering the damages suffered, all constituted circumstances which justified the Court in making an exemplary or punitive award of damages so as to deter not only the defendant but also other potential infringers from such conduct. I do not, however, consider it justifiable to visit the sins of other infringers upon the head of this defendant because he has been unfortunate enough to be caught whilst others have not. Furthermore, the Act makes 47 provision for criminal sanctions which could have been invoked against the defendant and which make provision for substantial penalties which should in themselves prove an adequate deterrent.'

    110

    CCP Record CO (Pty) Ltd v Avalon Record Centre 1989 (1) SA 445 (C) was also a case which concerned the unlawful sale, in breach of the plaintiff's copyright, of an audio cassette. At 449 C et seq Conradie J gave consideration to the effect of section 24(3). The views which he expressed are as follows: While it is to be acknowledged that the reference in the section to an absence of `effective relief' could forcefully found the argument that, for the provisions of the section to operate, another cause of action (but an `ineffective' one) must be shown to exist (even if it is not pursued) in which event the award of `additional damages' would be supplementary to ordinary damages (as indeed the expression itself suggests), it is to be doubted whether one should conclude from that alone that where relief by way of the actio legis Aquiliae and the actio iniuriarum is not competent, the plaintiff may not be awarded `additional damages'. Actions for damages are seldom ineffective where the plaintiff is able to show that he has suffered some (patrimonial or non-patrimonial) damage, the court being obliged to do the best it can in the assessment of damages on the material placed before it provided that the plaintiff has adduced all the evidence that could reasonably be expected of him.

    111

    Accordingly, the scope for an award of additional damages of a kind which have actually been suffered but cannot be proved must, if it exists at all, be small bearing in mind that damages for breach of copyright are said to be `at large'. Accordingly, the words `effective' and `additional' in the section must not cause the court to lose sight of the fact that, by making benefit to a defendant and flagrancy criteria for an award of damages, the section not merely augments existing delictual remedies by widening the power of the court to award damages, but introduces relief where no cause of action for relief had existed before. Additional damages are therefore damages of a kind which would not, but for the provisions of section 24(3), be recoverable at all, either because they are unprovable (and the scope for finding damages unprovable in our law is small) or because, other than in section 24(3) no cause of action for their recovery exists. Section 24(3) accords the court a wide discretion in awarding such damages, limited only by the consideration that the money which the defendant is made to pay must go to providing relief for the plaintiff and the defendant may not simply be fined. Because of imported confusion and controversy surrounding the terms `punitive' and `exemplary' it is not helpful to apply those terms to the `additional damages' envisaged in section 24(3). In English law the Copyright Act (which is the same as ours) envisages purely compensatory damages, including aggravated compensatory damages (which the plaintiff is fairly entitled to receive) which should be contradistinguished from punitive or exemplary damages (which the defendant ought to be made to pay as punishment for outrageous conduct). In cases where it is appropriate for section 24(3) to be invoked the court should seek, by an award of damages, to do what is fair having regard thereto sustained. In this regard the judgment proceeds as follows at 451 I to 453 A:

    112

    `In Nichols Advanced Vehicle Systems Incorporated and others v Rees Oliver and others (1979) RPC 127 elements of deceit and treachery, and the infliction of humiliation on the plaintiff linked with the obtaining of an unconscionable advantage by the infringer were held to make the infringement flagrant.

    113

    Deceit, including deliberate and calculated infringement linked with a peculiar advantage in excess of the damages which the infringer would have had to pay had it not been for the additional damages provision, was, in Ravenscroft v Herbert and another (1980) RPC 193 at 208 held to constitute flagrant conduct.

    114

    Both the Nichols Advanced Vehicle Systems and Ravenscroft cases supra described an invasion of another's copyright as flagrant if it is scandalously dishonest.
    In casu, I consider that the invasion of copyright was scandalously dishonest. The defendant was a trader in records, including the plaintiff's records. The scope for infringement by such a trader is huge, and the harm, not only to the plaintiff, but to the artists with whom it contracts, and ultimately to the recording industry, may be great. I think that there is a strong moral duty on a retailer of any product which is vulnerable to piracy to avoid exploiting a supplier of copyright material who has entrusted such material to him in the expectation that it will be sold for the benefit for both of them. A copyright infringement of this kind is easy to perpetrate and difficult to detect. A single work may be reproduced almost endlessly and at insignificant cost to the reproducer. The profits of the unlawful conduct are enormous.

    115

    My impression from the evidence of what occurred in the shop when the recording was made is that the defendant treated the plaintiff's rights contemptuously. The impression is fortified by the defendant's subsequent conduct in denying the infringement when it must have known that it would not dare put the person alleged to be responsible for the infringement on the witness stand. The defendant, moreover, until the morning of the second day of the trial, refused to even acknowledge the existence of the copyright or the plaintiff's ownership, although it must have been manifest to the defendant from the facts deposed to in the interim application that the plaintiff had made out a clear case of subsisting copyright of which the ownership vested in it.

    116

    In the defendant's favour I think I should stress that the purchase was a so-called trap-purchase. This means that the defendant was, if not instigated, then prompted to make the copy. He was given to understand that the customer could not afford to buy the records; he may, in a weak moment, have succumbed to the temptation of not losing a sale.

    117

    In deciding whether to award additional damages on the ground of flagrancy alone, I have had regard to the fact that the infringement, although flagrant, was not shown to have been repeated. Although it probably caused the plaintiff annoyance, it could hardly have caused any of its officers distress. The plaintiff was, of course, put to considerable trouble and expense. It complained to the Association of the South African Phonographic Industry. Its work schedule was disrupted when its officers had to consult, consider papers and attend Court. It incurred costs which it will not recover under the tariff. I am sure that the plaintiff would not have bothered about the infringement it had not been so flagrant, if it had not been an infringement by a dealer under circumstances where the potential harm was significant. The flagrancy of the infringement was the direct result of the actions taken to stop it.

    118

    I accordingly consider that an award of additional damages ought to be made. I think that an amount of R3 000 is in the circumstances neither too small nor too large.
    It is to be noted that it is clear from the report that Conradie J was not made aware of the judgment in the Ban-Nab case before he delivered his judgment.

    119

    In an article titled `Additional Damages and Section 24(3) Of The Copyright Act', appearing in the 1989 South African Law Journal (Volume 106) at 467, V.V.W. Duba, a senior lecturer law at the University of Fort Hare, subjects the judgment in the CCP Record case to criticism. The criticism is in essence of a two-fold nature. He suggests, firstly, that it is unfortunate that Conradie J declined to call the additional damages envisaged in section 24(3) `exemplary' or `punitive' damages. These terms, he points out, are not unknown in South African law and awards for eg defamation, often include an element of exemplary damages where the defendant's conduct warrants such censure. Secondly, he joins issue with the approach of Conradie J, in granting additional damages in a case where actual damage (even if it not be susceptible of precise quantification) has in fact not been proved. He argues that a prerequisite for an award of damages is proof of damage, in respect of which the plaintiff bears the onus. His views are summed up in the following passage:

    120

    `One can only advise that, in future the award of additional damages made in terms of s 24(3) of the Copyright Act should be treated as a South African form of what the English courts refer to as exemplary or punitive damages; before such an award may be made, however, there must be adequate proof of the existence of a cause of action and also of harm sustained by the defendant—thereby preventing the courts from making awards under s 24(3) in cases where the plaintiff has failed altogether to establish damage.'

    121

    In my judgment the principles applicable to the interpretation of section 24(3) are the following:
    (1) Additional damages as envisaged in the section may only be awarded by the court when, firstly, the plaintiff already has a cause of action for relief dehors the provisions of the section and, secondly, such relief cannot effectively be obtained by the plaintiff.
    I consider that such an approach was implicit in the judgment in the Trust

    122

    Butchers case where Addleson J recorded that one of the reasons why he could not award additional damages was that the award to the plaintiff of his actual pecuniary loss and the grant of an interdict had in fact accorded the plaintiff effective relief. (The circumstance that Addleson J was in the context dealing only with a claim for additional damages based on the alleged flagrancy of the infringing conduct does not qualify the ambit of his approach). Mr Cullabine submitted that the decision in this case was wrong and that the approach in the CCP Record case was preferable. I am, however, bound by the decision in the Trust Butchers case unless I am convinced that it is wrong. I am not so convinced; on the contrary I am persuaded that it is correct. The phrase `effective relief would not otherwise be available to the plaintiff' refers in my view, to relief to which the plaintiff is entitled—ie he has a valid cause of action in respect thereof—but cannot effectively avail himself of such relief. I further therefore agree, with respect, with the approach of Page J in the Ban-Nab Radio case that the court is not empowered to award any form of damages not otherwise recognised in our law, but is empowered to supplement the remedies provided for in subsections (1), (1A) and (1B) where those remedies are insufficient to recompense the plaintiff adequately for all the damage, whatever the legal categorisation thereof, occasioned to him by the infringement and that the manner in which it would do so is by awarding exemplary damages. This approach is in accordance with what is advocated by Duba in the article referred to above the reasoning behind which commends itself for acceptance. I would comment that the factors referred to in the section to which the court must have regard in determining whether effective relief would not otherwise be available to the plaintiff are all factors which could found an award of exemplary damages. Insofar as the reasoning of Conradie J in the CCP Record Co case is contrary to the above approach I am, with respect, unable to align myself therewith. In particular, for the reasons stated above, I do not agree that the intention of the legislature, in enacting section 24(3), was to create a new cause of action in addition to, and as opposed to augmenting, any remedies which are already available to the plaintiff.

    123

    (2) In determining whether it may be satisfied that effective relief would not otherwise be available to the plaintiff the court will have regard not only to the flagrancy of the infringement and any benefit shown to have accrued to the defendant, but also to all other relevant considerations. The wording of the section makes it clear, in my view, that the legislature drew a distinction between the first two considerations referred to above and `all other relevant considerations'. I accordingly, again with respect, am unable to agree with the approach of Conradie J that the phrase `other material considerations' in the section is to be taken into account only insofar as such other considerations bear on the concepts of flagrancy and benefit to the defendant. That approach would require the unattractive, indeed unwarranted, finding that the words `all other material considerations' are to be interpreted eiusdem generis with the words that follow or even pro non scripto. Nor do I agree that it is not possible to conceive of any other considerations apart from the two concepts referred to above which could justify an award of exemplary damages. See in this regard the passage from Copinger and Skone James quoted earlier when the judgment in the Ban-Nab Radio case was being analysed. A further consideration which springs to mind is extreme difficulty in quantifying the damage sustained, notwithstanding, as Conradie J pointed out, that a court is enjoined, when faced with a damages claim, to do the best it can on the material placed before it provided that no blame attaches to the claimant in respect

    124

    (3) A consideration which is not relevant in the enquiry whether `effective relief which would not otherwise be available to the plaintiff' is the need to deter not only the particular defendant from infringing conduct but also other potential infringers.

    125

    That there is such a need arises from the prevalence of instances of infringement, the ease with which it can be committed, the difficulty experienced in detecting it, the enormous cumulative effect which it inflicts upon the industry and the difficulty in proving and recovering damages. However, I am in respectful agreement with the views expressed in this regard by Page J in the Ban-Nab Radio case, viz that it is not justifiable to visit on the defendant the sins of other infringers who have not been caught and that, moreover, the Act makes provision for substantial criminal sanctions which should serve the purpose of adequate deterrence. Punishment of a particular defendant by way of an award of exemplary damages is not the vehicle whereby that purpose is to be achieved. The contrary dicta by Conradie J in the CCP Radio Co case are, respectfully, not endorsed.

    126

    (4) The fact that there is no yardstick by which additional damages are to be assessed on the grounds of the flagrancy of the infringement of copyright is no bar to the award of damages.
    The court is required to exercise a value judgment in the matter. The

    127

    perception of Addleson J in the Trust Butchers case that this was a difficulty in the way of making an award on the ground of flagrancy was expressed obiter, did not receive endorsement in the two later cases referred to above and, with respect, evinced a wrong approach.

    128

    The question to be answered in the present matter is whether the plaintiffs have in fact been accorded effective relief or whether, by reason of the factors referred to in section 24(3), such effective relief is not available to them. A distinction must be drawn between the copies of the films and the copies of the trailers. In the case of the former the plaintiffs have not only been granted an interdict but have also been awarded damages. It was not suggested during argument that any expenses which the plaintiffs may have incurred in respect of investigations undertaken to ascertain whether the defendants had in fact infringed the copyright in question should found an award of additional damages. The grant of the interdict and the award of damages in my view adequately meet all the exigencies of the matter, including recognition of the considerations referred to in section 24(3), and the plaintiffs have therefore received the full relief to which they are entitled. The plaintiffs have accordingly not made out a case for the award of additional damages in respect of the defendant's infringement of their copyright in the respective films.

    129

    The trailers stand on a different footing. The defendants infringed the respective plaintiffs' copyright in the films of which the trailers are substantial parts. The establishment of the damage occasioned thereby as envisaged in section 24(1) would be an extremely difficult, if not impossible, task. The already difficult task of applying the provisions of subsection (1A) and (1B) would be further bedeviled by the circumstances that it is not copies of the films themselves but copies of trailers thereof that are involved and that the evidence does not disclose what amount, if any, would be paid for authorisation to use the trailer. Proof of the plaintiffs' damage would accordingly at best have been an extremely problematical exercise. Effective relief in respect of the infringement of the copyright in the films has, on that ground alone, been shown to be not available to the plaintiffs and the plaintiffs are therefore entitled to an award of additional damages. Can the plaintiffs rely in addition on the two features referred to in subparagraphs (a) and (b) of subsection 24(3)? The answer in respect of the second subparagraph must be in the negative. There is no evidence as to what benefit accrued to the defendants by reason of their nefarious use of the offending trailers. The question must, however, be answered affirmatively in relation to the consideration referred to in subparagraph (a), ie that of the flagrancy of the infringement and it may fairly be said that this consideration increased the damages to which the plaintiffs otherwise were entitled. As to what constitutes flagrancy reference may be had to the relevant dicta in the authorities analysed earlier. An application of those dicta to the present matter results in a finding that flagrancy must be attributed to the defendants. The conduct of the defendants fairly attracts the epithets of deceitful and scandalously dishonest. The defendants were from the outset fully aware that the cassette tapes in question contained unlawful material including such trailers as there may have been on the tapes. They were aware of the odiousness of piracy in the video film industry. Their conduct was deliberate and calculated and was motivated by monetary gain. The defendants have given no indication of regret or remorse for their conduct. On the other hand there can be no talk of their actions having occasioned the plaintiffs distress or humiliation, as opposed to annoyance, and the conduct in question related, after all, only to trailers which were manifestly not the main item traded in, ie the films, and had, as it were, merely been tacked onto the films and they would not have served to enhance the viewing attractiveness of the tapes to any marked degree. Furthermore, it may be repeated, the conduct was persisted in only for a relatively short period. These last features, in my view, dictate that the additional damages awarded be circumscribed in extent. The amount I fix in respect of each trailer is the sum of R200,00.

    130

    The remaining issue is that of costs. It was agreed that the sixth plaintiff, which did not proceed with its claims, should be ordered to pay the defendants' costs incurred in the action instituted by it up and until the date on which the actions were consolidated. Mr Vlok realistically did not seek any further order in respect of the costs of the sixth plaintiff's action as from the date of consolidation. Mr Vlok did, however, raise a further contention. He submitted that the costs had been unnecessarily inflated by reason of the plaintiffs having initially instituted separate actions. Pointing to the circumstance that to a substantial extent the factual evidence on which the respective plaintiffs' cases were founded was identical and that the same issues of law arose in each case he argued that no sufficient reason existed why a single composite action should not have been instituted in the first place, a course which would have circumscribed the costs by avoiding unnecessary duplication of pleadings. Adverting thereto that the factors relied upon by Mr Vlok were in fact the basis on which consolidation of the actions was subsequently sought and granted Mr Cullabine was constrained to concede the validity of the point taken by Mr Vlok.

    131

    In the result the following orders will issue:

    132

    (1) The defendants are interdicted and restrained from infringing the respective plaintiffs' copyright in the films which are the subject of this judgment by doing or causing or authorising in relation thereto any of the relevant acts referred to in section 23 read with section 8 of the Copyright Act (no 98 of 1978).

    133

    (2) The defendants are interdicted and restrained from doing any act infringing the trade mark(s) of the respective plaintiffs which are the subject of this judgment.

    134

    (3) Judgment is granted as set out below in favour of, respectively, the first, second, third, fourth, fifth, seventh, eighth and ninth plaintiffs against the defendants jointly and severally, the one paying the other to be absolved.

    135

    (a)  First plaintiff: payment of the sum of R400,00 as and for additional damages;

    136

    (b)  Second plaintiff: payment of the sum of R4 500,00 as and for damages and the sum of R1 800,00 as and for additional damages;

    137

    (c)  Third plaintiff: payment of the sum of R4 500,00 as and for damages and the sum of R400,00 as and for additional damages;

    138

    (d)  Fourth plaintiff: payment of the sum of R10 500,00 as and for damages and the sum of R2 800,00 as and for additional damages;

    139

    (e)  Fifth plaintiff: payment of the sum of R12 000,00 as and for damages and the sum of R2 000,00 as and for additional damages;

    140

    (f)  Seventh plaintiff: payment of the sum of R4 500,00 as and for damages and the sum of R1 400,00 as and for additional damages;

    141

    (g)  Eighth plaintiff: payment of the sum of R15 000,00 as and for damages and the sum of R1 600,00 as and for additional damages;

    142

    (h)  Ninth plaintiff: payment of the sum of R600,00 as and for additional damages;

    143

    (i) Payment of interest in each case on the sums set out above calculated as from today's date to the date of payment.

    144

    (j) (i) Payment of the costs of suit; provided that the costs of suit shall be restricted to such costs as would have been incurred had the plaintiffs initially instituted a single composite action in respect of the relief claimed in their separate actions;

    145

    (ii)Payment of interest on the taxed costs calculated as from the date of taxation to the date of payment.

    146

    (4) The costs of the action instituted by the sixth plaintiff up and until the date of consolidation of the actions, together with interest thereon calculated from the date of taxation to the date of payment, shall be paid by the sixth plaintiff.

  • 4 Ara Oy v Pascall and others 364 (JOC) (W)

    1

     --------------------------------------------------------------------------------------------------------------------------------

    2

    ARA OY v PASCALL AND OTHERS

    3

    WITWATERSRAND LOCAL DIVISION

    4

    MYNHARDT J

    5

    --------------------------------------------------------------------------------------------------------------------------------

    6

    JUDGMENT

    7

    Mynhardt J: In terms of the Notice of Motion applicant seeks an order:
    `(a) interdicting the respondents from their continued, direct and indirect, infringement of the applicant's copyright in the drawings listed in schedule "HE 7'';
    (b) that the respondents deliver-up under oath to the applicant all:

    8

    (i) two-dimensional reproductions of the applicant's drawings listed in schedule "HE 7" in the possession or under the control of any respondent or any contractor of a respondent.

    9

    (ii)three-dimensional reproductions of the applicant's drawings listed in schedule "HE 7" in the possession or under the control of any respondents or any contractor of a respondent, and

    10

    (iii) tools, dies, jigs and other tooling and machinery used for the manufacture of the three-dimensional reproductions of the applicant's drawings listed in schedule "HE 7".

    11

    c) thattherespondentsprovidetheapplicantwithalistofdrawings,other than the drawings listed in schedule "HE 7", which are legally the property of the applicant and which are in the possession or under the control of the respondent or any contractor of the respondent and that the respondents deliver-up to the applicant the drawings listed;

    12

    d)  that the respondents provide the applicant with an account of profits and payment thereof by the respondents jointly and severally;

    13

    e)  an award of additional damages in the sum of R2 000 000 to the applicant and payment thereof by the respondents jointly and severally; and

    14

    f)  in the alternative to (d) and/or (e) above an order postponing the matttter to be arranged for the hearing of oral evidence in order that the question of an account of profits and/or the question of additional damages may be investigated and determined by the court;

    15

    g)  thattherespondentspaytheapplicant'scosts,ontheattorneyandown client scale, such costs to include the costs of the employment of two counsel and the costs, and travelling to Finland and accommodation expenses whilst there, of Dr Burrell of the applicant's attorneys in collecting and collating the evidence necessary to support the application.'

    16

    The salient features of the applicant's case may be summarised as follows: the applicant is a Finnish company; over many years applicant and its predecessors have developed the TORO LHD (load, haul, dump) product line, ie machinery, more specifically, front end loaders, of which various models are manufactured and marketed; as part of this development process a number of technical drawings of the parts of these machines and specifications relating thereto have come into being; by virtue of a licensing agreement Bateman Mining Equipment (Pty) Ltd (`Bateman') has become the exclusive licensee of the applicant in the Republic of South Africa; in terms of this licensing agreement applicant has supplied many of its aforesaid technical drawings and specifications relating to parts of the TORO machines to Bateman and there has also been a continual interchange of specialist technical personnel and knowledge; in terms of the licensing agreement the applicant retained its copyright in the drawings and Bateman is obliged to ensure that `all ARA know-how and technical information' provided is to be kept confidential; the respondents are in competition with Bateman in supplying some of the goods and spares for underground loader equipment and other earthmoving equipment; the first respondent was, until 1 April 1988, the general manager of Bateman Mining Equipment Ltd, the predecessor of Bateman; the second respondent was also in the employ of Bateman Mining Equipment Ltd, he was also the company's marketing manager and he resigned on 30 September 1988; the third respondent was also in the employ of Bateman Mining Equipment Ltd as a parts sales clerk and he resigned on 29 February 1988; the first respondent is also a director of the fourth and fifth respondents and he is the sole member of the sixth respondent. During August 1989 Bateman received information that the respondents were involved in stealing confidential drawings of the TORO product line from Bateman and one of Bateman's employees, Mr T L Nkhetoa revealed to Bateman that he had, on various occasions, been requested by the third respondent to make copies of drawings relating to TORO machinery and to supply these copies to him and that he had complied with these requests. Bateman applied to court for a so-called Anton Piller order which was granted. This order was executed at different addresses of the respondents and a number of drawings were attached. An examination of the drawings which were attached revealed that copies have been made of drawings relating to parts which were designed by the applicant and which are used exclusively in TORO vehicles. The respondents have also obtained the services of a sub-contractor to manufacture TORO parts which the respondents have sold and supplied to various clients of them. Applicant initially applied for leave to intervene as a co-applicant in the abovementioned application which was brought by Bateman against the respondents but has since decided not to proceed with the application for leave to intervene but to launch the present application in its stead. Applicant contends that copyright subsists in the drawings which form the subject matter of this application and that the copyright vests in applicant; that the respondents have infringed the copyright and that applicant is therefore entitled to the relief claimed in the Notice of Motion.

    17

    The respondents have not produced evidence to refute the applicant's allegations. The respondents have contented themselves with merely denying applicant's allegations. The respondents do, however, allege that applicant and Bateman are acting in concert with each other and that they are improperly utilising the process of the court to mulct the respondents in enormous legal costs and thus forcing them out of the market place. The respondents further alleged that in view of the fact that they have tendered an undertaking the applicant as early as September 1989 not to infringe the copyright claimed by applicant, the present application should not have been instituted but that they in any event consent to an order in terms of paragraph (a) of the Notice of Motion, and that the applicant ought to be ordered to pay their costs of suit.

    18

    At the commencement of the hearing Mr Serrurier, who, together with Mr Goodman, appeared for the respondents, conceded that applicant has proved that copyright in the drawings vests in the applicant and that respondents have infringed applicant's copyright and that applicant is entitled to an interdict as prayed for in paragraph (a) of the notice of motion. Mr Serrurier's whole argument was therefore directed to the further relief claimed by applicant and he submitted that applicant is not entitled to the relief claimed in paragraphs (b) to (g) of the Notice of Motion. In view of this concession it follows that at least an order in terms of paragraph (a) of the Notice of Motion will have to be made.

    19

    The question therefore is whether or not the applicant is entitled to an order in terms of any one or more of the remaining paragraphs of the notice of motion. These paragraphs will now be considered.

    20

    PARAGRAPH (b)

    21

    It will be seen from the formulation of this prayer in the notice of motion that applicant seeks an order which is directed to the delivery-up of reproductions of the drawings which belong to applicant and in respect of which applicant is the holder of the copyright, and, also, to the delivery-up of tools, dies, etc. which was used for the manufacture of three-dimensional reproductions of the aforesaid drawings.

    22

    Mr Puckrin, who together with Mr Franklin, appeared for the applicant, submitted that the applicant is entitled to an order for delivery-up of the reproductions of the drawings as well as the tools, dies, etc. in terms of section 24(1) of the Copyright Act (no 98 of 1978) (`the Act'). Mr Puckrin conceded that the order was too widely framed in the Notice of Motion in so far as it directed the respondents to deliver-up the documents and items `under oath'. These words will therefore have to be ignored.

    23

    Mr Serrurier submitted, in the main, that section 24(1) of the Act does not entitled applicant to an order in the terms as sought by applicant; that the relief sought in any event involves an assumption that the respondents will not heed the interdict, an anticipation that the respondents will not comply with the interdict for which assumption there is insufficient evidence, and, that applicant has not proved that the respondents are in possession of any infringing reproductions of the drawings.

    24

    Section 24(1) of the Act reads as follows:
    `Subject to the provisions of this Act, infringements of copyright shall be actionable at the suit of the owner of the copyright, and in any action for such an infringement all such relief by way of damages, interdict, accounts, delivery of infringing copies or plates used or intended to be used for infringing copies or otherwise shall be available to the plaintiff as is available in any corresponding proceedings in respect of infringements of other proprietary rights.'
    The first question to be considered is whether or not the relief which applicant seeks is `available in any corresponding proceedings in respect of infringements of other proprietary rights'. Mr Serrurier has submitted that the owner of copyright has no proprietary right to recover `offending' reproductions or copies and for this submission he relied upon the judgment of Slomowitz AJ, who delivered the judgment of the Full Bench, in Video Parktown North (Pty) Ltd v Paramount Pictures Corporation; Video Parktown North (Pty) Ltd v Shelburne Associates and others; Video Parktown North (Pty) Ltd v Century Associates and others 1986 (2) SA 623 (T) at 641 F-G. In the passage relied upon by Mr Serrurier Slomowitz AJ said the following:

    25

    `As I have been at pains to point out, copyright is a species of ownership. Because it is the ownership of an incorporeal, it does not admit of the notion of natural fruits. The rental received for the letting out of pirated copies of copyright material is a civil fruit of those pirated copies. The offending copies are not, however, part of the patrimony of the copyright owner, and the rental in question is not his either. It follows that in the absence of the remedy of conversion and detention accorded by s 19 of the 1965 Act, no right to an account falls to the copyright owner any more than would the owner of, say a holiday home be entitled to sue a trespasser who has let it for reward to an account of the rental which the trespasser obtained. His remedy is in damages alone.'

    26

    Mr Serrurier has also relied upon a passage in the judgment of Van Dijkhorst J who delivered the judgment of the Full Bench in Cerebos Food Corporation Ltd v Diverse Foods SA (Pty) Ltd and another 1984 (4) SA 149 (T). The relevant passage is to be found at p 173 F-I of that judgment and it reads as follows:

    27

    `The South African Courts have therefore no jurisdiction to grant an order for the attachment of the property of another where no right of the applicant therein exists, merely for the purpose of its production as evidence.
    The last component of the Anton Piller order to be considered is whether, ancillary to an interdict, an order should be made for the handing over of the property of another 'to make the interdict effective' where no right to that property exists. This type of order may arise in trade mark cases where the infringing trade mark is sought to be erased and the applicant wants to do that himself.

    28

    This type of order presupposes that the interdict, which prohibits the respondent from utilising that product as long as it contains the infringing trade mark, will be disregarded. This presupposes, even before the order is granted, that the respondent will be in contempt of court and that, should an order be granted that the respondent himself erase the offending work, that order will equally be disregarded. I find this a strange approach. The courts of this country have always acted upon the basis that their orders are complied with and, if not, the procedure for committal for contempt of court is effective. There is no reason to make this order and in law the court has no power to order the handing over of the property, for the reasons set out above.'

    29

    In my view it does not follow that because the copyright owner is not the owner of the `offending' copies that he would therefore not be entitled to an order for delivery-up thereof. What section 24(1) of the Act does, in my view, is to grant to the copyright owner relief similar to that granted to the holder of other proprietary rights who complains that his rights have been infringed. The rights of the copyright owner need not be equated to those of the holder, or owner, of other proprietary rights; the section does not, in my view, require or imply that: the section accords the copyright owner relief or remedies similar to that which is available to the owner of other proprietary rights. Mr Serrurier did not contend that the owners of other proprietary rights is not entitled to an order for delivery-up of `offending' copies. It therefore follows, in my view, that if the owners of such rights are entitled to orders for delivery-up then the applicant in this matter would also be entitled to such an order in terms of section 24(1) of the Act.

    30

    Furthermore, I do not think, in any event, that the above quoted passage in the judgment of Van Dijkhorst J in Cerebos, supra can be regarded as authority for the submission made by Mr Serrurier. In the Cerebos-matter the court was not concerned with the remedies of, or the relief available to, the holders of rights of a proprietary nature.

    31

    The second reason, why, in my judgment, the submission made by Mr Serrurier cannot be accepted, is that orders of this nature have, in the past, been granted by our courts in favour of the copyright holder. In Paramount Pictures Corporation v Video Parktown North (Pty) Ltd 1983 (2) SA 251 (T) McCreath J made an order in favour of the holder of the copyright in the films with which the court was concerned, for the delivery-up of the `offending copies'. This order was the subject of attack on appeal before the Full Bench in Video Parktown North, supra. The appeal against this order was dismissed by the Full Bench. See Video Parktown North, supra, at 636 I.

    32

    In Galago Publishers (Pty) Ltd and another v Erasmus 1989 (1) SA 276 (A) the court a quo made an order in favour of the copyright owner for the delivery-up of all copies of the infringing work. On appeal the Appellate Division did not specifically deal with this order of the court a quo as no objection was taken to it. See Galago Publishers, supra, at 194 F-G.

    33

    I cannot accept that the court in Video Parktown North, supra, and the Appellate Division in Galago Publishers, supra, would have allowed the orders to stand, even if no objection was taken to them, if a copyright owner was not, in law, entitled to such an order as was contended by Mr Serrurier. In Fax Directories (Pty) Ltd v SA Fax Listings CC 1990 (2) SA 164 (D) a similar order was granted. Admittedly, the order was granted without the court considering the question of whether or not the holder of the copyright was entitled to the order. The case is, however, at least authority for the proposition that our courts have invariably granted orders of this nature of the holder of copyright.

    34

    In regard to the other arguments advanced by Mr Serrurier I have come to the conclusion that they, too, cannot be upheld. I agree with Mr Puckrin's submission, namely that it has been shown on the papers that the respondents have made themselves guilty of a flagrant breach of their duty not to infringe applicant's copyright in the relevant drawings listed in schedule `HE 7' to the founding affidavit of Mr Heikki Euro. The respondents have not taken the court into their confidence by stating that they have no other copies of those drawings in their possession. This they could easily have done. Applicant was also not a party to the obtaining of the Anton Piller order and was not involved in its execution. Applicant cannot, therefore, vow for the fact that the respondents still have copies of the relevant drawings in their possession. This is something exclusively within the knowledge of the respondents and they have chosen not to take the court into their confidence. It does not lie in their mouths, therefore, to say that applicant has not shown that they are still in possession of any copies of the drawings. In view of the fact that copies of these drawings were in fact found in the possession of the respondents when the Anton Piller order was executed and the fact that applicant has proved that at least the third respondent had been instrumental in stealing copies of the drawings under the control of Bateman, I would have thought that the respondents would have regarded it their duty to be frank with the court and to have disclosed to the court whether or not they still have copies of the drawings in their possession. This, as I have said, they have failed to do. Under these circumstances it seems to me that the inference is almost an irresistible one that they still have copies of the drawings in their possession. In my view applicant is therefore entitled to an order in terms of prayer (b)(i).

    35

    As far as prayer (b)(ii) is concerned the applicant has also proved incontestably that respondents have caused parts to be manufactured by their sub-contractor, Rocoal Mining Equipment Supplies (Pty) Ltd (`Rocoal'). These parts could only have been manufactured by making use of applicant's drawings or copies thereof.

    36

    For the same reasons why an order in terms of paragraph (b)(i) will be granted the applicant is, in my view, entitled to an order in terms of paragraph (b)(ii) of the notice of motion.

    37

    In regard to paragraph (b)(iii) Mr Puckrin conceded that the relief has been too widely framed. The applicant is not entitled to delivery-up of the respondents' factory, so to speak. What applicant is entitled to is an order for the delivery-up of the appliances used for the manufacture of the parts referred to in paragraph (b)(ii) of the Notice of Motion. In terms of section 24(1) of the Act an owner of copyright is entitled to delivery-up of `plates used or intended to be used for infringing copies ....'. The word `plate' is defined in section 1 of the Act so as to include `any stereotype, stone, block, mould, matrix, transfer, negative or other similar appliance'. Mr Puckrin submitted that the appliances referred to in paragraph (b)(iii) of the Notice of Motion are in fact the `plates' referred to in section 24(1) of the Act. I did not understand Mr Serrurier to contest this. No other argument was advanced by Mr Serrurier why an order in terms of paragraph (b)(iii) should not be granted. It follows therefore that an order in terms of that paragraph of the Notice of Motion, suitably amended, will also have to be granted.

    38

    PARAGRAPH (c)

    39

    This paragraph is also concerned with drawings which are the property of the applicant. The relief claimed is accordingly of a vindicatory nature.

    40

    During argument Mr Puckrin conceded that it would not be necessary, in the event of the order being granted, to demand of the respondents that they compile a list of the drawings. In the event of the order being granted he suggested that it be granted in an amended form so as to direct the respondents to deliver-up to the applicant drawings belonging to the applicant.

    41

    Mr Serrurier submitted that, on the probabilities, respondents do not have any other drawings in their possession after the execution of the Anton Piller order. He also submitted that applicant has not proved that respondents have any drawings in their possession which belong to the applicant.
    Once again I regard it as an important factor that the respondents have not stated under oath in their answering affidavits that they do not have any such drawings in their possession. Once again I must also make mention of the fact that applicant has showed, by means of the affidavit of Mr Pretorius, Annexure `HE 6' to the founding affidavit, that respondents have been in possession of a number of drawings. It also appears from paragraphs 22 and 23 of Mr Pretorius' affidavit that the respondents must have had drawings in their possession which would have enabled them to give a quotation for a complete refurbishment of a TORO 200D-machine. These drawings could only have been obtained from Bateman which, in turn had the drawings of the applicant under its control. As I understand the matter, there is nothing to show that those drawings which the respondents must have had in their possession, were also attached by the deputy sheriff when he executed the Anton Piller order. If that were so, the respondents could easily have said so. What is more, there is also no proof that the Anton Piller order was executed at all the places or addresses of the respondents where they could possibly have kept documents or drawings. Once again, bearing in mind that this is also a matter within the exclusive knowledge of the respondents, it is rather significant that the respondents have not told the court that they do not have any drawings, other than those listed in schedule `HE 7' of the founding affidavit, in their possession.
    In paragraphs 29 and 30 of the founding affidavit and in paragraphs 16 and 20 of Mr Pretorius' affidavit it is alleged that the respondents must have been in possession of the so-called `fabrication drawings' in order to have been able to have manufactured certain components or parts of TORO machines. In paragraph 54 of the founding affidavit it is stated that there are indications that the respondents have filched a substantial number of, if not all, the drawings relating to at least one entire machine in the TORO product line. This allegation is confirmed in paragraph 22 of Mr Zille's affidavit, Annexure `HE 23' to the founding affidavit. In paragraph 56 of the founding affidavit it is also stated that the respondents have other drawings in their possession which they have filched from Bateman. This allegation should be read in the light of what Mr Pretorius has stated in paragraphs 22 and 23 of his affidavit to which I have referred above. The respondents have chosen, for reasons better known to themselves, not to deal in any detail with these allegations and they have not put forward any factual averments to contradict the allegations made by the applicant. Under these circumstances I agree with Mr Puckrin's submission namely that as the papers stand at present the respondents do have drawings in their possession, other than those listed in schedule `HE 7', which belong to the applicant.

    42

    I am therefore satisfied that the applicant has made out a case for the relief sought in paragraph (c) of the Notice of Motion.

    43

    PARAGRAPH (d)

    44

    Mr Puckrin submitted that the judgment of the Full Bench of this Division in Video Parktown North, supra, which held that the remedy of an account of profits was a substantive remedy that it had been removed from the South African Law of Copyright in the Act was wrong. I am, however, bound by the aforesaid judgment and I accordingly refrain from expressing any opinion on the interesting questions whether or not the remedy is merely a procedural one or a substantive one and whether or not it forms part of our law. See also J L & J E Walter Enterprises (Pvt) Ltd v Kearns 1990 (1) SA 612 ZHC at 616 B-F.

    45

    It follows, therefore, that applicant is not entitled to an order in terms of paragraph (d) of the Notice of Motion and that that prayer will have to be dismissed.

    46

    PARAGRAPHS (e) and (f)

    47

    Paragraph (e) is a prayer for an award of additional damages in the sum of R2 000 000 and an order that the respondents should pay that amount jointly and severally. Paragraph (f) is a prayer, in the alternative to prayer (e), for an order referring the matter for the hearing of oral evidence so that the question of additional damages may be investigated and determined by the court.

    48

    In paragraph 53 of the founding affidavit it is stated that the applicant and its predecessors have spent between R10 000 000 and R14,4 million in developing the TORO product range. On the basis then of the respondents having stolen all the drawings relating to at least one entire machine in the TORO product line, it is suggested in paragraph 54 of the founding affidavit that they have avoided at least R2 000 000 in costs of development. In paragraph 16 of the applicant's replying affidavit it is stated that the respondents have gained an advantage of at least R2 000 000 through their theft and dishonest copying of applicant's drawings which enabled them to manufacture, or procure the manufacture of TORO parts without having to invest any money.

    49

    These allegations of the applicant must also be read in the light of its allegations in paragraphs 55, 56 and 57 of the founding affidavit namely that effective relief would not otherwise be available to the applicant.

    50

    In terms of section 24(3) of the Act an owner of copyright is entitled under the circumstances therein set out, to recover additional damages. For present purposes it is not necessary for me to express any opinion on the true nature of the damages recoverable under this section of the Act; a matter about which there exists differences of opinion. See Priority Records (Pty)

    51

    Ltd v Ban-Nab Radio & TV; Gramophone Record Co (Pty) Ltd v Ban-Nab Radio & TV 1988 (2) SA 281 (D); CCP Record Co (Pty) Ltd v Avalon Record Centre 1988 (1) SA 445 (C) at 449I-450A.

    52

    The question in the present matter is whether or not I ought to make an order in terms of paragraph (f) of the Notice of Motion and either refer the matter for the hearing of oral evidence or for trial in terms of Rule 6(5)(g) of the Uniform Rules of Court.

    53

    Mr Serrurier submitted, firstly, that such an order ought not to be granted because the applicant had no basis for not anticipating a dispute of fact in regard to the question of damages and, accordingly, should not have proceeded by way of an application but should have instituted an action. For this submission he relied upon R Bakers (Pty) Ltd v Ruto Bakeries (Pty) Ltd 1948 (2) SA 626 (T) at 630-631 and Room Hire Co (Pty) Ltd v Jeppe Street Mansions (Pty) Ltd 1949 (3) SA 1155 (T) at 1159-1162.

    54

    I do not think that it would be correct to say that the applicant had no basis for not anticipating a dispute of fact in regard to the question of damages. If regard is had to the overwhelming proof of unlawful infringement of copyright by the respondents it is not difficult to understand that the applicant might have thought that no real dispute of fact in regard to the question of damages would arise. It should also be borne in mind in this regard that it is only a certain kind of dispute of fact which has to be foreseen in order to disqualify motion proceedings as the appropriate form of procedure. See Cullen v Haupt 1988 (4) SA 38 (C) at 40F-41B. In any event, the applicant would still be entitled to ask the court to refer the matter for the hearing of oral evidence, or for trial, in the event of the court being of the opinion that the disputes of fact cannot be resolved on the papers. See Marques v Trust Bank of Africa Ltd and another 1988 (2) SA 526 (W); Fax Directories (Pty) Ltd v S A Fax Listings CC, supra , at 167 C-J. I therefore remain unpersuaded that the order should be refused merely on this basis.

    55

    Mr Serrurier contended, in the second place, that Rule 6(5)(g) only permits the hearing of oral evidence on `specified issues with a view to resolving any dispute of fact ...' or a referral of `the matter' to trial. Relying upon cases such as Room Hire, supra at 1161 and Atlas Organic Fertilizers (Pty) Ltd v Pikkewyn Ghwano (Pty) Ltd 1978 (4) SA 696 (T), Mr Serrurier further submitted that it would be inappropriate to make an order in terms of paragraph (f) of the Notice of Motion in the present case. More specifically, submitted Mr Serrurier, Rule 6(5)(g) excludes the possibility of referring the present matter to trial only in so far as the question of damages is concerned because `the matter' will not then be referred to trial but only a portion thereof and that would result in a piecemeal hearing of the case; something which should not be permitted.

    56

    It is true that the courts have consistently declined to regard motion proceedings as appropriate for the determination and recovery of damages. For that reason they have refused to refer questions of damages for the hearing of oral evidence or for trial. A factor which must, in the present case, also be taken into account is the question of how the matter is going to be conducted if the question relating to damages is referred to trial. Mr Puckrin has suggested that the court could give the necessary directions if the parties are unable to agree in regard to the future pleadings. The problem I have with this suggestion is that, in terms of Rules 17(1), 17(2) and 18(10) of the Uniform Rules of Court, a combined summons will have to be issued by the applicant if the matter is referred to trial and it is ordered that the founding affidavit should stand as the summons or letter of demand. In view of the lack of particularity in the founding affidavit and the replying affidavit about the damages suffered by the applicant, the court would be doing the respondents an injustice if it is ordered that the matter be referred for the hearing of oral evidence or that the founding affidavit should stand as the applicant's combined summons. This aspect distinguishes the present case from other cases, eg Pressma Services (Pty) Ltd v Schuttler and another, 1990 (2) SA 411 (C), where the affidavits were ordered to stand as pleadings. Therefore, if the applicant will, in any event, have to file a combined summons I can see no real advantage to be gained by the applicant by requesting the court to refer the matter for trial for adjudication of the question of damages.

    57

    In regard to Mr Serrurier's argument that the court is in any event precluded from referring the question of damages to trial because that would result in a piecemeal hearing of the matter as opposed to `the matter' being referred to trial for hearing, I should state that I disagree with that argument. I do not think that the court is precluded, in principle, in terms of Rule 6(5)(g) to refer a particular aspect to trial. See Tamarillo (Pty) Ltd v B N Aitken (Pty) Ltd 1982 (1) SA 398 (A) at 430F-431C.

    58

    I am therefore of the opinion, in the light of the aforegoing, that it would not be proper to make an order in terms of paragraph (f) of the Notice of Motion but that it would be more correct not to make any order on this prayer as well as on prayer (e).

    59

    PARAGRAPH (g)

    60

    This paragraph relates to costs. During argument Mr Puckrin has conceded that, in the event of the applicant being successful, it would not be entitled to an order for costs on the scale as between attorney and own client. I think that this concession was correctly made. Mr Puckrin submitted that an order granting the applicant costs on the ordinary attorney and client scale would be appropriate in the present matter.

    61

    The respondents have most certainly behaved in a scandalous manner.

    62

    They have filched the applicant's drawings which were under the control of Bateman. They have used these drawings to manufacture components for machines which they have sold to clients of theirs in direct competition with Bateman. They have persistently denied that they have infringed the applicant's copyright. They have persistently denied that applicant is the owner of the copyright subsisting in the drawings. It was only at the commencement of the hearing that the respondents have made the concessions to which I have referred above.

    63

    Mr Serrurier submitted that the applicant should be ordered to pay the costs of this application. He argued that as early as September 1989 the respondents offered an undertaking to applicant's attorneys not to infringe applicant's copyright in future. This undertaking was contained in a letter written by respondents' attorneys and a copy of which is Annexure AMP 4 to the first respondent's answering affidavit. Mr Serrurier further submitted that applicant should have accepted that undertaking and should therefore not have instituted the present application as there was, since September 1989, no reason to suspect that respondents would not honour the undertaking. This undertaking was again repeated in a written tender which was filed of record on 4 May 1990. The applicant has therefore made itself guilty of an abuse of the process of the court by instituting the present application, submitted Mr Serrurier.

    64

    I do not agree with these submissions by Mr Serrurier. The so-called undertaking of September 1989 was given on the basis of respondents denying having infringed applicant's copyright and on the further basis that applicant had no cause of action against them. The tender of the relief claimed in paragraph (a) of the Notice of Motion which is contained in the aforesaid written tender was tendered on the basis that respondents do not admit any of the allegations made by the applicant in the papers.

    65

    In my opinion both the undertaking and the tender were given in terms and under circumstances which justified the applicant in rejecting them. The applicant all along, since August 1989, had reason to believe that its rights have been flagrantly infringed in a scandalous manner. As the owner of the copyright subsisting in the drawings it had every right to take effective steps to protect its copyright. Any undertaking by the respondents could have been justifiably viewed with suspicion by the applicant because of the facts which were disclosed to it by Mr Pretorius and Mr Nkhethoa and by what was attached by the deputy sheriff when he executed the Anton Piller order. The applicant had every reason in the world to be suspicious of the respondents and to be wary to place any reliance upon what the respondents say. Furthermore, in so far as the applicant was not in a position to exercise control over the litigation between Bateman and the respondents, unless it also became a party to that litigation, it was justified in taking the necessary steps to protect its rights.

    66

    I have therefore come to the conclusion that applicant is entitled to an order for costs on the scale as between attorney and client.

    67

    It was not contested by Mr Serrurier that the present matter justified the employment of two counsel by the applicant.

    68

    In regard to the costs incurred by applicant's attorney in travelling to Finland to collect and collate the necessary evidence, I think that I would be usurping the taxing master's functions if I make an order awarding these costs to the applicant. In my view it is a matter for the decision of the taxing master and I am not prepared to award those costs to applicant without the taxing master having considered the matter. See also Cambridge Plan AG v Cambridge Diet (Pty) Ltd & others 1990 (2) SA 574 (T) at 604G-605D.

    69

    Although the applicant has not succeeded in obtaining an order in its favour on paragraphs (e) and (f) of the Notice of Motion, I am of opinion, as was also contended by Mr Puckrin, that the applicant still has achieved substantial success. It is obvious from the papers that the most important part of the application was the question concerning the applicant's copyright and the infringement thereof. The applicant has been successful in vindicating its rights. The question whether or not the applicant is entitled to the relief sought in paragraphs (e) and (f) of the Notice of Motion was a subsidiary one and I do not think that it played such an important role so as to warrant a special order of costs.

    70

    In the result the following order is made:
    1. An order is granted:

    71

    1.1 interdicting the respondents from their continued, direct and indirect, infringement of the applicant's copyright in the drawings listed in schedule HE7 to the founding affidavit deposed to by Heikki Euro; 1.2that the respondents deliver-up to the applicant all—

    72

    (i) two-dimensionalreproductionsoftheapplicant'sdrawingslistedinthe aforesaid schedule HE 7 in the possession or under the control of any respondent or any contractor of a respondent;

    73

    (ii)three-dimensional reproductions of the applicant's drawings listed in the aforesaid schedule HE 7 in the possession or under the control of any respondent or any contractor of a respondent; and

    74

    (iii) tools, dies, jigs and other tooling appliances used for the manufacture of the three-dimensional reproductions of the applicant's drawings listed in the aforesaid schedule HE 7;

    75

    1.2 that the respondents deliver-up to the applicant all drawings, other than the drawings listed in the aforesaid schedule HE 7, which are legally the property of the applicant and which are in the possession or under the control of the respondents or any contractor of a respondent;
    1.3 that the respondents pay the applicant's costs on the attorney and client scale, such costs to include the costs of the employment of two counsel;

    76

    2. No order is made on paragraphs (e) and (f) of the Notice of Motion.

    77

    3. The claim for an account of profits and payments thereof by the respondents jointly and severally, is dismissed.

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