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

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

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

ABSTRACT

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 with which it is paralleled and private international law principles applicable

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

on the authority of local courts on what is a ubiquitous concern for rights holders is a

matter with f ar-reaching consequen ces.

KEYWORDS: copyr ight; South Africa; jurisdiction; territor iality; private international

law; immovable inco rporeal propert y

 

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

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

enforced by individual countries, a patchwork of distinct national norms of

protection. In line with this doctrine, South African courts have imposed

a bar on both personal and subject-matter jurisdiction of foreign copyright

infringement cases. In instances where jurisdiction in private international

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

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

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

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

copyright infringement in South Africa must bring 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 from the fact that South African courts

inherited Roman-Dutch rules and principles relating to the exercise of

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

seized with jurisdiction, there must be some link or ‘connecting factor’, also

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

has authority and the parties or facts of the dispute.2 Determining whether

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

‘(a) the nature of the proceedings, (b) the nature of the relief claimed therein

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

With respect to part (a) of the enquiry, the court 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 action involving property

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

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

to give a meaningful judgement. Therefore, a Roman-Dutch jurisdiction

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

the doctrine of effect iveness.5

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

dealing with copyright in this process is that it may arguably comprise

both pecuniary rights as property and personal rights in the form of ‘moral

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

as intellectual property 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 transferred, i.e. registered.7 Copyright, with

generally no registration formalities required for subsistence and the moral

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

determining jurisdiction. That was one of the main tasks of the court in the

case under discussion in t his contribution.

In Gallo Africa Ltd and Others v Sting Music (Pty) Ltd and Others 2010

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

African local incola company, for copyright infringement in relation to the

musical Umoja. Gallo Africa, having established itself as owners of the

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

infringed this copyright by performing 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 Lek1979 (3) SA 1048 (a). Approved by the App ellate Division in Hugo v

Wessels1987 (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 OilCorporation1963 (3) SA 341 (A)

para [34 8].

68 South African Intellectual Property Law Journal (2021) 9

© Juta and Company (Pty) Ltd