Gallo Africa Ltd v Sting Music (Pty) Ltd 2010 (6) SA 329 (SCA) — Revisiting the justiciability of cross-border copyright infringement in South African courts

• Pages: 67-86
• Author: Moloto, T.M.
• Published date: 10 December 2021
• DOI: https://doi.org/10.47348/SAIPL/v9/a4
• Date: 10 December 2021
• Citation: (2021) IPLJ 67

67

https://doi.org/10.47348/SAIPLJ/v9/a4

GALLO AFRICA LTD V STING MUSIC

(PTY) LTD 2010 (6) SA 329 (SCA) —

REVISITING THE JUSTICIABILITY

OF CROSS-BORDER COPYRIGHT

INFRINGEMENT IN SOUTH

AFRICAN COURTS

*

Consultant, World Intellectual Property Organization (Copyright Management

Division), Geneva

ABST RACT

This contr ibution exami nes the basis for and i mplications of the st rictly ter ritorial ap proach

of South Africa n courts in cross-b order copyright inf ringement cases, req uiring litigants

to bring sepa rate infringe ment suits in every cou ntry where inf ringement is alleged. T his

position by the cour ts loosely hinges on princi ples of effectiveness, locality and c omity,

                      

immovable incor poreal propert y. In thi s belated case note, the Roman-D utch law origins

                   

precedent wit h which it is paralleled and priv ate international l aw principles applicable

     

on the authorit y of local courts on what is a ubiqu itous concern for right s holders is a

matter with f ar-reaching consequen ces.

KEYWORDS: copyr ight; South Africa; juris diction; territor iality; private intern ational

law; immovable inco rporeal propert y

  

In terms of the long-est ablished doctrine of ‘territor iality’, copyright has be en

  

enforced by individual cou ntries, a patchwork of distinct national norms of

protection. In line w ith this doctrine, South Af rican courts have imposed

a bar on both personal and s ubject-matter jurisdiction of foreign copyrig ht

infringeme nt cases. In instances where jur isdiction in private internat ional

law denotes the power of the court to a djudicate cases involving a foreign

element (whether the foreign element is incoming — with a work origi nating

in a foreign territ ory but infringed locally, or outgoing — where the work

subsists locally but was inf ringed in a foreign territor y) a claimant of foreign

copyright inf ringement in South Africa must br ing a separate claim in each

country where i nfringement is alleged.

∗ LLB (Universit y of South Africa) LLM (Unive rsity of Johannesbur g).

(2021) IPLJ 67

© Juta and Company (Pty) Ltd

https://doi.org/10.47348/SAIPLJ/v9/a4

Locally, this situation stems f rom the fact that South African cou rts

inherited Roma n-Dutch rules and principles relating to t he exercise of

jurisdiction.1 The principles on jurisdict ion provide that, for a court to be

seized with juris diction, there must be some link or ‘connecti ng factor’, also

known as rationes jur isdictionis, between the territor y within which the court

has authority and t he parties or facts of the dispute.2 Deter mining whether

these connecti ng factors exist and whether a court ha s jurisdiction depends on

‘(a) the natu re of the proceedings, (b) the nature of the relief claimed ther ein

[i.e. effectiveness] or (c) in some cases, both (a) and (b)’.3

With respect to par t (a) of the enquiry, the cour t with authority over the

domicile of the defendant ( forum domicilii rei) would have jurisdiction over an

action in personam. O n the other hand, the court where t he property is located

(forum rei sitae) would have jurisdiction over an act ion involving property

(an action in rem).4 Upon determining t he nature of the proceedings, par t (b)

                 

to give a meaningfu l judgement. Therefore, a Roman-Dutch jurisdiction

enquiry, therefore, involves categorising actions a s well as the application of

the doctrine of effect iveness.5

           

dealing with copyr ight in this process is that it may argu ably comprise

both pecuniar y rights as property a nd personal rights in the form of ‘moral

            

as intellectual pro perty rights (IPRs), have no physical locality, a situs

                                                       6

The general rule relate d to patents and trademark s is that the situs is deemed to

be where they can be effectively tra nsferred, i.e. registered.7 Copyright, with

generally no registrat ion formalities required for subsistence and t he moral

rights dynam ic, makes for a less neat localisat ion exercise for the pur poses of

determin ing jurisdiction. That was one of the mai n tasks of the court in the

case under discussion in t his contribution.

In Gallo Afr ica Ltd and Others v Sting Music (Pty) Ltd and Oth ers 2010

BIP 246 (GSJ) (Gallo Africa HC ), the plaintiff sued Sting Music, a South

Africa n local incola company, for copyright infr ingement in relation to the

musical Umoja. Gallo Af rica, having established itself as owne rs of the

musical by assignment or as origi nal authors, claimed that Sting Music had

infringed t his copyright by performi ng the whole or part of the musical, by

1 CF Forsyth Private Inte rnational La w T he Modern Roman -Dutch Law In cluding the Jur isdiction

of the S Courts 5 ed (2012) 162.

2 Forsyth (n1) at 162.

3 Estate Agents Boa rd v Lek 1979 (3) SA 1048 (a). Approved by the App ellate Division in Hugo v

Wess els 1987 (3) SA 837 (A) para 849H-J and Bisonboa rd Ltd v Braun Woodworking Ma chinery

(Pty) Ltd 1991 (1) SA 482 (A) para [499F].

4 Forsyth (n1) at 116.

5 Forsyth (n1) at 164.

6 Forsyth (n1) at 227.

7 Rembrandt Fabr ikante & Handelaars (Edm s) Bpk v Gulf Oil Corporation 1963 (3) SA 341 (A)

para [34 8].

68 South African Intellectual Property Law Journal (2021) 9

© Juta and Company (Pty) Ltd