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1986
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[1986] ZASCA 3
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Universal City Studios Inc and Another v Network Video (Pty) Ltd. (3/86) [1986] ZASCA 3; [1986] 2 All SA 192 (A); 1986 (2) SA 734 (27 February 1986)
IN THE SUPREME COURT OF SOUTH AFRICA (APPELLATE DIVISION)
In the appeal of:
UNIVERSAL CITY STUDIOS, INC.
1st appellant,
PARAMOUNT PICTURES CORPORATION
2nd appellant,
COLUMBIA PICTURES INDUSTRIES, INC
... 3rd appellant
WARNER BROS. INC.
4th appellant,
TWENTIETH CENTURY-FOX FILM
CORPORATION
5th appellant,
MGM/UA ENTERTAINMENT CO.
6th appellant,
UNITED ARTISTS CORPORATION
7th appellant,
WALT DISNEY PRODUCTIONS
8th appellant,
ORION PICTURES CORPORATION
9th appellant,
EMBASSY PICTURES
10th appellant,
and
NETWORK VIDEO (PROPRIETARY) LIMITED
...respondent.
Coram
: CORDETT, KOTZÉ, MILLER et BOTHA, JJA, et GALCUT, A.J
A.
Date of hearing
: 15 November 1985.
Date of judgment
: 27
February 1986
/
JUDGMENT
JUDGMENT CORBETT
, JA:
In recent years the viewing of video tapes of
cinematograph films in the home has become a popular pastime in South Africa .
The manufacture
and supply, either the by way of letting or by way of sale, of
such video tapes is a fast-growing and, it would seem, profitable
industry. As
the evidence in this case indicates, manufactures and suppliers of video tapes
are not always very scrupu-lous about
respecting the rights of the owners of the
copyright in the films concerned. In fact there is a great deal of trafficking
in what
are called "pirate" tapes, ie tapes of films produced without authority
from the owner of the copyright. That essential]y is what
this case is
about.
The ten appellants are all American corporations who make and distribute
cinematograph films. They are
/ said
3
said to be the major film-producing companies in
the United States of America. They constitute the entire membership of an
American
organisation known as the Motion' Picture Association of America, Inc.
("the MPAA"). This association, which has its headquarters
in New York City, was
formed for the purpose of representing and looking after the interests of motion
picture companies based in
the United States of America. Among the activities
undertaken by the" MPAA on behalf of members is the policing and enforcement of
copyright in cinematograph films made and/or distributed by members.
In South Africa the MPAA is represented by a company known as Business
information Services (Pty) Limited ("BIS"), which operates
from Johannesburg.
The proprietor of BIS is a Mr E I Askew. He is assisted in the business by June
Askew. The primary activity of
BIS, as representative of the MPAA in South
/ Africa
4
Africa, is the policing of the home video market in this
country. BIS assists dealers and distributors in the home video market to
distinguish between legitimate copies of members films, ie copies made under
licence from the copyright owner, and pirate copies.
To this end BIS conducts
what are termed "voluntary inspections". A voluntary inspection takes place at
the requist of the video
dealer concerned . A representative of BIS visits the
dealer's premises, inspects his stock, identifies any pirate tapes and furnishes
the dealer with a list of infringing material. BIS has also on occasion been
instrumental in causing the police to take criminal,
ac-tion against persons
producing or dealing in pirate video tapes, but in general the police are
willing to act only where the copy
right in the cinematoraph films in question
has been registered in terms of the Registration of Copyright in Cinematograph
Films
Act 62 of 1977.
/On
5
On such occasions Askew or a member of the staff
of BIS often accompanies the police on raids of the premises of video dealers
suspected
of dealing in pirate video tapes of registered cinematograph films in
order to assist in the identification of offending material.
The respondent is a South African company, with premises on the Foreshore in
Cape Town. It carries on business as a maker and distributor
of video tape
versions of cinematograph films and(J as a dealer in video tapes for the home
video market. None of the appellants
has given respondent a licence to reproduce
any of its cinematograph films on video tape or to distribute video tapes of its
films
on the home video market.
Alleging, on grounds which I shall detail later, that respondent had been
making and/or selling video tapes which were unauthorized
copies of
cinematograph films, both registered and unregistered, in respect of which
/ appellants
6
appellants owned the copyright, and that, respondent had thereby been
infringing appellants' copyright and had been competing unlawfully
with the
appellants, appellants made application in the Cape of Good Hope Provincial
Division ("the CPD" ) for certain relief ( to
be specified shortly) . One of the
prayers in the notice of motion was that the usual requirements of service of
the application
upon the respondent be dispensed with and that the matter be
heard in chambers. This prayer was acceded to. On 4 October 1983 the
matter came
before LATEGAN J, in chambers and without notice having been given to the
respondent. The learned Judge granted an order
as prayed. Before setting out
this order, I would add that on 13 October 1983 respondent made application for
leave to appeal against
the order. This was granted on 28 November 1983 and it
was directed that the appeal be heard by the Pull Court of the CPD. The costs
of
/ the
7
the application were ordered to stand over for
determination by the Full Court. The appeal was heard on 14 May 1984. Prior to
this,
on 26 April 1984, a notice was filed on behalf of the appellants
(respondents in the appeal to the Full Court) in which it was indicated
that
they had abandoned certain portions of the order granted in their favour by
LATECAN J. I now quote in full the text of the order,
with those portions which
were so abandoned placed in square brackets:
"1. The Deputy Sheriff, Cape Town,
is
authorized and directed in the
company of the attorneys of record of the Applicants and the Deponent EDWARD
IRVING ASKEW and/or JUNE
ASKEW to enter upon the premises of the Respondent at
4th Floor, Fore-trust Building, M Hammerschlag Way, Foreshore, Cape Town, and
upon any other premises at which it conducts business and/or stores, maintains
or processes materials used in conducting its business,
and to attach
/ and
8
and keep in his possession, pending the final determination of these
pro-ceedings:
1.1 all video Capes or other copies
of the cinematograph Films BREAK-HART PASS, FRANKENSTEIN & THE MONSTER,
BEAR ISLAND, THE BIG FIX, METEOR, THE UNDEFEATED and DIFFERENT
STROKES
(herein-after referred to as 'the original works), which constitute infring-ing
copies in respect of the copy-right, in such
cinematograph films, in the
possession of the Respon-dent or under its control at the Respondent's aforesaid
premises;
1.2 all other video tapes or other
copies of any other cinematograph films in respect of which the Applicants
are the holders of rights under the copyright in the Republic
of South Africa,
and which are infringing copies of such cinematograph films in the possession of
the Respondent or under its control
at the Respondent's aforesaid premises;
[1.3 all video tapes or other copies of the original works and any other
cinematograph films released in the Republic of South Africa
in the Applicants'
names, in or with which the Respondent is competing unlawfully with the
Applicants:]
/ All
9
All video tapes or other copies of the aforementioned in paragraphs 1.1, 1.2
[and 1.3] above are collectively referred to hereinafter
as 'infringing video
tapes'.
]. .4 [All films and/or | master video tape copies of any cinematograph films
in respect of which the Applicants are the holders of
rights under the
copy-right in the Republic of South Africa, and which [films and/or] master
video tape copies have been and/or are
being used by the Respondent to
unlawfully reproduce infringing video tapes and which are in the possession of
the Respondent or
under its control at the Respondent's aforesaid premises;
1.5 all printed matter, photographs, negatives, or plates, depicting scenes
from the original works or any other cinematograph film
in respect of which the
Applicants are the holders of rights under the copyright in the Republic of
South Africa, which were produced
by infringing copyright in any of the said
cinematograph films.
(All the a forementioned materials are
collectively (actively referred to
hereinafter as
'infringing documents'.)
(For the purposes of this Order, the
puty Sheriff shall be entitlied to rely
/ on
10
on the identification of such [films and/or ] master video tape copies and/or
infringing video tapes and/or cinematograph films in
respect of which the
Applicants are the copyright owners in the Republic of South Africa and/or
infringing documents by the Deponents
COWARD IRVING ASKEW and JUNE ASKEW.)
2. The said Deputy Sheriff, Cape Town, is
authorised and directed further to attach as aforesaid all documents and
records in the Respondent's possession or under its control
relating to the sale
or supply by it of any infringing video tapes;
[3. The Respondent is required within 7 (SEVEN) days of such Order, to make
discovery under oath to the Applicants of the name or
names of all persons or
parties to whom it has supplied infringing video tapes;]
4. The Deputy Sheriff, Cape Town, is authorised and directed to keep in his
possession as aforementioned all in fringing video tapes,
infringing documents
and master [films or] video tapes pending the final determination of actions or
app1ica-tions to be instituted
by the Applicants
/ within
11
within six months of the date of this Order;
5 . The costs of this Application are costs
in the cause;
6 . Should it appear on information placed
before this Court by the Respondent that this Order should not have been
granted, the Applicants shall notwith-standing this Order
be jointly and
seve-rally liable for any damages sustained by the Respondent by reason or the
execu-tion or this Order. To give effect
to this Order the Applicants shall
lodge security to and to the satisfaction of the Registrar of the Supreme Court
in the amount
of R30 000 (THIRTY THOUSAND RAND)."
On 15 June 1984 the Full Court delivered a reserved judgment, in terms
whereof the appeal was upheld with costs (including the costs
of two counsel),
the order of LATEGAN J was set aside and appellants (respondents before the Full
Court) were ordered to pay the
costs of the application for leave to appeal. No
order was speci-
/fically
12
fically substituted for that of LATEGAN J, but clearly the intention was that
it be ordered that the application be dismissed. The
judgment of the Full Court
has been reported (see
Network Video (Pty) Ltd v Universal City Studios Inc.
and Others
1984 (4) SA 379
(C) ).
Special leave having been granted in terms of sec 20(4)(a) of the Supreme
Court Act 59 of 1959, as amended, appellants now appeal
to this Court against
the whole of the judgment and order of the Full Court. The appeal is not opposed
by the respondent and there
was no appear-ance on behalf of the respondent. At
the hearing of the appeal counsel for appellants told us, in response to
enquiries
by the Court, that the order of LATEGAN J had originally been
partially executed, that the infringement proceedings foreshadowed
in par 4 of
the order of court had been instituted and settled and that the only outstanding
dispute between the parties related
to the
/ order
13
order granted by LATEGAN J, which was set aside by the Full Court. Counsel
further intimated that appellants wished further to amend
the order sought by
-
(1) inserting the words "one of" before the words "the
attorneys of
record" in par 1:
(2) deleting from par 1 the words "and/or stores,
maintains or processes
materials used in conduct
ing its
business":
(3)
deleting from par 1.1 reference to all cinematograph films other
than THE BIG FIX;
(4)
altering the words
"holders of rights under the copyright" to "owners of copyright" in par 1.2 and
1.5;
(5)
omitting par 1.4 and deleting
subsequent references to "master video tape copies";
(6)
omitting from par 1.5 the words "printed matter", "the original
works or" and "other";
/ (7) replacing
14
(7) replacing the words "as aforesaid" in par 2 with the words "and make an
inventory of"; and
(8) deleting From par 4 the words "as aforementioned all infringing video tapes,
infringing documents and master Films or video tapes"
and substituting "all
items attached as aforementioned (save for those referred to in par
2)".
The type of order granted by LATEGAN J is usually
characterized by the name
Anton PILLER
, in recognition of the pioneering
decision in English law in the case of
Anton Filler K G v Manufacturing
Processes Ltd and Others
[1975] EWCA Civ 12
;
[1976] 1 All ER 779.
The granting of
Anton
Piller
-type orders has in recent years become a fairly frequent practice in
South African courts. In 1984, however, there were reported
a series of
judgments emanating from courts
/ in
15
in the Transvaal expressing general disapproval of the practice (see
Economic Data Processing (Pty) Ltd v Pentreath
1984 (2) SA 605
(W);
Cerebos Food Corporation Ltd v Diverse Foods SA (Pty) Ltd and Another
1984 (4) SA 149
(T): and
Trade Fairs and Promotions (Pty) Ltd v Thompson and
Another
1984 (4) SA 177
(W) ).
Although the instant case is by now moot, I consider that it is appropriate
for this Court to consider certain of the issues raised
by it because of the
questions of costs which arise in regard to the various stages of the
proceedings.
I return now to the facts of this case and in particular to the evidence
adduced in support of the appellants' allegation that respondent
was dealing in
pirate tapes of films of which appellants owned the copy-right. The founding
affidavit was deposed to by Mr E I
/ Askew
16
Askew and supporting affidavits were made by June Askew and
Dora Lees.
In his affidavit E I Askew, after outlining the general position of the
appellants and the activities of MPAA and BIS (on behalf of
MPAA), as 1 have
described them, went on to point out that "in recent months" (ie prior to 29
September 1983 when the Founding affidavit
was made) BIS, at the request of
MPAA, had formed an asso-ciation with various legitimate distributors of video
tapes in South Africa
who dealt in films of producers not belonging to the MPAA.
In terms of this arrangement BIS undertook to take the same action in
regard to
films in respect of which such local associates had obtained rights as it took
in the case of films of MPAA members.
Askew further stated that for some time he had been aware that respondent was
carrying on an extensive business in the making and
distribution of pirate tapes
.
/ Respondent
17
Respondent had communicated with BIS on a regular
basis to make enquiries as to whether certain specific films were protected by
MPAA.
BIS responded to these en-quiries for while, but later came to the
conclusion that respondent was abusing the information received
from BIS and
terminated the practice of furnishing it. Askew states that it became apparent
that while respondent was careful not
to deal in video tapes of registered
films, it was producing and supplying its customers with unautho-rized copies of
unregistered
films, including films in respect of which MPAA members and
associates owned the copyright. And it did so in respect of certain films
despite having been previously informed that the films in question were
protected by the MPAA. The reason for distinguishing between
registered and
unregistered films
was, according to Askew, the relative ease with which
copyright infringement proceedings, either civil or criminal, could he brought
or initiated when the film is registered.
/ In
18
In substantiation of his allegations Askew referred to a
circular letter from respondent to its customers dated August 1983; to sales
made by respondent to a company named Dora's Video(Pty) Ltd, which trades as
"Dora's Video World" and which hires out video tapes
of films to members of the
public for the purpose of private home viewing; to a "trap purchase" of a number
of video tapes from respondent
on 10 August 1983; and to a police inspection of
respondent's premises shortly after the trap purchase. It is not necessary to
recount
this evidence in detail. The circular letter does certainly convey the
impression that respondent was only concerned to steer clear
of registered
films. The affidavit of Dora Lees, the managing director of Dora's Video (Pty)
Ltd, shows that on 3 February 1983 the
company purchased from respondent a
number of video tapes of films, including those entitled BREAKHEART PASS,
FRANKENSTEIN &
THE MONSTER BEAR ISLAND, THE BIG FIX, METEOR and THE
UNDEFEATED.
/ Lees
19
Lees stated further in her affidavit that it was
made clear to her by an employee of respondent that the tapes supplied by
respondent
were produced "by themselves without any authority of copyright
owners". According to E I Askew the copyright in all these films
is hold by
certain members of the MPAA. And the trap purchase on 10 August 1983, when tapes
to the value of R3 000 were purchased
by one Cronje, included a large number of
films in respect of which members of the MPAA hold copyright and even some
registered films.
The police inspection of the respondent's premises, in which
June Askew participated, revealed that respondent was conducting a large
scale
business of recording video tapes and selling the same; and that the video tapes
so recorded and sold included private copies
of films in respect of which the
copyright was held by members of the MPAA. June Askew opined that a thorough
inspection of respondent's
premises would bring to light further in-
/ fringements
20
fringements of appellants' rights.
The founding affidavit further stated that it, was the intention of the
appellants (originally appli-cants) to institute copyright
infringement
proceedings against the respondent, claiming interdicts, damages or
alternatively accounts of profits and delivery up
of in-fringing copies of their
films. The affidavit proceeded:-
"I believe, however, that if the Res-pondent becomes aware of the far that
the Applicants have instituted court pro-ceedings in respect
of unlawful
dealings in their films against it, or even that the Applicants are
contemplating institu-ting such proceedings, the
Respondent will remove from its
possession or custody all copies of such films and any 'master' copies of the
films used for making
copies. Furthermore, the Respondent is likely to destroy
or remove from its custody or possession all documènts relating ting
to
the sales of infringing copies of the films in question the profits which it has
made from the sales of in-
fringing
21
Fringing copies of the films. My premise for
making these statements is the fact that the Respondent is well aware of the
unlawfulness
of its activities and of the Applicant's difficulties in proving
the same."
The apprehension that vital evidence might be lost if
conventional court
proceedings were instituted was echoed
by June Askew who said:-
"By the nature of things, evidence of this nature can be removed or destroyed
very easily. I believe, on the strength of my contact
information which I have
obtained in regard to it and its trading activities, that if conventional court
proceedings are instituted
against it by M.P.A.A.
members there is a strong risk that such evidence will be lost/ to the the
M.P.A.A.
members and such members may never be able to pursue their claims against the
Respondent arising out of copyright infringement to
the full or at all."
/The
22
The founding affidavit further contained full details concerning first
applicant's copyright in the film THE DIG FIX, including a
certified extract
from the register of copyright showing that it is a registered film, and
concerning the respondent's infringement
of this copyright by reproducing and
selling pirate copies of THE BIG FIX to Dora's Video World and to Cronje.
It was also alleged in the founding affidavit that respondent used
photography scones from cinematograph films to print "inserts",
which were
incorporated in the containers in which the video tapes were sold. The insert
naturally related to a scene from the film
packaged in the container. In this
way too, so it was alleged, the respondent had infringed the copyright owned by
the applicants.
The
Anton Filler
saga in South African legal practice is an oft-told
talc (sec the judgments in the
/
Economic
23
Economic Data Processing
case,
supra
, and the
Cerebos Food
case,
supra
, and the following
articles: II J Erasmus in
(1984) 101 SALJ 324
; A C Beck in
(1985) 48 THRHR 203
;
B R Rutherford in (1984) 6 MBL 149; Esmé du Plessis in (1984)6 MBL 156;
Mr Justice G A Coetzee in
(1985) 102 SALJ 634)
and I do not propose to recount
it again in any detail. I wish merely to highlight certain features.
The original
Anton Tiller
case,
supra
, related to infringement
of copyright and the misuse of confidential information by the agent of the
plaintiff and the aim of the
order granted was the preservation of certain vital
evidence which might otherwise have been destroyed or removed to beyond the
jurisdiction
of the court. The decision of the Court of Appeal approved and
followed an earlier decision of TEMPLEMAN J in Emi
Ltd
and
Others v
Pandit
[1975] 1 All ER 4l8
, a case concerning infringement of copyright and
passing off. Here the purpose of the order granted was the preservation of
evidence,
the
/ seizure
24
seizure and removal of infringing copies which belonged to the
plaintiffs under copyright law and the testing of defendant's typewriters
in
order to confirm or dispel an allegation of forgery. In subsequent cases the
Anton Pille
r order was extended to cases concerning what are termed
"boot-leggers", ie those who make and sell unauthorized recordings of live
performances
(Ex parte Island Records Ltd and Others
[1978] 3 All ER
824)
, to cases not concerning what is called industrial or intellectual property
(see eg
Yousif y Salama
[1980] 3 All ER 405)
and even to a matrimonial
dispute (
Emanuel v Emanuel
[1982] 2 All ER 342).
Also the scope of the
order was widened to include a provision whereby the defendant was required,
particularly in cases involving
the marketing of pirate video and audio tapes,
to disclose the names and addresses of suppliers to the defendant and customers
of
the defendant and in addition other details relevant to the acquisition and
sale of the infringing articles. The essence of the
Anton
Piller order
was, of course the procedural peculiarity that it was
granted/....
25
granted
ex
parte
without notice to
the defendant. Since the very
raison d'être
of the order was the
apprehension that the defendant, if apprised of the impending legal proceedings,
would somehow get rid of the
incriminating acticles or other evidence which the
plaintiff wished to have preserved, absence of notice was an essential part of
the procedure. In the
Anton Filler
case,
supra
, at p 783 f, Lord
DENNING stated:
"It seems to me that such an order can be made by a judge
ex
par
te, but it should only be made where it is essential that the
plaintiff should have inspection so that justice can be done between
the
parties; and when, if the defendant were forewarned, there is a grave danger
that vital evidence will be destroyed, that papers
will be burnt or lost or
hidden, or taken beyond the juridiction, and so the ends of justice be defeated;
and when the inspection
would do no real harm to the defendant or his case."
The first reported case in South Africa in which an
Anton Filler
order
was granted was Roamer Watch
Co SA and Another v African Textile Distributors
also t/a M R
/ P
atel
26
Patel Wholesale Merchants and Direct
Importers
1980 (2) SA 254
(W), a case involving alleged infringement of
trade mark and passing off. In that case CILLIERS AJ, on the return day of a
rule
nisi
considered, at some length and with copious reference to the
English decisions on the subject, the grant of
Anton Piller
-type orders
by our courts; and he suggested various safeguards which might be employed in
order to ensure that the defendant does
not suffer undue hardship and that the
order is not abused by the plaintiff.
Since the
Roamer Watch Co
case,
sup
ra, there have been a number
of reported cases in which orders, varying in detail but falling under the
general rubric of
Anton Filler
, have been granted by South African courts
in cases involving the unlawful use of confidential information, infringement of
copyright,
trade mark and patent, passing off, unlawful competition and
restraint of trade
/ (see
27
(see eg
Wilrose Timbers (Pty) Ltd v C E
Westergaard (Pty) Ltd and Others
1980 (2) SA 287
(W);
Scaw Metals Ltd v
Apex Foundry (Pty) Ltd and Another
1982 (2) SA 377
(D);
Continental
Wholesalers v Fashion Fantasy (Pty) Ltd
1983 (1) SA 683
(D);
Easyfind
International (SA) (Pty) Ltd v Instaplan Holdings and Another
1983 (3) SA
917
(W);
Petre & Madco (Pty) Ltd t/a T-Chem v Sanderson-Kasner and
Others
1984 (3) SA 850
(W);
Aercrete South Africa (Pty) Ltd and Another v
Skema Engineering Co (Pty) Ltd and Others 1
984 (4) SA 814
(D) ). It would
appear, however, From what is stated in certain judgments (see eg the
Economic Data
case,
supra
, at p 606;
Cerebos Food
case,
supra, at pp 161 ff;
Trade Fairs
case,
supra
, at p 179, l87) that
these judgments represent merely the proverbial tip of the iceberg. In practice
the
Anton Piller
procedure became a very popular one, especially in the
Transvaal; that is, until the decisions in the
Economic
Data, Ce
rebos
Food and T
rade Fairs
trilogy of cases.
/ In the
28
In the
Cerebos Food
judgment (subsequently
said
to be a nullity on the ground that the Full
Court of the
Transvaal Provincial Division did not have jurisdiction
to
hear the matter - per COETZEE J in the
Trade Fairs
case) the
components of the
Anton Piller
order granted
by South African courts
were summarized as follows (at
p 164 A-C, per VAN DIJKHORST J, BOSHOFF JP and 0'DONOVAN
J concurring):
"1. Authorising the search for and attachment of property in the possession
of the defendant where the plaintiff has a real or personal
right to it.
2.
Orders for the disclosure of
names of sources and retail outlets of the defendant as they enable the
defendant to operate unlawfully,
infringing on the plaintiff's
rights.
3.
Orders for the attachment of
documents and other things to which no right
is
claimed except that they should be preserved for and produced as evidence in an
intending Court case between the parties.
/ 4. Orders
29
4. Orders for the production and handing over of
a thing bo which no right is claimed but as part of an interdict to make the
interdict
effective, for example by erasure of a trade mark from the defendant's
goods."
The Court held that the first of these components, ie the
order for the
interim attachment of property in which a
real or personal right was claimed
(including both common
law and statutory rights) was not a "true
Anton
Piller
remedy" and that for many years our courts have been
granting
interim attachment orders where the plaintiff
alleged an existing right in a
thing and the only way in
which that thing could be preserved or irreparable
harm
prevented was by attachment thereof
pendente lite
(see
judgment p 164 D-F).
As to the second component, it was held that neither in the Roman law nor the
Roman-Dutch law nor in our law is there any authority
for an order that a
res-
/ pondent
30
pondent disclose the names or particulars of
sources and
retail outlets (see judgment p 168 A-B). Likewise the
Court held that, in regard to the third component,
the South African courts had no jurisdiction to grant an
order for the attachment of property of another where no
right of the applicant existed therein, merely for the
purpose of its
production as evidence (see judgment p 173
F); and that, as to the fourth
component, the court
had. no power to order the handing over of property "to
make
the interdict effective" where no right to that property
existed (see
judgment p 173 G-I).
At this point I should interpolate that I do not find it necessary to
determine whether COETZEE J is correct in regarding the decision
in the Cerebos
Food case as a nullity. As far as this Court is concerned no question of
stare decisis
arises. At the same time this carefully researched and
reasoned judgment of VAN DIJKHORST J merits serious consideration by this
Court,
/ whether
31
whether it be a nullity or not.
In the
Trade Fairs
case,
supra
, at p 191
C-D,
COETZEE J interpreted the
Cerebos Food
decision thus:
"It is true that VAN DIJKIIORST J does not pertinently overrule any of the
conflicting decisions which he might have done, in the
interests of clarity and
certainty. The thrust of this judgment, however is unmistakably in one direction
only, namely that
Anton Filler
is no part of our law, that only an
attachment order (as opposed to a search warrant) can issue in respect of
property of the applicant
which must be specially and properly specified in the
order itself. In other words our wellknown legal procedure, as it existed before
the advent of
Anton Piller
, is all that is available. Nothing more."
(This was broadly in conformity with what COETZEE J had
himself held in the
Economic Data Processing
case, supra.)
Procedurally the typical
Anton Filler
order is very unusual in that it
is normally sought ex
parte
without notice to the other party and
camera
.
/Moreover
32
Moreover, aspects of the order immediately affect
in an adverse manner the rights of the other party without him having been heard
in opposition to the order. In addition, there is abundant evidence that in the
past
Anton Filler
orders have been grossly abused by those in whose
favour they have been granted at the expense of those against whom they have
been
granted (see in this regard the judgments in the
Easyfind
International
case,
supra
, at pp 932 D - 933 E; the
Economic Data
Processing
case,
supra
, at pp 606-7, 615-6; the P
etre Madco
case,
supra
, at pp 855 I - 857 E; the
Trade Fairs
case,
supra
, at pp 189 I - 190 E). Apart from the question as to whether the
court has the power to make
Anton Piller
orders, this evidence of abuse
makes understandable the negative reaction of certain Judges to the practice
that has evolved in this
country of granting such orders.
In the
Cerebos Pood
case the Court did not
ru1e
/ out
33
out the possibility of applications of this kind
being heard in
camera
, but emphasized that, in terms of sec 16 of the
Supreme Court Act 59 of 1959 the court could only do so in special cases. Should
the administration of justice be rendered impracticable or materially hampered
by the presence of the public, that would constitute
a special case as envisaged
by the statute. Nevertheless the court should not lightly depart from the
general rule that all cases
must be heard in open court (see judgment at pp 158
A - 159 C). Nor did the Court reject the concept of an ex
parte
application without notice to the respondent. VAN DIJKHORST J stated (at p 157
C-D) —
"The procedure whereby an urgent order was moved ex
parte
without notice
to the respondent was justified in this case. In many instances it is the only
effective procedure whereby an applicant's
rights can be protected and the
eventual effectiveness of the Court's order ensured. That such procedure is
fraught with danger is
evident. It can lead to great abuse and these
applications should only be entertained in special
circumstances."
/ I return
34
I return now to the present case. As my recital
of the facts indicates, LATEGAN J granted what may be typified as an
Anton
Piller
order in a typical kind of case, viz. alleged copyright infringement
and unlawful trading. The Full Court set aside the order principally
on the
ground that it was a fundamental principle of our I aw that a court will not
normally grant an order which may directly affect
the rights of a person and
involve far-reaching consequences to him without giving that person an
opportunity of being heard, with
the result that in ex
parte
applications
brought without notice the court orders the issue of a rule
nisi
where
the rights of other persons may be affected by the order; that in the instant
case the order granted by LATEGAN J constituted
a grave invasion of the rights
of the respondent; and that consequently notice of the application, in some Form
or another, should
have been given to the respondent (see judgment
/ 1984
35
1984 (4) SA 379
(C) at p 38l E-ll). The Court
referred
to the
Anton
Filler practice, but concluded (at p 383 C-D)—
"It is unnecessary in my opinion to consider the various cases quoted to us
on the subject. It suffices to say that we have not been
persuaded that a
different practice has grown up and been accepted in the
Anton Piller
type of case which would justify this Court to depart from the firmly
established practice in this Division to insist on notice to
a respondent
beforehand or to require that a rule
nisi
be issued where, as in this
case, an order is sought which vitally affects the rights of the
respondent."
It is, however, of the essence of the
Anton Piller
procedure that
notice is not given to the other party; the reason being that it is apprehended
that the giving of notice will defeat
the purpose of the order:
will cause
the horse to bolt, as it has been put. If, therefore, the procedure is a proper
one in our law, a point which the Full
Court appeared to leave open, and the
case under consideration justifies the granting
/ of
36
of an
Anton Piller
order, then no prior
notice of the application need be given.
By now, of course, the original order granted by LATEGAN J has been whittled
down considerably by the appellants. Appellants' counsel
explained in argument
that the reason for confining the provisions of par 1.1 of the order to the
film, THE BIG FIX, was that copyright
in the other films named had not been
properly established: the evidence seeking to establish such copyright was based
on hearsay
evidence. In the case of THE BIG FIX, however, there was a certified
extract from the register of copyright showing that first appellant
was the
owner of the copyright therein for the Republic of South Africa and in terms of
sec 29 of Act 62 of 1977 this constituted
prima facie
evidence of first
appellant's rights. Counsel indicated, however, that the appellants were more
concerned about establishing in this
Court that they
/ were
37
were entitled to par. 1.2 and 1.5 of the order
granted by LATEGAN J (par. 1.3 and 1.4 having been abandoned). In fact counsel
conceded
that if only par. 1.1 (as confined to THE BIG FIX) survived the appeal
and this Court refused to reinstate par. 1.2 particularly,
appellants would not
be entitled to the costs of appeal. Since the appeal is fundamentally about
costs this concession focuses attention
mainly on par. 1.2.
As I have shown, it was accepted in the
Cerebos Food
case that an
order for the interim attachment for the purpose of preservation of property in
which a real or personal right (including
both common law and statutory rights)
was claimed by the applicant was competent. And in this regard it was suggested
that such statutory
rights could include those created by
sec 24(1)
of the
Copyright Act 98 of 1978
, which provides that in an action for infringement of
copyright the copyright owner
/is
38
is entitled, inter alia, "to all such relief by
way of delivery of infringing copies .... as is available in any corresponding
proceedings
in respect of infringements
of other proprietary rights." Whether
the Court regard-ed this power to grant an interim attachment as an instance of
the inherent
jurisdiction of the Supreme Court or as being founded on an
extended form of the
actio
ad
exhibendum
(cf. the E
conomic Data
Processing
case,
supra
, at pp (617-8) is not clear to me.
I accept the correctness of the general principle that for the purpose of
preserving it the court may order the interim attachment
of property in respect
of which the applicant claims a real or personal right (common law or
statutory). However, in view of counsel's
concession in regard to costs and
since the matter is now moot, I do not find it necessary or appropriate to
determine precisely
what rights to relief by way of
/ delivery
39
delivery up a plaintiff has under
sec. 24(1)
of
the
Copyright Act (in
Video Rent (Pty) Ltd and Another v flamingo Film
Hire
198l (3) SA 42
(C) the Court found difficulty in interpreting
sec.
24(1)
- see pp 51-2) or whether such rights fall within the ambit of the
above-stated principle.
I now turn to par. 1.2 of the order. In response to questions from the Bench,
appellants' counsel made it clear that what was originally
sought by this order,
read in conjunction with the words in parenthesis immediately prior to par. 2 of
the order, was an authorization
to the Deputy Sheriff, assisted by Mr Askew and
June Askew, to search the respondent's premises in order to find evidence of
infringements
of copyright upon which to found causes of action; and then to
attach and keep in his possession any video tapes constituting infringing
copies
of films in respect of which any of the appellants held the copyright.
Presumably it was intended that the Askews would point
out what they considered
to be in-
/ fringing
40
fringing material and the Deputy Sheriff would be
the arbiter of what should be attached. Par. 1.5 of the order fell into the same
general category. The question is whether the Court of first instance had the
power to grant such orders.
Now, I am by no means convinced that in appro-priate circumstances the court
does not have the power to grant ex
parte
and without notice to the other
party, i.e. the respondent (and even, if necessary, in
came
ra) an order
designed
pendente lite
to preserve evidence in the possession of the
respondent. It is probably correct, as so cogently reasoned by the Court in the
Cerebos Food
case,
supra
, that there is no authority for such a
procedure in our common law. But, of course, the remedies devised in the
Anton Piller
case, supra, and other subsequent cases for the preservation
of evidence are essentially modern legal
/ remedies
41
remedies devised to cater for modern problems in
the prosecution of commercial suits.
There is no doubt that the Supreme Court possesses an inherent reservoir of
power to regulate its procedures in the interests of the
proper administration
of justice (see
Stuart v Ismail
1942 AD 327
;
Republikeinse Publikasies
(Edms) Bpk v Afrikaanse Pers Publikasies (Edms) Bpk
1972 (1) SA 773
(A), at
p 783 A-G; also
Ex parte Millsite Investment Co ( Pty ) Ltd
1965 (2) SA
582
(T), at p 585-6;
Moulded Components and Rotomoulding South Africa (Pty)
Ltd v Coucourakis and Another
1979 (2) SA 457
(W), at pp 461 F - 462 H). It
is probably true that, as remarked in the
Cerebos Food
case (at p 173 E),
the court does not have an inherent power to create substantive law, but the
dividing line between substantive
and adjectival law is not always an easy one
to draw (cf
Minister of the Interior & Another
/
v Harris
42
v Harris and Others
1952 (4) SA 769
(A), at p 78l C-H;
Botes v Van Deventer
1966 (3) SA l82
(A), at p 198 H;
Yew Bon Tew v Kenderaan Bas Mara
[1982] 3 All ER 833
(PC), at p 836 B; Salmond,
Jurisprudence
, 11 ed,
pp 503-4; Paton,
Jurisprudence
, 4ed, par 127).
Salmond, op
cit
, at p 504 states that —
"Substantive law is concerned with the ends which the administration of
justice seeks; procedural law deals with the means and instruments
by which
those ends are to be attained."
It is difficult to compose a closer definition of the distinction than
this.
In a case where the applicant can establish
prima facie
that he has a
cause of action against the respondent which he intends to pursue, that the
respondent has in his possession specific
documents or things which constitute
vital evidence in substantiation of the
/ applicant's
43
applicant's cause of action (but in respect of
which the applicant can claim no real or personal right), that there is a real
and
well-founded apprehension that this evi-dence may be hidden or destroyed or
in some manner spirit-ed away by the time the case comes
to trial, or at any
rate to the stage of discovery, and the applicant asks the court to make an
order designed to preserve the evi-dence
in some way, is the court obliged to
adopt a
non possumus
attitude? Especially if there is no feasible
alternative? I am inclined to think not. It would certainly expose a grave
defect in
our system of justice if it were to be found that in circumstances
such as these the court were powerless to act. Fortunately I am
not persuaded
that it would be. An order whereby the evi-dence was in some way recorded, eg by
copying documents or photographing
things or even by placing them tempo-rarily,
ie
pendente lite
, in the custody of a third
/ party
44
party would not, in my view, be beyond the inherent powers of
the court. Nor do I perceive any difficulty in per-mitting such an order
to be
applied for ex
parte
and without notice and in
camera
, provided
that the appli-cant can show the real possibility that the evidence will be lost
to him if the respondent gets wind of
the application. And in regard to the in
camera
pro-cedure I would endorse the view expressed in the Cerebos
Food
case,
supra
, at p 159 E-H.
Naturally, any such order would have to be hedged in with the kind of
safeguards that have been dis-cussed in the cases. What particular
safeguards
are a-dopted would be in the discretion of the Judge granting the order and
would depend on the particular facts of the
case under consideration. It seems
to me, however, that the potential harm to the respondent inherent in the ex
parte
and in
camera
procedure could largely be obviated
/ in
45
in cases where real and documentary evidence was attached and
taken into possession if the court included in its order a rule
nisi
giving the opportunity to the respon-dent to come to court and to show cause why
the attached evidence should not be retained
pendente 1.ite
and, in an
appropriate case, giving leave to the respondent to anticipate the return day.
This seems preferable to the somewhat cumbersome
procedure envisaged by par. 6
of the order granted by LATEGAN J.
It is not necessary, however, in this case to pronounce Finally on these
matters for the order sought and initially obtained by appellants
in terms of
par. 1.2 and 1.5 of the order of court is a far cry from an order designed
merely to preserve specific evidence for trial.
In fact par. 1.2 and 1.5, as
explained by appel-lants' counsel are designed to give authority for a search
for, and attachment of,
evidence in order to found a cause,
/ or causes,
46
or causes, of action. This is a proposed procedure for which
there is a considerable body of judicial disappro-val in our law (see
the
Cerebos Food
case,
supra
, at pp 169 H - 170 F and the cases there
cited). In my opinion, it is not a procedure to which this Court can or should
give the
stamp of its approval. If there is a de-ficiency in our law in this
respect, then the remedy must be sought 'in appropriate legislation
and/or
amendment of the Uniform Rules of Court.
Nor is this Court called upon to decide in this case whether the other
components of an
Anton Killer
order referred to by the Court in the
Cerebos Food
judg-ment, ie orders for the disclosure of sources and
retail outlets (component 2) and orders for the production and handing over
of
things in order to make an interdict ef-fective (component 4) can competently be
granted.
/In
47
In the result (and bearing in mind what has been abandoned by
appellants) the only substantive part of the order granted by LATEGAN
J which,
,in my opinion, ought to have been granted is par. 1.1 (in regard to THE BIG FIX
and in favour of first appellant only,
as the holder of the copyright therein);
but at this stage all that we are concerned with is the question of costs. There
is no point
now in making a formal order in favour of the first appellant in
terms of par. 1.1. LATEGAN J ordered the costs of the application
to be costs in
the cause. We do not know whether these costs were catered for in the settlement
of the action, but in any event,
bearing in mind the limited success achieved
and the attitude of appellants' counsel to the question of costs in this Court,
we would
not make any order in regard to the costs of the application to LATEGAN
J. This too is the effect of the order of the Court a quo.
Obviously the
respondent achieved,
/ and
48
and was entitled to achieve, substantial success on appeal to
the Full Court and was entitled, as ordered by the Full Court, to the
costs of
appeal and the costs of the application for leave to appeal. Appellants have
conceded that the very limited success achieved
in this Court would not carry
the costs of appeal. There being at this stage no point in a formal amendment of
the order of the Court
a
quo
, the appeal is dismissed with costs.
M M CORBETT
KOTZÉ, JA) GALGUT, AJA)