Twentieth Century Fox Film Corporation and Another v Anthony Black Films (Pty) Ltd

• Jurisdiction: South Africa
• Judge: Goldstone J
• Judgment Date: 17 December 1981
• Citation: 1982 (3) SA 582 (W)
• Court: Witwatersrand Local Division

Goldstone J:

The applicants are associate companies. the first applicant is registered in the State of Delaware in the United States of America A and the second applicant in London, England. The first applicant makes cinematograph films. The second applicant makes, distributes, sells and leases video cassette copies of such films. It is common cause that the respondent sells video cassette copies of films in South Africa. It is also common cause that the cassettes of the first applicant's films sold B by the respondent were purchased by the respondent in England. They were lawfully made there by the second applicant.

In their founding affidavit the applicants have sought to establish the copyright of the first applicant in three of such films, namely 'Fantastic Voyage', 'The Turning Point' and 'All About Eve'. They seek wide and far-reaching relief against the respondent in order to protect the copyright of the first applicant. In particular they seek to C interdict the respondent from importing the cassettes for sale, letting or by way of trade offering or exposing them for sale or hire. There are also claims for the delivery to the applicants of the copies of the applicants' films in the respondent's possession, or under its control.

D Orders are sought compelling the respondent to furnish information on affidavit relating to cassettes it has imported into the Republic, and as to what has happened to such cassettes. A statement of account in respect of the respondent's dealings with the cassettes is also claimed as also discovery of the respondent's relevant books and records.

Urgency:

E On behalf of the respondent it was submitted that the application was not of sufficient urgency to have justified the procedure adopted by the applicants. The notice of motion and supporting affidavits run to some 320 pages. The certificate of urgency and notice of motion are both dated 4 December 1981. They were served formally on 7 December 1981 and F the matter was set down for hearing on 8 December 1981. Respondent has filed an answering affidavit under protest, and a short replying affidavit has also been filed of record.

The urgency relied upon by the applicants is founded upon the following facts:

1.

The first applicant is the owner of the copyright in the films G which are recorded on the cassettes in which the respondent is trading.

2.

Such films cost many millions of rands to make.

3.

Some months ago the respondent attempted to obtain rights from the second applicant to import the first applicant's films into the Republic for the purposes of trade. That attempt was unsuccessful.

4.

H No person in South Africa has been licensed, or otherwise authorised, to import video cassette copies of the cinematograph films in respect whereof the first applicant has copyright.

5.

In order to make a profit from the making of a film the first applicant embarks on a marketing strategy designed to ensure the highest possible income from the exploitation of the film, including video cassette rights.

6.

The effect of infringement is described as follows by Mr Lawrence K Harris, the vice-president business affairs, of the first applicant:

Goldstone J

'24.3

Incorrect or illegal release of films or video cassette copies thereof can destroy a large portion of the potential income of such film or video cassette copies thereof and could amount to A substantial irrevocable damages to the owners of copyright and licences thereof. The infringement of copyright as at presently perpetrated by Black is being carried out without reference to Fox as copyright owners and without regard to Fox's marketing strategy for video cassette copies of cinematograph films, and Black is not accounting to Fox or any licensee of Fox for any revenue arising from such infringement of copyright, and B is therefore causing irreparable harm to Fox by, inter alia, reducing the revenue which ultimately Fox will be entitled to derive from the authorised release of video cassette copies of cinematograph films including these films in which Fox owns copyright within the Republic of South Africa.

24.4

The infringing, selling and offering for sale of video cassette copies of the films prejudicially affects Fox and Black, without any regard to the rights of Fox and without regard to Fox's C marketing strategy relative to video cassette copies of Fox, is reducing the ultimate value and benefit to Fox in respect of its video cassettes in the Republic of South Africa.

24.5

Loss of revenue to Fox and other legitimate owners of copyright in the Republic of South Africa runs into many millions of D dollars and/or rands, and notwithstanding the fact that Black may keep detailed records it will be extremely difficult in due course to establish with certainty damages occasioned by Black's wrongful and infringing conduct in regard to video cassette copies of Fox's cinematograph films and Fox's being severely prejudiced by non-payment of revenues and royalties, which would legitimately be due but for Black's infringement of copyright.'

E Harris goes on to state that the respondent's conduct is considerably reducing the marketable value of video cassettes in South Africa and that potential licensees would be loth to expend substantial amounts on cassettes already marketed by the respondent in South Africa.

On behalf of the respondent it was submitted that the first applicant's F delay from the date it received knowledge of the respondent's activities, namely 8 September 1981, until its investigation began on 9 November 1981, precluded the applicants from relying upon urgency. That investigation was conducted by Patricia H Ganz, an executive in the employ of the first applicant in California. Ganz was occupied on G business in Portugal from 20 September until mid-October 1981. The senior executive of the first applicant, who Ganz was required to consult prior to departing for South Africa, was one Steven R Roberts. She met with him on 30 October 1981 when he instructed her to undertake the investigation in South Africa. She immediately applied for a South African visa and, upon obtaining it, travelled to this country. In the H interim, Ganz had sought legal advice on certain material issues from the applicants' Johannesburg attorney.

In its attempt to prove the copyright of the first applicant, it was necessary for the applicants to obtain affidavits from persons in both the United States and in the United Kingdom. The application was launched just less than one month after Ganz arrived in South Africa. The applicants' attorney states that delays were unavoidably caused by reason of the distances involved and the consequent difficulties in communication.

Goldstone J

In Schweizer Reneke Vleismaatskappy (Edms) Bpk v Die Minister van Landbou en Andere 1971 (1) PH F11 (T) TRENGOVE J is reported to have said the following: A

'Volgens die gegewens voor die Hof wil dit vir my voorkom dat die applikant alreeds vir meer as 'n maand weet van die toedrag van sake waarteen daar nou beswaar gemaak word. Die aangeleentheid het slegs dringend geword omdat die applikant getalm het en omdat die tweede respondent soos die applikant lankal geweet het, of moes geweet het, dat die besigheid in Schweizer Reneke geopen het. Die applikant mag gewag B het vir inligting van die eerste respondent soos in die skrywe aangevra, maar dit was geensins nodig vir die doeleindes van hierdie aansoek wat op die nie-nakoming van die audi alteram partem reël gebaseer is om so lank te wag om die Hof te nader nie. Al hierdie omstandighede in ag genome is ek nie tevrede dat die applikant voldoende gronde aangevoer het waarom die Hof op hierdie stadium as 'n saak van dringendheid moet ingryp nie. Ek is dus in die omstandigheid nie bereid C nie om af te sien van die gewone voorskrifte van Reël 6.'

That principle, in my opinion, would clearly have been applicable in the present case if the applicants had been South African companies. However, due allowance must clearly be made in the case of a foreign company, or foreign companies, and more especially in a case such as the D present, where the applicants have international interests which must receive attention from its executives. There is no reason to believe that the applicants have been dilatory in bringing this application, and I was consequently not prepared to refuse to exercise my discretion in favour of the applicants on that account.

E It was then submitted that the matter was not urgent because, as yet, the applicants are not in competition with the respondent. That, however, ignores the stated intention of the applicants to exploit the copyright in video cassettes in South Africa.

The respondent's counsel submitted that there was no urgency in the absence of some serious threat to life or liberty and that the only F urgency here was of a commercial nature. It was because of this factor that the applicants' attorney in fact decided to set the matter down on a Tuesday when the Chamber Court was in any event in session during the Court recess to dispose of unopposed applications.

In my opinion the urgency of commercial interests may justify the invocation of Uniform Rule of Court 6 (12) no less than any other G interests. Each case must depend upon its own circumstances. For the purpose of deciding upon the urgency of this matter I assumed, as I have to do, that the applicants' case was a good one and that the respondent was unlawfully infringing the applicants' copyright in the films in question.

H Having regard to the obviously substantial value of the rights in question, I formed the firm view that an unlawful infringer, if the respondent is one, should not be entitled to a windfall only because the Court happened to be in recess for a period of two months.

In the circumstances, I informed counsel that I was...