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[2004] ZAGPJHC 1
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Disney Enterprises, Inc v Griesel NO and Others (12003/04) [2004] ZAGPJHC 1 (7 September 2004)
In
the High Court of South Africa
[Transvaal
Provincial Division]
Case
no 12003/04
7/9/2017
In
the matter between -
Disney
Enterprises,
Inc Applicant
and
S
G Griesel
NO 1st
Respondent
The
Registrar of Trade
Marks 2nd
Respondent
The
Registrar of
Copyright 3rd
Respondent
Judgment
Daniels
J-
The
applicant seeks an order recalling and setting aside an order sought
ex parte
and granted by Swart J on 29 July 2004 attaching
certain assets belonging to the applicant
ad
fundandamjurisdictionem.
No reasons were furnished by Swart J and
none were called for. At this stage the onus is upon the first
respondent to show upon
the affidavits filed in the
exparte
application and in the present application that is was and still
is entitled to the relief sought.
It
was said in
Simon NO vAir Operations of Europe AB and Others
[1998] ZASCA 79
;
1999
(1) SA 217
(SCA) at 228 that " the remedy of attachment
ad
fundandam jurisdictionem
was an exceptional remedy, and one that
should be applied with care and caution. Once all the requirements
for attachment had been
satisfied, however, a court had no discretion
to refuse an attachment."
At
the same time it was explained that an applicant had obviously to
establish that he or she had a
prima facie
cause of action,
although open to doubt, and this requirement was satisfied if an
applicant showed that there was evidence which,
if accepted, would
establish a cause of action. The mere fact that such evidence was
contradicted would not disentitle an applicant
to the relief sought,
not even if the probabilities were against him. It was only where it
was quite clear that the applicant had
no cause of action, or could
not succeed, that an attachment had to be refused. (2288/C--C/D)
The
accepted test for a
prima facie
right in the context of an
interim interdict was to take the facts averred by the applicant,
together with such facts set out by
the respondent that were not or
could not be disputed, and to consider whether, having regard to the
inherent probabilities, the
applicant should on those facts obtain
final relief at the trial. The facts set up in contradiction by the
respondent should then
be considered and, if serious doubt was thrown
upon the case of the applicant, he or she could not succeed.
(228F/G--H/I)
It
was contended on behalf of the applicant that the first respondent
failed to make out a
prima facie
case for the relief sought by
reason. of the following -
1. the first respondent was not
appointed as executor by the Master of the High Court. Accordingly he
did not have, and does not
have authority to represent or act on
behalf of the estate of the late mr Solomon Ntsele (also known as
Linda);
2. the applicant did not infringe nor
did it cause the infringement of the copyright allegedly vesting in
the first respondent.
The
first respondent's appointment as Executor
I
do not intend dealing in any detail with the arguments presented by
counsel. Suffice it to say that however one views the matter,
the
fact remains that Griesel purports to act on behalf of the estate. It
is the estate 'represented by...' whoever, that will
be cited as the
plaintiff in the matter. The Master and or the magistrate regard
Griesel as the duly appointed representative of
the estate and they
will individually or collectively look to him for reporting on the
estate, and to account for the assets recovered.
The first respondent
was appointed in terms of reg. 4 (1) of the regulations published
under GN R200 of 6 February 1987, to represent
the estate. It is true
that he is not named “executor” of the estate but this
does not detract from the fact that he
was appointed "...to
represent the ....estate, to assume responsibility for the collection
of the assets.....,1D pay all claims
to the value of the assets in
the estate...and to award the balance of the estate, including the
immovable property if any, to
the rightful heir(s)," which is
exactly what an executor does. Whether Griesel is called an agent or
executor cannot impact
upon his entitlement to institute the action.
If the applicant has a problem with the appointment such as it is,
but which is
prima facie
proper and regular on the face of it,
it can bring a substantive application to have it set aside. The
Master will obviously be
joined as a respondent and he or she will be
able to explain the manner in which the Act is applied and the
measures taken to implement
the
Moseneke
judgment in a
practical and sensible manner.
At
this stage of the proceedings and having regard to the test to be
applied, the court is to be satisfied that Griesel has shown,
no more
than
prima facie,
that he as the representative of the estate
is entitled to recover whatever is allegedly due. That much he
succeeded in doing.
The
applicant's alleged infringement
The
first respondent's case appears .from paragraph 12 of his proposed
particulars of claim. The essence of his case is that the
applicant
caused certain cinematograph films to be made in the United States of
America, that it made or caused to be made multiple
copies of that
film and distributed or caused to be distributed in South Africa
copies, videotapes and DVD discs thereof. The first
respondent will
have to prove these allegations at the trial. At this stage he need
only show a
prima facie
case 'although open to doubt.' With
this end in view he need go no further than to show that there is
evidence, which if accepted,
would establish a cause of action.
The
applicant's case is that no such a case was made out, and that no
such a case is made out in the matter now before me.
The
Copyright Act of 1978
,
section 23
thereof, provides as follows -
'23. Infringement.-(1) 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 authorize.'
It
is the applicant's case that it was at all relevant times the owner
and licensor of the copyright in the relevant cinematograph
film and
that it was never a producer or distributor of the film, neither in
South Africa nor elsewhere. The production and manufacture,
copying
and distribution was undertaken by the various licensees, all of whom
incidentally are its subsidiaries. It is alleged
that the first
respondent through his attorney should have been aware of that fact.
Ido not believe that the testimony of the applicant
is seriously
disputed by the respondent. This, however, is not the end of the
matter.
The
first respondent's case is not of the limited extent it may appear to
be. It was common cause between the parties that copyright
can be
infringed by a person who causes another to do 'a restricted act
without the authority of the copyright owner.' Accordingly
copyright
can be infringed by both the actual perpetrator and the person who
instigates or instructs the doing of that act. Upon
the authority of
Bosal Africa (Pty) Ltd v Grapnel (Pty) Ltd
&
Another
1985 4 SA 882
(C) and
Esquire Electronics Ltd v Executive
Video
1986 2 SA 576
(A) the applicant submitted that some
subjective knowledge of the unlawful act was required in order to
hold the instigator liable.
There was, however, no evidence that the
applicant did so knowingly at any stage or that it was knowingly
personally involved in
any copying.
The
respondent confirmed and repeated in his answering affidavit that it
was not his case that the applicant was itself actively
involved in
the alleged infringement, but that it is involved to the extent that
by granting a copyright license to the second
defendant in the
infringement action, it
'caused, authorised, aided or
abetted the second defendant to make reproductions
The respondent
obviously does not have evidence, at this stage at least, directly
linking the applicant to the alleged infringement
of the copyright by
its subsidiary in South Africa. These are early days. At this stage
the applicant appears to rely upon the
existence of the various
licensing agreements and the obligations imposed by the applicant
licencee upon its subsidiary licensor
to exploit and promote the
license to its full extent, the argument also being that this had to
be so since the applicant was sharing,
on the probabilities at least,
in the income generated by way of royalties. This approach and
argument is certainly not without
merit. He needs do no more than to
establish a
prima facie
case.
I
am satisfied upon the argument presented that such a case had been
made out. I prefer to believe that Swart J was similarly not
unimpressed and that this led him to grant the interim relief. It
follows that the application must fail on the second ground also.
The
applicant finally criticized the granting of the order on the ground
that the respondent failed to disclose material facts which
might
have influenced the court in arriving at the decision arrived at. It
was suggested that the respondent should have disclosed
-
· the initial debate
surrounding the question of the respondent's appointment as executor
in the deceased estate of the late
mr Ntsele (Linda);
· the 1983 assignment of
copyright by the late Regina Ntsele and her receipt of substantial
royalties;
· the 1992 assignment of the
copyright by the late Solomon Ntsele's daughters;
· the 1994 documentation
relating to the registration of the applicant's copyright, including
the statement of case prepared
by the first respondent's attorneys
which demonstrated that the applicant was neither a producer nor a
distributor of cinematograph
films and never made or reproduced the
film here involved.
1.
The respondent's appointment
I have dealt with the debate
surrounding the respondent's appointment. There was no reason to
embark upon an extravagant explanation
to warrant the allegation that
he was the duly appointed executor in the estate. The document he
relied upon was attached to the
founding affidavit. Nothing more was
required at that stage.
2.
The 1983 and the 1992 assignment
of the copyright.
Awareness on the part of the then
presiding judge of these alleged or purported assignments would have
had little effect upon his
decision. n this regard I refer to the
first respondent's answering affidavit at pp 394 and further, read
with that of attorney
Dean at pp 504 -509. At best there might have
been a suggestion, extremely remote I suggest, that a court might
have adopted the
attitude that there might have been uncertainty, but
having regard to the test to be applied, it would nevertheless have
granted
the order sought.
3.
The non-disclosure of the 1994
documentation.
I need go no further than to say that
the applicant might have had a case if it was the respondent's case
that the applicant as
the principal party infringed the copyright by
itself producing, manufacturing, copying and distributing the film
here involved.
We know that the respondent alleges that the applicant
'caused, authorised, aided or abetted the second defendant to make
reproductions'
of the film. Once this is understood the complaint
must fall away.
The
court in any event has an overriding discretion to grant or deny
relief to a litigant who might be guilty of a failure to disclose
material or relevant facts. The principle is well established that it
is the duty of a litigant who approaches the court
ex parte,
to
disclose to the court every circumstance which might influence the
court in deciding to grant or to withhold relief. Among the
factors
which the court will take into account in the exercise of its
discretion to grant or deny relief to a litigant who has
breached the
uberrima tides
rule are the extent to which the rule has been
breached, the reasons for the non-disclosure, the extent to which the
court might
have been influenced by the proper disclosure in the
ex
parte
application, the consequences, from the point of view of
doing justice between the parties, of denying relief to the applicant
on
the ex parte order, and the interests of innocent third parties,
such as minor children, for whom protection was sought in the ex
parte application. (
Cometal-Mometal S A R L v Corlana
Enterprises (Pty) Ltd
1981
(2) SA 412
(W) at 414 G-H). Having
regard to the facts at my disposal and then in particular the
comprehensive explanation offered by attorney
Dean and the first
respondent, I would in any event exercise my discretion in favour of
the respondent.
It
follows that the application cannot succeed. Although it can be
argued that the applicants were ill-advised in launching this
application and that costs should follow the result, the fact remains
that the applicants may be successful in the main action
on the very
grounds here debated. I would prefer to order the costs of this
application to be in the cause. This does not involve
attorneys Spoor
and Fischer, against whom no order of costs is made.
The
following order .is made-
1. The application is dismissed.
2. Costs are to be in the cause.
__________________
H
Daniels
Judge
of the High Court