Frank & Hirsch (Pty) Ltd v a Roopanand Brothers (Pty) Ltd

• Jurisdiction: South Africa
• Citation: 1993 (4) SA 279 (A)

Frank & Hirsch (Pty) Ltd v a Roopanand Brothers (Pty) Ltd
1993 (4) SA 279 (A)

1993 (4) SA p279

Citation	1993 (4) SA 279 (A)
Court	Appellate Division
Judge	Corbett CJ, Botha JA, Goldstone JA, Nicholas AJA and Harms AJA
Heard	May 3, 1993
Judgment	June 2, 1993

Flynote : Sleutelwoorde

Copyright — Infringement of — What constitutes — Section 23(2) of Copyright Act 98 of 1978 (prior to amendment by Copyright Amendment Act 125 of 1992) — Words 'would have constituted such infringement if the C article had been made in the Republic' in s 23(2) applicable only to article imported into South Africa — Court required to make hypothesis that imported article made in South Africa by person who in fact made it — If person who made article could not, without infringing copyright, have made it in South Africa, then person who, with requisite knowledge D and without licence, imports article into South Africa and sells and distributes it commits infringement of copyright.

Copyright — Infringement of — Remedies — Interdict and order for delivery up — Orders often sought against defendant or respondent, 'its servants and agents' — Such formula misleading and ineffectual and to be E discarded — Order to be granted simply against defendant or respondent.

Headnote : Kopnota

A claimant for protection against infringement of copyright under s 23(2) of the Copyright Act 98 of 1978 (prior to its amendment by the Copyright Amendment Act 125 of 1992) must prove (a) that he is the owner or the assignee of the copyright in the articles for which protection is claimed; F (b) that the defendant either imported into South Africa the articles in issue for a purpose other than for his private or domestic use, or sold, let or by way of trade offered or exposed for sale or hire in South Africa the articles in issue, or distributed in South Africa the articles in issue for the purposes of trade or for any other purpose to such an extent that the owner of the copyright in question was prejudicially affected; (c) that to the defendant's knowledge the making of the articles in issue either (i) constituted an infringement of the claimant's copyright, or G (ii) would have constituted such an infringement if the

1993 (4) SA p280

A articles had been made in South Africa; and (d) that the defendant had no licence from the owner to do what he had done.

The words 'would have constituted such an infringement if the article had been made in the Republic' in s 23(2) can only apply to an article imported into South Africa. The hypothesis which the Court is then required to make in terms of those words is that the imported article was B made in South Africa by the person who had in fact made it. If that person could lawfully have made it in South Africa, there is no infringement of copyright (see Twentieth Century Fox Film Corporation and Another v Anthony Black Films (Pty) Ltd 1982 (3) SA 582 (W) at 589H-594H). It follows, as a logical corollary, that, if the person who made the article could not lawfully (ie without infringing copyright) have made it in South Africa, a person who, with the requisite knowledge and without licence, imports the article into South Africa or sells and distributes here commits an infringement of copyright in terms of s 23(2).

C In casu, where (1) TDK Electronics, a Japanese manufacturer of, inter alia, blank audio cassette tapes, had appointed the appellant as the sole distributor of its products in South Africa and had later assigned to the appellant all its copyright in the get-up of the tapes; (2) it was held by the Court that there was in the get-up of the tapes subject-matter enjoying copyright protection; (3) the respondent had imported into and sold and distributed in South Africa blank TDK cassette tapes with the get-up in which copyright in South Africa had been assigned to the D appellant (the respondent's supplies had legitimately been obtained from a Singapore company); and (4) despite the appellant's formally notifying the respondent that it (the appellant) was the assignee of the copyright in the get-up adopted by TDK Electronics for the tapes and that the importation, sale and distribution by the respondent of the tapes in that get-up would constitute infringement of the appellant's copyright, the respondent continued importing, distributing and selling the tapes,

E Held, since the assignment of the South African copyright in respect of the get-up of the tapes had vested in the appellant exclusively all the rights comprehended by the South African copyright and had divested TDK Electronics thereof, that, hypothetically, the making in South Africa of the get-up of the tapes by TDK Electronics would have constituted an infringement of the appellant's copyright.

Held, further, that in its correspondence with the respondent the appellant had placed before it sufficient facts from which the respondent F could and should have appreciated that its commercial activities relating to the tapes in issue constituted an infringement of the appellant's copyright.

Held, accordingly, that the appellant had established all the requirements of s 23(2) of the Act and was thus entitled to an interdict and to an order for the delivery up of the infringing matter in the respondent's possession or under its control. Appeal allowed.

The appellant had sought an order for delivery up against 'the respondent, its servants and agents'. The Court held that it was appropriate to G discard what was in truth a misleading and ineffectual formula and simply to grant, in copyright and other intellectual property cases, orders, whether for an interdict or delivery up, as against the defendant or respondent, as the case might be.

The decision in Frank & Hirsch (Pty) Ltd v A Roopanand Brothers (Pty) Ltd 1991 (3) SA 240 (D) reversed. H

Case Information

Appeal from a decision in the Durban and Coast Local Division (Booysen J) reported at 1991 (3) SA 240. The facts appear from the judgment of Corbett CJ.

C E Puckrin SC (with him Ms M M Jansen) for the appellant referred to the following authorities: Copyright Amendment Act 125 of 1992; Dean I Handbook of South African Copyright Law ss 1-8, 1 - 24, 4 - 173 - 4, 174A; Gramophone Co Ltd v Music Machine (Pty) Ltd and Others 1973 (3) SA 188 (W); Twentieth Century Fox Film Corporation and Another v Anthony Black Films (Pty) Ltd 1982 (3) SA 582 (W); Columbia Pictures Industries Inc v Videorent Parkmore 1982 (1) SA 49 (W); Columbia Pictures Industries Inc v Video Parktown North (Pty) Ltd 1983 (2) SA 251 (T); C Visser 'Termination J of Copyright by Accession and Specification' (1991) 54 THRHR at

1993 (4) SA p281

A 813, 817 n 8; Aldine Timber Co v Hlatswayo 1932 TPD 337 at 341; Galago Publishers (Pty) Ltd v Erasmus 1989 (1) SA 276 (A) at 285F; Laddie, Prescott and Vitoria The Modern Law of Copyright para 10.66 at 356; Paramount Pictures Corporation v Video Parktown North (Pty) Ltd 1983 (2) SA 251 (T); Montres Rolex SA v Kleynhans 1985 (1) SA 55 (C); Video B Parktown North (Pty) Ltd v Paramount Pictures Corporation 1986 (2) SA 623 (T); Dean 'Account of Profits in South African Copyright Law' (1986) 103 SALJ 103; Braby v Donaldson 1926 AD 337; the Copyright Act 98 of 1978; Grotius 2.8.2; Voet 41.1.21.

A Findlay SC (with him A K Kissoon Singh) for the respondent referred to the following authorities: Frank & Hirsch (Pty) Ltd v Roopanand Brothers C 1987 (3) SA 165 (D) at 184H-185E, 185G-H; Aldine Timber Co v Hlatswayo 1932 TPD 337 at 341; Voet 41.1.21 (Gane's translation vol 6 at 203); Lee and Honoré Family, Things and Succession 2nd ed para 313 at 270, para 324 at 274; Khan v Minister of Law and Order 1991 (3) SA 439 (T) at 442I-443E; Van der Merwe and De Waal 1986 THRHR 66 at 70, 71; Huber's Jurisprudence of my Time D 2.6.2 (Gane's translation vol 1 at 131); Grotius Introduction to Dutch Jurisprudence 2.10.4 (Maasdorp's translation at 76); S v Riekert 1977 (3) SA 181 (T) at 182H; Joubert (ed) The Law of South Africa vol 27 para 135 at 120; Davis v Comitti (1885) 52 LTR 539 (Ch D) at 540; South African Railways & Harbours v Huddy Diamond Crown Setting Co (Pty) Ltd 1953 (4) SA 467 (A) at 472H; Ruddy Diamond Crown Setting Co (Pty) Ltd v E South African Railways & Harbours 1953 (2) SA 713 (W) at 718B-719G; CBS Inc v Ames Records Ltd [1981] 2 All ER 812 (Ch) at 830b - d; Chowles and Webster SA Law of Trade Marks 2nd ed at 205; Universal Stores Ltd v OK Bazaars (1929) Ltd 1973 (4) SA 747 (A) at 761C; Alfred McAlpine & Son (Pty) Ltd v Transvaal Provincial Administration 1977 (4) SA 310 (T) at 335A; Laddie, Prescott and Vitoria The Modern Law of Copyright para 10.68 F at 357-8; Performing Rights Society Ltd v Mattysen 1941 NPD 269 at 275; Video Parktown North (Pty) Ltd v Paramount Pictures Corporation 1986 (2) SA 623 (T) at 641H-642B; Braby v Donaldson 1926 AD 337; Gramophone Record Co (Pty) Ltd v Ban-Nab Radio & TV 1988 (2) SA 281 (D) at 292C-E; John Bell & Co Ltd v Esselen 1954 (1) SA 147 (A) at 152D-154H; Montres Rolex SA v G Kleynhans 1985 (1) SA 55 (C) at 69H-I; Euromarine International of Mauren v The Ship Berg 1986 (2) SA 700 (A) at 713G-H; Paramount Pictures Corporation v Video Parktown North (Pty) Ltd 1983 (2) SA 251 (T) at 262E-263B; Atlas Organic Fertilisers (Pty) Ltd v Pikkewyn Ghwano (Pty) Ltd 1978 (4) SA 696 (T) at 699B-C; Continental Wholesalers v Fashion Fantasy H (Pty) Ltd 1983 (1) SA 683 (D) at 686H.

Cur adv vult.

Postea (June 2).

Judgment

I Corbett, CJ.:

This case is concerned with what has become known as 'parallel importation' and it represents an attempt to prevent this by means of the law of copyright. In the Court a quo, the Durban and Coast Local Division, the attempt failed. The appeal to this Court seeks the reversal of the decision of that Court, which has been reported (see Frank & Hirsch (Pty) J Ltd v A Roopanand Brothers (Pty) Ltd 1991...