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[2018] ZAGPPHC 16
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Claasen and Another v TEC Novation Solution (Pty) Limited and Another (2017/40521) [2018] ZAGPPHC 16 (16 February 2018)
REPUBLIC
OF SOUTH AFRICA
IN
THE HIGH COURT OF SOUTH AFRICA
GAUTENG
DIVISION, PRETORIA
Case
Number: 2017/40521
NOT
REPORTABLE
NOT
OF INTEREST TO OTHER JUDGES
REVISED
DATE:16
February 2018
In
the matter between:
ELDERIE
CLAASEN
First Applicant
ASP
SCHOOL PROJECTS (PTY) LIMITED
Second Applicant
and
TEC
NOVATION SOLUTION (PTY) LIMITED
(Reg
No
2015/080758/07)
First Respondent
GARY
ANTHONY ZWANEPOEL
Second Respondent
JUDGMENT
MOKOSEA
J
[1]
An application was made by the applicant for an order interdicting
and restraining the respondent from
"using"
what the
applicant claims to be
"the first applicant's proprietary
education material comprising school project material in
encyclopaedic format, exam papers,
practice exam papers and study
guides in PDF and/or other format."
It is further claimed
that the copyright is inclusive of
"textbook type educational
material and study notes".
[2]
It is alleged that the respondents proceeded, after a mutual
termination of an agreement, to host and
administer a business
website on behalf of the applicants, to keep the website active for
third parties to access the copyrighted
material, thereby infringing
the applicants' protectable rights.
[3]
The respondents have taken the view that the applicants had not made
out a case that required
the filing of an answering affidavit.
However, a notice in terms of Rule 6(5)(d)(iii) was filed by the
respondents. Rule 6(5)(d)(iii)
of the Uniform Rules of Court provides
as follows:
"(d)
Any person opposing the grant of an order sought in the notice of
motion must-
(iii)
if he or she intends to raise
a
question of law only, he or
she must deliver notice of his or her intention to do
so,
within
the time stated in the preceding subparagraph, setting forth such
question."
[4]
The respondents raised the following questions of law:
Whether
the allegations made by or on behalf of the applicants are sufficient
to underlie a claim for copyright infringement, as
provided for in
terms of the
Copyright Act 1978
and the relevant authorities,
specifically:
1.
Whether the applicants have shown that copyright subsists in the
works to which the application
relates;
2.
Whether the applicants have shown that the first applicant is the
owner of such copyright as is
relied upon;
3.
Whether the applicants have shown that the conduct of each of the
respondents relied upon constitute
an infringement of such copyright
as is claimed to exist.
SUBSISTENCE
AND OWNERSHIP OF COPYRIGHT
[5]
Copyright law in South Africa is embodied in the Copyright Act 98 of
1978 ("the Act").
It governs the right to control the use
of and distribution of artistic and creative works. Section 41(1) of
the Act provides that
no copyright or right in the nature of
copyright shall subsist otherwise than by virtue of this Act or of
some other enactment
in that behalf.
[6]
Copyright is a very technical subject with specific requirements.
Harms JA in the matter of Memory
Institute SA (CC) t/a Memory
Institute v Hansen
2004 (2) SA 630
(SCA) said:
"Copyright,
it has been said, is
a
technical subject and the claimant is
obliged to provide evidence to cover the technical points necessary
to establish the claim
to copyright. Technical or not, any claimant
must prove the facto probanda, whether prima facie for an interim
order or on a balance
of probabilities."
[7]
For a court to grant a final interdict against the respondents , the
court must find
on the evidence presented that:
(i)
the applicants have established a clear copyright in respect of the
works relied upon;
(ii) the
respondents have infringed upon that right; and
(iii)
the absence of a similar protection by any other remedy.
Tele
Atlas Africa (Pty) Limited and another v Afrigis (Pty) Limited (2011]
ZAGPPHC 162 dated 13 May 2011.
[8]
Section 2 of the Act provides that certain works are eligible for
copyright protection if they are original
works. These include
literary works, musical works, artistic works and cinematograph
films.
[9]
The documents in the matter on hand may best be described as a
literary work as defined in the Act.
It includes, irrespective of
literary quality and in whatever mode or form expressed –
(a)
novels, stories and poetical works;
(b)
dramatic works, stage directions, cinematograph film scenarios and
broadcasting scripts;
(c)
textbooks, treatises, histories, biographies, essays and articles;
(d)
encyclopaedias and dictionaries;
(e)
letters, reports and memoranda;
(f)
lectures, speeches and sermons; and
(g)
tables and compilations, including tables and compilations of data
stored or embodied in a computer or a medium
used in conjunction with
a computer, but shall not include a computer program.
[1O]
The first applicant , in her founding affidavit, described the works
as follows:
(i)
''proprietary education material";
(ii)
"a large volume of educational material being available
to subscribers on our websites totalling more than 9 000 individual
files";
(iii)
"Proprietary exam papers'
(iv)
"Personally and originally devised, sourced, developed
and compiled school educational training facts, content and study
material
(complete with visual images, sketches, graphs,
illustrations and photos); school project encyclopaedic information
as
well
as
educational exercised in the form of
proforma or practice exam papers to aid learners in test and
examination preparation, conformant
with school education curricula .
... .[including] text book type educational material and study
notes";
(v)
"9
000 individual files".
[11]
The respondents were of the view that the applicants had failed to
clarify what works the
applicants claim copyright in. No files or
examples of such files were attached to the founding affidavit in
support thereof. Furthermore,
there is no indication that the
materials in the form of
"9000 individual files"
were
original and qualify as literary works as described in the Act.
[12]
The dictum of Southwood J in the matter of
Tele Atlas Africa (Pty)
Limited and another v Afrigis (Pty) Limited (supra)
was brought
to the court's attention. Southwood J said:
"[12]
In order to establish a clear right, the applicants first had to
identify the maps
or digital maps which are alleged to be the subject
of their copyright ...
[16]
The applicants' difficulties start with the identification of the
subject of copyright.
The second applicant's main deponent Mr Grobben
alleges that it is the owner of
a
copyright in
a
number
of printed maps and map data relating to sub-Saharan Africa which
"qualify as literary works (consisting, at the very
least, of a
compilation of an enormous amount of information) and artistic works
in terms of the Act.
[13]
The Applicants, on the other hand, are of the view that evidence to
prove copyright
in a work is adduced by way of allegation in the form
of an affidavit and the mere production of such affidavit is prima
facie
proof of the relevant facts. They referred to Section 26 (12)
(a) which provides as follows:
"(a)
In any proceedings by virtue of this Chapter relating to the
infringement of the copyright in
a
work, evidence to prove
–
(i)
The subsistence of the copyright in that work;
(ii)
The title of any person in respect of such copyright whether
by way of ownership or licence ,
may
be adduced by way of affidavit and the mere production of such
affidavit in such proceedings shall be prima facie proof of the
relevant facts.
(b)
The court before which an affidavit referred to in paragraph (a) is
produced
, may in its discretion order the person who made the
affidavit be subpoenaed to give oral evidence in the proceedings in
question
, or may cause written
interrogatories
to be submitted to such person for reply, and any reply purporting to
be
a
reply from such person, shall likewise be admissible in
evidence in such proceedings ."
[14]
In application proceedings the affidavits take the place of not only
of the
pleadings but also of the essential evidence which would be
led at a trial.
Absa
Bank v Kernsig 17 (Pty) Limited
2011 (4) SA 492
(SCA) at 499A-D
[15]
Copyright is conferred by Section 3 of the Act upon a work of which
the
author is at the time the work is made, "a
qualified
person."
Furthermore, Section 2 of the Act requires the work
to be
"original"
in order for it to be eligible for
copyright protection. The court is, on the documents before it,
unable to ascertain the nature
of the documents seeking protection
specifically whether the author of the works is "a
qualified
person"
and whether the work is
"original".
The
applicants have failed to identify in respect of each work the type
of work it is alleged to be, when the work was authored
and how it
was authored .
[16]
Further in their submission , the applicants claimed that the
subsistence of the copyright had
been
"expressly acknowledged
"
in an agreement between the Second Applicant and the first
Respondent. No evidence of an oral agreement nor a written agreement
between the parties formed part of the papers. The agreement the
applicants sought to place their reliance on is an agreement between
the second applicant who is not the alleged owner of the copyright
and the first respondent.
[17]
The totality of the evidence provided in the affidavits fails to
support a claim to copyright
to discharge the onus showing the
subsistence and ownership of the copyright as claimed.
INFRINGEMENT
OF COPYRIGHT
[18]
As stated above that the
works are literary works, Section 6 and 7 of the Act set out the
restricted acts in respect of literary
works. They are acts which are
reserved for the owner of the copyright in a particular work, or
someone who has been licenced to
perform a particular act in respect
of the copyright work. The relevant acts include reproducing work in
any manner or form, publishing
the work if it was hitherto
unpublished, performing the work in public and even making an
adaptation of the work.
[19]
Section 23 of the Act defines which acts will amount to an
infringement of copyright.
It
provides as follows:
"23
Infringement
(1)
The copyright shall be infringed by any person, not being the
owner of the copyright, who, without the licence of such owner, does
or causes any
other
person to do, in the Republic, any act which the owner has the
exclusive rights to do or to authorise.
(2)
Without derogating from the generality of subsection (1),
copyright shall be infringed by any person who, without the licence
of
the owner of the copyright and at a time when copyright subsist in
a work-
(a)
import an article into the Republic for
a
purpose other
than for his private and domestic use;
(b)
sells, lets, or by way of trade offers or exposes for sale or
hire in the republic any article;
(c)
distributes
in the Republic any article for the purposes of trade, or for
any
other purpose, to such an extent that the owner of the copyright in
question is prejudicially affected; or
(d)
acquires an article relating to
a
computer program in
the Republic,
if
to his knowledge the making of that article constituted an
infringement of that copyright or would have constituted such an
infringement if the article had been made in the Republic."
[20]
In terms of the Notice of Motion, the conduct the applicant seek to
prevent has been described
as,
inter alia,
using any of the
First Applicant's proprietary education material... ...for the
purpose of utilising such for gain or otherwise
all of displaying
same on the Studyhall website and/or platform, on any other website,
and/or platform or at all, restraining the
respondents from
uploading, imparting, donating or disposing in whatever manner, the
applicants ' proprietary education material
and preventing the
respondents from representing in the course of trade or otherwise,
that it is associated with or has obtained
the legal right and
exclusive us of the first applicant's proprietary education material.
[21]
The acts complained of and sought to be prevented as contained in the
Notice
of Motion do not fall within the acts as described in the Act.
Corbett JA in the matter of
Gallago Publishers Limited and another
v Erasmus
1989 (1) SA 276
(A) at 280 B
-
D
said the following in order to prove copyright infringement by
reproduction:
"(i)
that there is sufficient objective similarity between the alleged
infringed work and the
original work, or a substantial part thereof,
for the former to be properly described, not necessarily
as
identical work, but
as
a reproduction or copy of the
latter; and
(ii)
That the original work was the source from which the alleged
infringing work
was
derived i.e. that there is
a
course
or connection between the original work and the alleged infringing
work, the question to be asked being: Has the Defendant
copied the
Plaintiffs work or is it an independent work of its own?"
[22]
Millet J In the matter of
Spectravest v Aperknit Limited
[1998]
FSR 161
at 170
made clear the importance of the plaintiff
identifying those parts of work which he alleged to have been copied
by the defendant.
[23]
The applicants have failed to identify the works which they alleged
have
been copied by the respondent . They have merely been described
as
"proprietary education material", "a large
volume of educational material being available to subscribers on our
websites
totalling more than 9 000 individual files",
"Proprietary exam papers" and "9 000 individual files"
inter alia.
[24]
The applicants have failed to furnish copies of the copyright works
they
have relied on. As such, it cannot be established whether that
which the applicants claim to have been copied constitutes a
substantial
part of the works which qualifies for copyright
protection. There is no manner in which the court is able to
determine the originality
of the works nor is it able to compare the
alleged original work and that which is alleged to be infringing.
[25]
The applicants have, in
their supplementary heads of argument, asked that the court considers
granting an interim interdict. No
such relief has been sought in the
Notice of Motion. No prima facie right for the purposes of such
relief have been submitted .
Furthermore, the applicants have failed
to bring to the court's attention the irreparable harm they will
suffer in the event of
the relief not being granted.
[26]
As such the following order is granted:
The
application is dismissed with costs.
MOKOSE
AJ
Acting
Judge of the High
Court
of South Africa
Gauteng
Division,
Pretoria
For
the Applicants:
Adv
F Slabbert instructed by
Struwig
Attorneys
For
the Defendant:
Adv
I Joubert instructed by
Waldick
Jansen Van Rensburg Inc
Date
of Hearing: 7 February 2018
Date
of judgement: 16 February 2018