Monday 6 September 2010


A stinging rebuke?

The Supreme Court of Appeal confirmed the territoriality of IP rights on Friday in Gallo Africa v Sting Music. The judgment is not yet available on-line but should make for interesting reading when posted.
According to Business Day, Gallo sued Sting for copyright infringement in respect of a musical Umoja, which Sting allegedly performed without permission in South Africa and a number of other countries. Gallo relied on the South African Copyright Act 98 of 1978 for infringement locally, but then also alleged infringement in nineteen other jurisdictions in terms of their own copyright legislation. Sting excepted to the summons as being bad in law, and, on appeal, Harms DP confirmed that the exception should be upheld.
He stated that registered IP rights were territorial in nature, and that the same principle applied to unregistered rights such as copyright. As he pointed out, Gallo must have appreciated this, as the particulars of claim described the various acts of infringement with reference to the law of each particular jurisdiction. The appeal was dismissed because local courts did not have jurisdiction in respect of foreign copyright issues, despite the fact that both parties were resident in South Africa.
Pistorius states that (in Pollak on Jurisdiction 2ed at 111), unlike other registered rights where the forum rei sitae has jurisdiction (where the right is registered), the forum domicilii has jurisdiction in copyright matters, and cites Bieber v Columbia Pictures Inc 1981 (2) SA 405 (W) as authority. However, Dean (Handbook of South African Copyright Law Service issue 13 at 1-88D read with 1-90A) appears to consider it possible that a court could enforce a foreign copyright.
The judgment by Harms DP will no doubt clarify the situation, and be of value from both a procedural and a substantive perspective.



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7 September 2010 at 13:09 delete

The judgment is now online on the SAFLII site.

In addition to the points raised in the post, the judgment is surely also relevant, in the context of exchange control, to the question of whether the assignment of an IP right to a foreigner can be an "export" for the purposes of reg 10(1)(c) of the ExCon regs. Given the SCA's view on the territoriality of IP rights, it seems to me that Prinsloo J's view in the Oilwell case must be right, and Jajbhay J's view in the Reddot case wrong.